SEMINAR: Intellectual Property (IP) @ CERN
Agenda, Slides: http://indico.cern.ch/conferenceDisplay.py?confId=33556
[Please note: slides in the link above cannot be re-distributed outside CERN]
DG Introduction
The DG opened the seminar. He mentioned that science and IP are
interlinked; the need to protect our scientific results; to recognise
our technical results at the same level as scientific results; it is
important to identify CERN’s results, and should be done by everyone at
CERN. TT is the catalyst of this work, but identifying the assets of
CERN is the responsibility of everyone. The DG also highlighted the issue of ownership - IP is owned by CERN via the work of its paid staff or with its collaborators; also the fact that there are 20 member states with equal rights despite differing contributions. One solution he suggested is to identify and agree on the management of the IP before the collaboration, not after.
IP Definition
* From WIPO
* Reflects broadly the creation of mind, and is divided into industrial
property (ie inventions, trademarks, industrial designs, and protected
designations of origin) and copyrights (ie literary, musical, artistic,
photographic, and audio-visual works)
Nigel Clark from European Patent Office (EPO): Talk on Information from
Patents
* Patent office grants patents; and also gives patent information of other granted patents (patent office publishes all patent information as part of the process)
* Patent is all about stopping somebody else to use your invention.
* Invention is patentable if it is novel, inventive (not obvious) and industrially applicable (Quote: If you can't sell it, don't invent it)
* Patent information is information contained in patents; is a resource; is an archive; technical information useful for scientists
* If you can show that you've researched current patents and your idea is unique, venture capitalists are more willing to listen
* 3 patent app every minute
* 65 million documents at the EPO (is that 65 M patents?), hosted by the
esp@cenet database www.espacenet.com, free access
* Many scientists fall into the trap of publishing before applying for a patent, doing this makes the patent application void: FILE THE PATENT FIRST, THEN PUBLISH
Henning Huuse, TT Group: Patenting @ CERN - Why, when and how
* 12 years @ CERN; first patent taken in 1996; 227 patent applicants to date
* Presently 33 patent families in CERN porfolio ie 33 inventions patented across many countries (a different patent is required for each country)
-- 3 jointly owned with industry, 5 with institutes, 2 with ind & inst;
23 CERN only
* CERN patent = Applicant is CERN = Inventors are CERN scientists
* CERN takes patents to:
- well identify IP
- make innovative results more tangible
- control the way the invention is being used
- promote the image of CERN as source of innovations and economic activites
- increase attractiveness for industry
- ensure CERN recognition as the originator of an exceptional invention
* In joint research with a company, patent is filled together and the company deals with the commercial viability of it
* A patent is valid for 20 years, but renewal fees need paying more frequently than this
* CERN does not hold pure software patents, open source is the general clause for sw, Computer implemented inventions can be patented
* How? Workflow presented, handled by CERN TT Group, extenal patent
attorneys helps with patentability assessment and preparation of patents
* Exploitation agreements can prevent CERN patents being used for example for military applications, this can be part of the patent license
Alicia Blaya, IPR Helpdesk: IP issues in practice, www.ipr-helpdesk.org
* IPR-helpdesk: provide free assistance to FP7 projects partners
* From the proposal stage projects need to already foresee likely results and IP issues and know IP rules from the beginning
* Instruments that should be used: Grant Agreement, Consortium Agreement, National laws, previous commitments (e.g. already agreed exclusive licence impacts the background you share with other partners), Rules of Participation, etc.
* Projects may wish to draw up a separate Joint Ownership Agreement between Consortium members, in addition to the consortium agreement
* IP rules in FP7
- Partners do not lose ownership of background (as it was generated before the project started)
- You may need to grant licences to other partners for them to do their work
- Work under confidentiality commitment if you are working on sensitive information
- Foreground owned by the participants as they have generated the
foreground, SME special case
- Protection of foreground - protection of results (via patent?), use of
Results (e.g. commercial/industrial activities or further research), dissemination of results
- A patent protects ONLY inventions that are new and are industrially
exploitable
* FP7 Participants obligations:
- protection (IP rights, confidentiality)
- use (direct use or technology transfer agreements)
- dissemination of the results (respect IP rights and confidentiality);
careful and timely planning for the use and dissemination of foreground.
* Issues: insufficient knowledge of IP rights and their optimum use;
protecting ≠ exploiting (example: owning a house and still getting burgled)
* Patent and trade mark have different meaning: TM are signs that can be
graphically represented, TM protection last for 10 years renewable (forever)
* copyright does not protect ideas, just the way in which you express
your idea
* copyright protects computer programs and DB for the life of the author
+ 70 years
* 3 steps to follow when starting a new project with potentially
innovative results:
- keep information confidential (confidentialy agreement bw partners)
- look at the nature of the results (technical= patent, commercial= TM,
aesthetical...)in order to choose the IP right
- select the best option jointly with partners and IP expert
- in FP7: IP related costs can be eligible costs !
* 3 rules:
- know your partners
- negotiate win-win agreements
- negotiation skills are important
* Protect first, publish later.
* IPR Helpdesk provides free review of CA from IP perspective, feedback within 3 days
* Confidentiality agreement template available @ iprhelpdesk, for free www.ipr-helpdesk.org
IP @ CERN
* IP management involves IP ownership, IP identification and protection,
IP access
Q&A
* There is TT officer in every department
* Patenting of inventions, NOT ideas (needs to be commercially useful)
* In FP7 you are obliged to protect results with potential for
commercial exploitation
* There is no conflict between secrecy, patenting and publishing; it is
a question of order. Once you have the filing date of the patent you are free to publish, the patent itself takes 18 months to come through.
* IP protection is a business asset
* A lot of patents are small improvements on what has been done before
* Patent challenges are done on a national level. Attacks can be done on the grounds of obviousness depending on how the results are later published e.g. saying "Theory said x, therefore we did y" or "Dr x had shown this, therefore we did y" may mean opening your already filed patent up for attack
* Renewal fees need to be paid every year to the national patent offices
* European patent office allows a patent to be filed in a cluster of different countries - allowing you to have a patent family of various national patents
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