- What is technology transfer?
- What is the difference between an invention and a discovery or an idea ?
- I have invented something. What are the next steps?
- I’m invited to present my results at an upcoming conference – what should I do?
- I need to discuss a possible collaboration with a third party because my invention is not mature enough for a patent at this stage. What should I do?
- Who owns the rights to my invention or my software ?
- Is the inventor involved in the transfer process?
- What if I want to create a start-up to develop and commercialize my invention myself ?
- How much do PACTT’s services cost ?
- Does a patent grant the status of a monopoly?
- Is a patent going to stop my research ?
- Do the inventors participate in the economic success of their invention?
- Can a new software be patent-protected ?
- What is the best way to distribute software ?
The term “technology transfer” refers to the transformation of research results into products that are accessible to society.
Universities do not have profit making or commercial objectives. However, by their very mission and funding through public money, they should make results of their research available for the benefit of the public, in exchange of a fair return on their investment. In order to do so, the Institutions have chosen to organize and clarify their interactions with industry by setting up a technology transfer office.
Ideas are not patentable per se. An invention, in terms of intellectual property, must result in a novel solution to a technical problem, and must adhere to several criteria to be patentable :
The first criterium is novelty: such criterium is fulfilled if the invention is not part of the state of the art. The state of the art is formed by all technical knowledge in the public domain before the patent filing date (in any country) ; such knowledge could be expressed in written or oral form, or could be described by its use or by the availability of a sample.
An invention also needs to involve an inventive step: it should be sufficiently inventive – i.e., non-obvious to an individual skilled in the subject or topic – in order to be patented.
Finally, it needs to be susceptible of industrial application: it can be made or used in some kind of commercial application industry.
However, some inventions can not be patented in Europe. In particular, ideas, concepts, scientific theories, mathematical methods and formulas, surgical or therapeutic treatment protocols, human diagnostic protocol, plant varieties, animal races, etc.
Your idea can also be protected by other means than with a patent, particularly by filing an industrial design (for example, for innovative shape of a surgical instrument.)
- Maintain complete secrecy – do not disclose your invention to third parties.
- Fill in an Invention Disclosure Form (IDF) or Software Disclosure Form (SwDF) and contact PACTT. The forms help to gather essential information in a structured fashion for the evaluation of the project.
- Keep all your research documents in a safe place.
- Do not sign any agreements concerning your invention directly with a company, even if you know the company well and have worked with them previously.
PACTT will need some time to evaluate the potential of your project, so please get in touch with us as early as possible. The process usually takes a few weeks.
Once a patent application has been filed you can publish your results or present them at a conference.
If your results have been protected by a patent application, they can be disclosed to the public. However, any additional results that are important for your invention but are not included in the patent application are not protected. Please contact PACTT for details.
If your invention has not been protected, contact PACTT immediately. Disclosure of your invention to others will jeopardize subsequent protection through a patent.
I need to discuss a possible collaboration with a third party because my invention is not mature enough for a patent at this stage. What should I do?
In order to preserve the rights to the invention we recommend you ask the other party to sign a “Confidentiality Agreement” or “Non-disclosure Agreement”. Template agreements are available here . Contact us should you need help.
In Switzerland, the Swiss Code of Obligations (CO), article 332, states that an invention and a software belong to the employer of the inventor, if such invention or software is created while executing tasks for his/her employer. Specifically, for UNIL, the same rule is given by article 70 of the Law on the University of Lausanne (LUL), and for CHUV by article 47 of the Law on the Personnel of the State of Vaud (LPers-VD) which refers to the CO. UNIL and CHUV encourage innovation by redistributing 1/3 of net income to inventors More information
The inventor plays a key role in the transfer process. During the drafting of the patent application there are frequent exchanges between the inventor, PACTT and the patent attorney. Later, during the actual transfer, the inventor usually has frequent contacts with scientists of the partner company, while PACTT will drive the commercial and legal aspects.
Throughout the process, PACTT will keep the inventor informed of all the legal procedures undertaken.
