Importance of IP for researchers

Noël Campling, DirectorEuropean Patent Academy

28 April 2009

Outline

• Overview of European Patent Office and its European Patent Academy

• Why does intellectual property matter to researchers?

• Patents – the basics• Why does patent information matter to researchers?• Relevancy of patent information to researchers• Free information in patent databases• How to use patent information• Ownership issues

The European Patent Office

• EPC

• The patent granting authority of Europe

• A single patent grant procedure for up to 35 European countries

• Wholly self-financing

• NOT an EU organisation

The European Patent Office What is the European Patent Office?

35 member states

Austria • Belgium • Bulgaria • Croatia • Cyprus • Czech Republic • Denmark • Estonia • Finland • France • Germany •Greece • Hungary • Iceland • Ireland • Italy • Latvia • Liechtenstein • Lithuania •Luxembourg • Former Yugoslav Republic of Macedonia • Malta • Monaco • Netherlands • Norway • Poland • Portugal • Romania • Slovakia • Slovenia • Spain • Sweden • Switzerland • Turkey • United Kingdom

European patent applications and patents can also be extended at the applicant's request to the following states:

Albania • Bosnia-Herzegovina • Serbia

Status: January 2009

Locations

The Hague Vienna Berlin

Headquarters MunichIsar building

BrusselsBureau

The European Patent Office Locations

MunichPschorrHöfe

The European Patent Academy : Our mission

What

• Fostering and supporting IP education and training initiatives

• Encouraging the sharing of best practice

How

• in co-operation with national and European partners

The European Patent Academy Our Mission

Programme areas

• Innovation Support

• Academia

• Professional Representatives

• Judicial Training

• Institutional Strengthening

The European Patent Academy Programme areas

Academia

• IP teaching beyond law faculties

• Dissemination of IP knowledge in universities

• Introduce and expand IP content in university curricula

• Minimum standards and essential elements for IP education

• Supports IP academic initiatives

The European Patent Academy Academia

Why does intellectual property matter to researchers?

• IP enables creativity to be protected

• IP can be licensed or sold. It can be key negotiating tool - "deal-maker"

• IP will attract investment

• IP appears as asset on company accounts

Patents – the basics

• Earliest patent for glass-making in 1420s

• Patent gives its owner a right

• Patent lasts up to 20 years

• Patent criteria: new, inventive step, industrial applicability

Why does patent information matter to researchers?

• Invaluable source of research information

• Source of commercial information

• Most of what is published in patents is no longer protected, and is therefore free to use

Much knowledge can be found in patents only

Published elsewhere Patents

Only 20% also found elsewhere

Patents are published 18 months after application

Researchresult

Patentapplication

filed

Researchpublication

send to editor

Patentapplicationpublished

Patent Office always publishes after 18 months

Paperpublished

Reviewer 1 Reviewer

2

EditorEditor

Author

Reviewer 3

Publisher

13

Basic research is also published in patent information!

1988

GMR discovered

1989

Patent + article published

1997

First hard drive with GMR sensor

2007

Nobel Prize in Physics

Many patents

Heavily cited patent!Approx. 200 citations

14

15

Patents are well-structured - sections

• Title

– Improvements in or relating to tea pots

• Prior art

– Teapot with one spout

• Drawback of prior art

– Time-consuming

• Problem to solve

– Reduce filling time

• Solution

– Provide a second spout

• Advantage of the invention

– The time needed to fill multiple cups is reduced

• Claims

– Legally valid protection

Example: GB360253

http://ep.espacenet.com: free worldwide patent info

16

17

The International Patent Classification (IPC) system helps to find the relevant patents

Arrangements or instruments for measuring magnetic variables

Ownership Issues

• Intellectual Property Policy should– provide clear rules for staff and students regarding the disclosure

of new ideas with commercial interest, such as ownership of research results

• Allocation of ownership of Intellectual Property should be identified in framework of project

• Identify who owns Intellectual Property before starting the project

• One possible model regarding collaborated and contract research:– In collaborative project, ownership should remain with party that

generated it, however it can be allocated on a basis of a contract (must detail who owns what in writing)

– In a contract research, research generated by public research organisation belongs to the private company

Source: Official Journal of the European Union -Commission Recommendation of 10 April 2008

Thank you for your attention !

Noël Camplingncampling@epo.org

Tel: +49 (0)89 2399 5420

European Patent Academyhttp://academy.epo.org

26 April 2009