Universities, research centres, companies, are all subjects that in various ways are deputed to generate new knowledge and innovations, capable of modifying and revolutionising the way in which certain activities are carried out or operate in various fields and sectors. But often those who come across a scientific discovery are not always aware of how it should be handled, nor are they prepared to identify the opportunities for exploiting the innovation.
In recent years, the scientific community has become more and more aware of the need to develop new knowledge and innovations.
In recent years, the culture of innovation has grown strongly, one need only observe the inclusion in some university curricula dedicated to the management of innovation, rather than the strong push towards the creation of spin-offs or innovative start-ups, or even the growing emergence of funds that invest in projects with high innovative value.
In order to understand what the main features of a scientific discovery are, we will propose below a series of useful indications to determine what an invention is, what are the tools to protect it and what strategies to adopt to best manage a new discovery.
When one believes one has found a solution to a technical problem, or more specifically, when one generates something innovative, an initial dilemma generally arises: should one proceed with the disclosure of the discovery or protect the invention in order to reap moral and economic benefits? It is important to know that disclosure may jeopardise the possibility of protecting the invention. The inventor, therefore, must avoid transmitting, disclosing or presenting the idea he intends to patent to third parties. In fact, should he be interested in patenting and claiming the rights to the scientific discovery, he must first protect its intellectual and industrial property, and only then can he consider its dissemination.
Let us briefly discuss what is meant by intellectual and industrial property. Intellectual property concerns the protection of literary, figurative, musical and software works, thus falling under copyright law. While industrial property refers to technological aspects and specifically to patents or distinctive signs such as trademarks and designs. In Italy, all this is regulated by the Industrial Property Code, which defines the rules and legal principles aimed at protecting the works of human ingenuity and invention.
But in practice, what is the most important thing?
But in practice, what must an inventor do to protect his or her discovery?
The very first step is to evaluate and determine the goodness of the discovery. The inventor will have to determine whether there are already publications or similar patents in the state of the art that may hinder patent protection, at the same time it will be necessary to assess whether there has actually been no disclosure, perhaps by other contributors or persons who have collaborated in various ways in the creation of the invention.
Generally, such a step is to determine whether the invention has been disclosed.
Generally, such an assessment is accompanied by a patent prior art search, which can be conducted by querying patent databases that check for the presence or absence of protection or claims in a defined field of technology.
The second step concerns the patent prior art search.
The second step concerns the verification, in practice the presence of all the requirements to proceed with the filing of a patent application. This analysis, more complex than the previous one, can be conducted with the support of expert consultants (patent attorneys), who accompany inventors to draft the patent and verify the presence of the requirements to proceed with the filing of the patent application. To be clear, the most important requirements are:
- the Novability, the invention at the time of filing the patent application must not have been disclosed (e.g., at conferences or in scientific articles);
- the Inventional Activity, the invention must not be the sum of several known inventions, therefore progress in the field of industrial technique must be demonstrated;
- The Industriality, the invention must solve a technical problem in the industrial field.
The filing of a patent application is certainly an important achievement, but in reality it is not the end of the road, but rather the starting point for defining the future management of innovation. Following filing, the inventor will receive from the UIBM (Italian Patent and Trademark Office) a search report, the result of the examination carried out by an expert in the field, who will report on the validity of the patent application and, if necessary, may request additions or clarifications to what is claimed in the application. Following this outcome, the inventor may decide whether to internationalise the patent and consequently in which states to proceed with the extension of patent protection (e.g. Europe, China, USA, etc.).
In this scenario, time obviously plays a very important role, but let us point out that the inventor, thanks to patent protection, acquires rights to the invention, and specifically the patent holder can: produce, import, export and sell, exclusively in a given territory, for a defined period of time (maximum 20 years), being able to exploit the innovation under a monopoly regime. This competitive advantage is of fundamental importance, in fact thanks to this the inventor can decide whether to create a start-up, and therefore an innovative company that can operate on the market with a great competitive advantage (patent) or rather opt for a transfer or licence of the title.
Technically, the inventor can create a start-up, and therefore an innovative company that can operate on the market with a great competitive advantage (patent) or rather opt for a transfer or licence of the title.
Technically, by assigning the patent the inventor will divest himself of the invention, transferring all the related rights to another party, in return he will receive an immediate profit and will always be recognised as the inventor. In contrast, in the case of patent licensing, the owner will always have control over the invention, as the patent title will not be transferred, but only the licence will be transferred, which will be determined by exploitation agreements with one or more parties.
The patent licence will be determined by exploitation agreements with one or more parties.
To conclude, the management of innovation is certainly determined by complex technical and administrative steps, but there are several entities that can support inventors both within research institutions, universities and companies. In fact, there are dedicated offices that deal with the valorisation of research, accompaniment to patenting and, more generally, technology transfer activities that are fundamental for defining the best strategy for managing innovation and its subsequent transfer to the market.
