IPR protection procedure

The Regulation for the generation, management and exploitation of Intellectual Property on the results of Cnr research (hereinafter 'IPR Regulation') regulates various steps of Intellectual Property Rights conceived by Cnr personnel through independent, co-funded and commissioned research.

First filing of a new patent application

  1. By using its personal authentication credentials (SIPER), an inventor submits the 'invention disclosure' through the Cnr patents website (https://brevetti.cnr.it/brevetti/external/Home.do) to the Technology Transfer Office (hereinafter 'TTO'). The invention disclosure is also sent to the Directors of the Institute and Department for their information, as they are involved in some steps of the patent/IPR procedure.
  2. Depending on the field of the invention, the TTO appoints an internal IPR Specialist in charge of the IPR evaluation procedure preliminary to the patent application filing. The IPR Specialist may, if necessary, request the inventor to provide integrations and explanations regarding the invention disclosure in order to better formulate and carry out a state-of-the-art search in the patent literature (prior-art search).
  3. The IPR Specialist, in collaboration with the inventor, analyses the most relevant documents found in the state-of-the-art search, checks the existence of the requirements for granting the patent application (e.g. novelty, inventive step and industrial applicability), and shares the outcomes with the TTO within the timespan defined by Art. 12 of IPR Regulation. The Department and the Institute will provide the TTO/inventor with their opinion regarding the opportunity to proceed with filing the patent application, and highlight strategic issues as well as critical points.
  4. In case of a positive evaluation, the TTO suggests the most appropriate first filing procedure strategy and a list of the patent attorneys most qualified in the field of the invention, to request them an estimation of costs. Then, together with the inventor, the decision is made regarding the patent firm whom to assign the drafting and filing of the patent application, basing on the criteria of cost-effectiveness and technical competence. According to the IPR Regulation, the first filing patent costs are charged to the Institute which the inventor belongs to.
  5. In the case of inventions jointly conceived with other parties, the TTO contacts the co-owners for negotiating the joint agreement on patent Rights the management.

This procedure also applies to the protection of other intellectual property rights, such as new plant varieties, software and trademarks.

If the inventor conceives an invention from an 'Independent research' and proceeds to file the IPR application under his/her ownership (Art. 65 paragraph 1 of Legislative Decree No. 30/2005) or assigns his/her invention to parties other than Cnr, he/she is obliged to send a notification of independent filing to the e-mail address protocollo-ammcen@pec.cnr.it within 30 days after the first filing date. In case the invention generates income (e.g. royalties, lump sums, dividends, etc.), the inventor is obliged to pay 50% of income to Cnr (patent costs excluded). It is highly recommended that the inventor involves the Cnr-TTO already in the negotiation phase in order to avoid double taxation.

Patents extension, maintenance and abandonment

  1. After the first filing, the TTO requests from the Patent Commission to provide consultative opinion regarding the opportunity for international extension of the patent application.
  2. Within 10 months from the first filing date, the competent Patent Authority emits and sends to TTO a search report and a preliminary written opinion regarding the patent granting. The IPR Specialist analyses its technical contents and shares his/her analysis with the inventor. Moreover, the IPR Specialist collects from the inventor information regarding the possible expression of interests received, active projects exploiting the invention, the point of view of co-owners, of the Institute and of the Department. Based on this information and on the opinion of the Patent Committee, TTO decides whether to continue the protection process and which procedure to follow to extend the patent protection to territories of strategic interest.
  3. The approval of the extension of patent rights abroad is taken by the TTO Head, who decides on the cost sharing between the TTO and the Institute and/or Department involved. In case the TTO Head deliberates not to continue the protection process or its extension abroad, the inventor can acquire the patent application ownership, preserving the rights of third parties (e.g. co-owners). If the inventor or co-owners do not show interest in acquiring the patent application ownership, it will be ceased (abandoned) or will not be extended.
  4. As established by Article 19 of the IPR Regulation, the TTO Head can decide on the abandonment of a granted patent or of a patent application under examination, basing on predetermined criteria and on the progress and outcome of the examination procedure within competent Patent Authorities. In case the abandonment decision is deliberated and pre-emption rights with third parties are preserved, the IPR Specialist proposes the inventor to acquire the patent ownership; in case of acquisition (i.e. transfer of patent rights), the inventor will take charge of the costs for new ownership registration and patent maintenance.
  5. Every action regarding the maintenance and granting of the patent (e.g. entry to the national phases, official actions, appeals, divisional applications, continuation in part, etc.) will be jointly evaluated by the IPR Specialist and the inventor on the basis of predefined criteria. Before the final decision, the authorized patent attorney should be consulted. The IPR Specialist will provide an opinion on the most appropriate action to take, while the final decision will be taken by the TTO Head.

 

Warranty All parties involved in the IPR evaluation, protection and exploitation process are obliged to guarantee absolute confidentiality throughout the whole process of internal evaluation (as part of the work contract with Cnr or by signing an NDA, if necessary). In case one or more parties involved in the process fail to comply with their duties, the rule of silent consent will be applied.
Timing The average time for filing a patent application may vary and depends mainly on the availability of the information and of the people involved in the process (e.g. inventor, IPR Specialist, patent attorney). According to Article 12 paragraph 2 of the IPR Regulation, TTO should terminate the internal patentability evaluation (or other IPRs) within 60 days from receiving the invention disclosure and its integration, if necessary.
Tools The prior state-of-the-art search is conducted by TTO’s IPR Specialists via online search engines, open patents databases (e.g. Espacenet, Patentscope, Google Patents) and the Questel-ORBIT platform (available through a paid license).

Besides the activities related to Cnr patents assignment and licensing, TTO provides for directly commissioned or in (inter)national research projects, ad hoc advice and support to Cnr scientists regarding the negotiation of IP-related matters, in contracts with private industrial partners and in collaborative R&D agreements either with public or private third parties.

 

Information provided by: Technology Transfer Office (Struttura di Particolare Rilievo Valorizzazione della Ricerca)

Last update: 04/01/2019