What you don’t know about IP protections – but should

I am about to ask you to do one of the hardest things for an academic: be comfortable not knowing. Current figures suggest that only 6 to 7 per cent of successful patents are licensed or commercialised globally. Why? Because of a general misconception of what a patent is.

Patents are too commonly seen as a neon sign directing people to admire and buy a piece of technology or, even worse, as a bank vault that deters theft. But neither version is accurate. Patents do not intrinsically generate value; they are expensive to set up and maintain; and they sometimes act as a legal invitation for court cases. They are only a tool, one of many, to take research from the lab to the real world, and they don’t operate in a vacuum.

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This is only one example of what we face as a community when it comes to intellectual property (IP) rights – how to use them and how to manage them. In a university environment, where the business of the day is to ask questions and develop expertise, acquiring a new skill set is par for the course. Yet, when it comes to protecting IP or deciding whether to make a piece of technology widely accessible, there is only one thing to know – speak to your technology transfer office (TTO) regularly.

Your intellectual property toolbox

IP is a vast subject, where each avenue comes with potential pitfalls and benefits. The IP toolbox contains three main devices: patents, copyright and trademarks. Then there is the way a university’s IP is managed, which in turn determines how a particular tool is used. In academia the question of management is just as key as the tool itself.

IP gives a new meaning to ‘publish or perish’

IP management for academics can be tricky because the foundation of IP is keeping something a secret until it is properly protected. That means no social posts about an interesting lab result, no press interviews where you mention in passing the next big thing you are working on and, most importantly, no papers. This is the tension of academic life; papers are the lifeblood that defines careers, but publishing unique results can make it impossible to patent later on. On top of that, the academic movement towards open access and open source puts more pressure on you to disclose. That is why IP management starts with you, the academic, but not in the way that you think.

How do patents work?

Patents are only relevant for applied research that leads to unique technology. What is fascinating here is how there are people who find novel research ready for a patent when it isn’t, while an equally large group of people never recognise the groundbreaking nature of what they are developing. It is impossible to know which group you are in without speaking to someone about the technology, and you can do that with the university’s TTO.

Patents are not always the right tool to protect IP. Many patents are registered because there is a belief that doing so will create a direct and immediate commercial opportunity. This is not the case; a granted patent is not a classified section that is used for browsing, and people don’t line up to buy your technology because of it. The product or service that the tech behind the IP produces has to be commercially viable and attractive.

A patent is also not a shield against competition. The ability of a patent to stop a competitor from doing something similar will depend on how strong the patent portfolio is and in how many countries the right is granted and maintained.

Finally, having a patent doesn’t mean you can jump into commercialising the technology right away; there might be regulations that need to be complied with. While you are registering a patent (which takes at least two years) there is the rest of the work to build a business from it. Filing strategy also requires planning (but that is another topic in itself).

If patents aren’t sounding great any more, there are other ways to legally protect technology. In some cases, copyright for software and sui generis rights for databases are an option in the European Union; trade secrets and know-how is another avenue that can be explored. Choosing which depends on a lot of factors, from cost to feasibility. For example, trade secrets are a difficult IP approach to set up at a university, where sharing information is the status quo. All require a specific IP management strategy to be shaped and applied, which, as I am sure you can guess, your TTO can help with.

How does copyright work for academics?

Copyright – which is the commonly used IP protection for works of literature and, in most countries, software – is granted without the need to file for an IP right. Behind this deceptive simplicity are many choices. In the case of commercialising a piece of software, the licensing terms of any software you built on and how you manage the copyright (open source, proprietary or somewhere in the middle) has a direct impact on the future business models that are possible.

Your TTO can assist you in designing a copyright approach that makes sense for your creation and future plans and will hold up in a legal case, should one occur.

What about trademarks?

For those with their sights set on creating a business with their technology or idea, considering the registrability of a brand name at an early stage can be a good idea. Doing it from the beginning can help a business improve its visibility; however, doing it wrong can not only distract you from the technology improvement and commercialisation but can also be expensive to fix.

How to use your technology transfer office

From the brand name to the business model, your university’s TTO can support you and help prevent messy legal battles and costly rebranding initiatives.

If you are a researcher interested in creating a business out of the technology you build, the most important thing you can do is set up an ongoing relationship with your university TTO. With their help, you will decide on the best and most efficient way to protect the IP. Meet a TTO officer for coffee every so often and talk about your research. Invite them to your department meetings. Set reminders in your task manager to reach out to them.

The habit can look different, but it should be just that, a habit. The reward for you? Perhaps you will be able to begin a spin-off with your university’s support. But the more likely scenario is that the university will patent or license the right technology. This has a direct impact on you because, in the EU at least, a university needs to remunerate a scientist for any financial benefits resulting from licensing technology.

Itzel Saldivar is a technology transfer officer in the Interdisciplinary Centre for Security, Reliability and Trust at the University of Luxembourg.

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