Publishing v. patenting

Usually, the two main means to bring technical and scientific knowledge to the public are patent applications and journal publications. With the advent of the internet two alternative means are available: the defensive publications and the open access model.
 
The European IPR Helpdesk has issued a new fact sheet examining the different aspects of these knowledge dissemination tools, also taking into account the different needs and objectives of research organisations/universities (ROs) and small and medium sized enterprises/industry (SMEs). There is not a general rule to apply when choosing the right means of dissemination, but one needs to ensure that the chosen tools are in line with the overall organisation's strategy.

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European IPR Helpdesk Bulletin Issue (10)

We are pleased to inform you that the tenth issue of the European IPR Helpdesk Bulletin has been released and is now available on-line.

Traditionally, public funded research was deemed to be focused on questions of essential scientific interest, the so-called basic research. This was intended to merely disclose new scientific and technological knowledge through publications. In the last two decades this scenario has dramatically changed and the support for the commercialisation of publicly funded research results has grown. In this Bulletin, this issue is addressed in two articles. The first one is the outcome of a conference organised by the European Patent Office (EPO) on “Creating markets from research results” and the other is about a report compiled by a group of experts on how the national intellectual property offices can help academic institutions and technology transfer offices enhance their technology transfer activities.

Furthermore, in this issue you can read an interview with an IP expert on the fundamentals of an IP valuation for a proper management of intangible assets. Within the “do-it-yourself” series, the World Intellectual Property Organization (WIPO) highlights some of the salient feature of its e-tutorial on using patent information, i.e. the technical and legal information contained in patent documents. In another article, the Office for Harmonization in the Internal Market (OHIM) tells us the success story of the Registered Community Design (RCD) over the last ten years.

As always, you can enjoy the patent quiz and are informed about IP awareness raising events.

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IPR management in software development

Software, or computer programs, is a complex asset. At the boundary between pure creations of the mind and technical inventions, multiple intellectual property rights (IPR) can protect it.

Intellectual property is an essential tool to secure value generated by software. However, the means to create such value can vary considerably depending on the exploitation scheme chosen and the related ecosystem for which the use of software developments are intended. The aim of this fact sheet is therefore to introduce the various IPR that can protect software, the main licensing schemes available and their respective potential business impact.

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Projects acronyms and trade marks: preventing risks

Refraining from using an acronym similar to a registered trade mark for goods and/or services in the same area is important in R&D projects, particularly when consortium partners intend to commercially exploit a result or provide a service in the market under the acronym or name of the project.

In this case study you can see the possible risks that consortium partners can face in these situations and, most importantly, how to avoid them.

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“Has the Commission ensured efficient implementation of the Seventh Framework Programme for Research?”

The European Court of Auditors (ECA) recently issued a special report entitled “Has the Commission ensured efficient implementation of the Seventh Framework Programme for Research?”. The ECA assessed whether the Commission has ensured efficient implementation of FP7. The audit covered the rules for participation, the Commission’s processes and the setting-up of two new instruments, and its results are likely to be useful not only for the remaining period of FP7, but also for the operational setup of the next research Framework Programme - Horizon 2020.

The report found that although the European Commission has taken a number of steps to bolster its management of the Seventh Framework Programme for Research (FP7), researchers seeking FP7 funding are however faced with unnecessary inconsistencies.

Accordingly the ECA recommended:

a)      Regarding rules for participation, the Commission should make further efforts to ensure that  beneficiaries’ practices can be used in Horizon 2020 and manage FP7 in a more consistent  manner;

b)      To strengthen process management, the Commission should deploy IT tools which will integrate all functionalities and it should examine the imbalances in staff workload;

c)       To reduce processing times, the Commission should make sure that the processes are automated and implemented consistently across its services;

d)      The Commission should make its control activities before and after payment more risk-driven, so as to better focus its control effort; and

e)      The EU Council, European Parliament and the Commission should bring the legal framework of the Joint Technology Initiatives more into line with their staff complement. To maximise the impact of the Risk Sharing Finance Facility, the Commission should demonstrate that it targets those beneficiaries which have limited access to finance.

For further information and to read the special report in full, please click here.

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IP joint ownership

Joint ownership often arises in connection with collaborative innovation and is of particular relevance to EU-funded programmes, joint ventures and more generally to any research project involving the co-development of intellectual property (IP).

The European IPR Helpdesk has developed a new fact sheet aiming to highlight the most essential IP issues to be addressed when handling jointly owned assets in contractual arrangements, in order to avoid the joint ownership pitfalls. By ensuring that the ownership of the generated IP, and the related responsibility for its protection and defence, are correctly allocated, collaborative projects have more chance to be efficiently implemented and litigation between partners to be avoided.

Have a look at it!

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The importance of an IP management structure in a research project

The need to set up an appropriate management structure to properly deal with the different issues related to intellectual property (IP) is considered to be fundamental in any collaborative research programme.

This case study presents a well-thought IP management structure in an FP7 consortium, which has the function of ensuring a smooth implementation of the project and an optimal exploitation of the resulting intangible assets.

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Alternative Dispute Resolution (ADR) mechanisms

The successful development and commercialisation of technology requires a carefully integrated dispute resolution strategy as a key factor in securing the value of technologies and associated intellectual property (IP) rights developed in research and development (R&D) collaborations and their subsequent commercialisation.

Alternative Dispute Resolution (ADR) mechanisms include several procedures that allow parties to resolve their disputes out of court in a private forum, with the assistance of a qualified neutral intermediary of their choice. ADR procedures are offered by different arbitral institutions. 

Our fact sheet on "Efficient Resolution of Disputes in R&D Collaborations, Licensing and Other Technology Transfer" provides an overview of WIPO ADR mechanisms, principles, advantages and case examples to assist SMEs, universities, research centres, researchers and others in making a considered choice on how to resolve future or existing disputes when drafting contract clauses and submission agreements.

This fact sheet has been developed in collaboration with the World Intellectual Property Organization's (WIPO) Arbitration and Mediation Center and was updated in September 2016.

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How to search for trade marks

We are pleased to announce the fact sheet on trade mark search, published in collaboration with the European Union Intellectual Property Office (EUIPO). EUIPO, as the official trade marks and designs office of the European Union registers the European Union Trade Mark (EUTM) and registered Community design (RCD). For further information on EUIPO please click here.

There are many reasons why you may need to perform trade mark searches and should use trade mark databases:

  1. before applying for a new trade mark, since it is essential to make sure that it is free to use;
  2. once a trade mark is registered it is also important to regularly consult trade mark databases in order to check if similar or identical trademarks are being registered;
  3. regardless of any intention to register a trade mark, these databases can also be used as source of business information. In fact, knowing the trade marks filed by a competitor can give you some insight into its commercial strategy.

To know more about trade mark searches and how to perform them, download this newly updated fact sheet!

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Council reached an agreement on Horizon 2020

Last week the Council reached an agreement on a partial general approach concerning the draft regulation laying down the rules for participation in research projects funded under Horizon 2020. This means that the Council has reached an agreement on the essential elements of this regulation, but the European Parliament's opinion is still necessary.

The draft regulation includes the rules on intellectual property rights, use and dissemination.

For further information, please click here.

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