PACTT is there to help you with the first steps. We provide advice on the legal aspects of creating a company, discuss your business plan with you and provide contacts to organizations that support innovation and entrepreneurship.
Our fund InnoPACTT supports entrepreneurs who wish to mature their start-up project. More information
If your start-up project is based on intellectual property created at UNIL or CHUV, PACTT will also put in place an agreement on the exploitation rights.
Finally, PACTT can also advise you on institutional policies that might apply to your situation (i.e. management of conflict of interests or « activités accessoires »).
Our services are free of charge for employees of the Institutions. PACTT pays the expenses of the preliminary analysis of the invention and all patent related costs. These costs will be deducted from any future revenues.
A patent is a government-granted protection status for a technical invention. A patented invention can only be exploited with the permission of the patent holder (within a certain geographical jurisdiction and over a maximum of 20 years). The patent covers the manufacturing, use and commercialization of the covered product, but not its use for private (non-commercial) or research purposes.
This protection is only provided in the territory (or territories) of the government (or group of governments) that have granted the patent and has a maximum duration of 20 years. The patent allows the holder to prevent unauthorized commercial use of its invention (such as manufacturing, exploitation, sale or import). After such period, the invention is in the public domain and can be freely exploited.
It is also important to know that the same technical problem can be addressed by different solutions, allowing competitors to propose alternative products without infringing upon existing patents.
A patent provides exclusive protection for the commercial applications of the protected the technology. It allows the patent holder to prevent others from exploiting the invention commercially.
Patent protection does not cover the use of the invention for research purposes. On the contrary : one of the conditions for a patent to be granted is for the invention to be described publicly and in detail. In this way, patents become a source of information for researchers.
The net income from license agreements (after deduction of all patent application expenses and a fixed rate of 10% to cover operational costs of the technology transfer office) is distributed as follows:
· 1/3 to the inventor(s)
· 1/3 to his/their unit
· 1/3 to the Institutions
Software is not recognized as an invention in Europe and therefore cannot be protected unless it is an integral part of the invention.
Software is protected through copyright (also protective literature and artistic works). Copyright protection is issued automatically upon the creation of the work. It is, therefore, not necessary to formally submit or register the work. To be able to protect your rights in case of lawsuits, we recommend that you make PACTT aware of your software using a software disclosure form (SwDF).
It is impossible to provide a single, universal answer that would apply to every piece of software developed. Each possible solution has advantages and disadvantages :
an exclusive marketing license to a commercial partner could be the best solution for users and provides revenues for the academic institution, its researchers and, in general, more funding for their research.
Making software available online for free consumption could be seen as a way to allow the entire public to profit from it. However, using a commercial partner as an intermediary for distribution could be serving everybody’s interests more effectively, especially if additional investments are required to develop the quality of the software, manage updates and bug fixes in a professional manner. Finally, making the software available for free will prevent any monetary valuation of the software and thus result in lack of opportunities for funding.
A difference must be made between « open source » licenses and « copyleft » (GPL) and « non-copyleft » (also known as academic licenses ) :
Copyleft : these are licenses that require all developers or licensees using the « open source » source code to distribute all the software containing all or part of the original code under the same conditions. Therefore, if the original license is free, every new version or derivative must also be made available for free to the public. For a « copyleft » license, our researchers must benefit from the support of the users’ community and therefore foster additional scientific advances and discoveries for the common good.
Non-copyleft: these are the most permissive licenses. Every licensor can use the source code in the same way as the copyright holder in exchange for recognizing the author’s origination rights and respecting the notices regarding copyright in the original source code. In such cases, licensees can use their subsequent adaptations for commercial purposes. It can be shocking to the original code developers that a third party (but not the original investors) can profit from their creation.
The « creative commons.org » system : an excellent platform for distribution of free software, in particular because it offers the license provider 6 different license options :
– Commercial (or not) use by licensees
– Right (or not) to modify the software
– If authorization to modify the software has been granted, the new product derived from the modification must be distributed according to the same terms of the original source code.
In conclusion, we recommend that you communicate your developments to PACTT in order to assess with you which is the best way to monetize your invention.