Industrial Property refers to the rights granted to the owners of certain creations to prevent third parties from manufacturing, distributing or exploiting them without their consent.

These rights arise from registration with the corresponding agency and are granted after passing the procedure established for this purpose.

Industrial Property protects all creations that are related to industry: patents and utility models, distinctive signs, designs and topographies of semiconductor products.

The patent is one of the most common forms of protection of the results obtained as a result of research at the University.

A patent is a property title over an invention, of a temporary nature, granted by a state and with effect in its territory, which grants its inventor or holder the right to temporarily prevent others from making, selling or commercially using the invention.

In return for this right, in the published patent document, the patent holder makes the technical information relating to the invention available to the public.

The following may be the subject of a patent: a process, a manufacturing method, a machine, apparatus or product.

A patent grants its owner the exclusive right to prevent others from commercially using the patented invention. Therefore, owning a patent significantly increases the ability to take successful legal action against those who copy or imitate a protected invention.

As the patent holder, UPV cannot commercially exploit the results, but can license its rights to the invention to others in exchange for fixed sums and/or royalties. These returns are intended to recover the investment made in R&D and protection. In the Regulations for the Protection and Transfer of Intellectual and Industrial Property Rights of the UPV it is established that inventors are always granted “moral rights of authorship” and that the benefits obtained from the exploitation of the result will be distributed according to the following distribution:

• 60 % Inventors (a portion may be allocated to the Research Structure)
• 40 % UPV (reinvestment in R&D system)

The ownership of patents increases the possibilities of obtaining external financing, through calls for public grants to bring the product to the market, or through contracts with companies to carry out a proof of concept on the result.

The application for a patent is not incompatible with the scientific publication of the result, but it is essential to do it in the correct order: first patent and then publish.

Other types of protection within industrial property are:

Brands

Distinctive sign composed of words and/or drawings that serve to distinguish in the market the business origin of the product or service it identifies.

Industrial Design

Semiconductor Product Topography protection titles protect the layout of the different layers and elements that make up the integrated circuit, their three-dimensional arrangement and interconnections, which ultimately constitute its topography.

Topographies of Semiconductor Products

Semiconductor Product Topography protection titles protect the layout of the different layers and elements that make up the integrated circuit, their three-dimensional arrangement and interconnections, which ultimately constitute its “topography”.

Plant Varieties

Industrial Property also extends to Plant Varieties that are obtained through traditional breeding methods, such as selection or hybridization, as long as they meet the requirements of novelty, distinctness, uniformity and stability.
At UPV, research activity in this area is becoming more and more significant. In case of obtaining a Plant Breeder of interest for the industry, do not hesitate to contact i2T.

According to the Patent Law The requirements to protect an invention are basically the following:

• New atThe invention is not covered by the prior art.
• Inventive Activity:the invention does not result from the state of the art in a way that is obvious to a “person skilled in the art”. This excludes those evolutions or applications of knowledge that a graduate, architect or engineer in the field could reach without doing further R&D.
• Industrial application: the invention must be capable of being used or manufactured in any branch of industry, including agriculture or commerce.
• Sufficiency of the description: The patent must contain sufficient information for its implementation or execution.

Prior art refers to the body of knowledge that has been made public prior to the filing date of a patent application.

The protection process at the UPV starts with a communication of results completed by the researchers. In the UPV Intranet, in the Research section, there is a link to form communication of results.
This form requests information on who the inventors are, novel aspects, applications, etc. A complete technical description of the result and a document indicating the most relevant results located in article and patent database searches are also requested.
After filling out the form, the person identified as the manager receives an e-mail with an attachment that includes the information entered in the form.
To complete the process, the document must be signed and registered.

Below you can consult the Help document to communicate an Invention type result (Patents, Know-How and Plant Varieties).

This document also includes a script for a complete description of the result.
For more information about the Priority Search you can consult the FAQ about it.

Authorship in Industrial Property is a matter of special relevance since it can even lead to the annulment of a patent. Therefore, when determining who should appear as inventors of the patent, it is advisable to consider which researchers have contributed inventively to obtain the result, beyond the approach of the technical problem to be solved and the supervision of the work done by others.

Thus, the inventor is the person who contributes intellectually to the development or creation of the invention.

In the case of participation of researchers from outside our university (guests, collaborative projects, etc.) who have participated in the development and who belong to other entities, we will review whether the exploitation rights belong to their respective entities and in this case they will be co-owners of the patent. In the case of visiting professors’ stays, in some cases, the conditions of the stay regulate the treatment to be given to possible collaborative results.

On the other hand, trainees (students, non-working scholarships) are not salaried personnel, and therefore the exploitation rights (patrimonial) of what they have developed belong to them. A good practice is that they transfer their rights (only the economic rights, remember that the moral rights are inalienable) to the entity where they have done their training in exchange for having the same treatment as the personnel of the same in case of benefits derived from the exploitation of the result. You can access the UPV’s transfer of rights model by clicking here.

The UPV is the owner of the results generated by its personnel as a consequence of its research activity.

However, in order to determine to whom the ownership of a result corresponds, the following factors, among others, must be taken into account:

• Employment of inventors
• Participation of other entities
• Financing of the result
• Use of third party rights

i2T analyzes each result and elaborates and negotiates the necessary agreements to be able to manage the corresponding Industrial Property rights.

Is it mandatory to perform a search before filing a patent application?

The objective of a search is to find the relevant prior art, with the purpose of determining whether the invention is new and possesses inventive step.

It is not mandatory to perform a search before filing a Patent application, although it is very convenient:

• To avoid spending effort and money on something that is already patented
• To know the state of the art
• Or as guidance on how other applications on related topics have been drafted.

Before starting the search, it is necessary to consider the description of the invention, so that the technical problem it solves, the solution to it, the characteristics that are essential to solve it, the result and the effect obtained are clearly identified.

The prior art search is not a guarantee of absolute novelty. There may be inventions that do not appear in the databases at the time of the search, for example if the application is very recent, there is a period of secrecy during which it cannot be consulted. And we must always take into account the subjectivity of any search strategy, so it is not possible to ensure the recovery of 100% of documents on a topic.

How to do a novelty search?

The retrieval of relevant documents usually requires the combined use of classification symbols and keywords, either in the same search or in complementary searches, depending on the characteristics of the databases used.

As classification symbols, the most widely used are those corresponding to the International Patent Classification (IPC).

When it comes to the use of keywords in a search strategy, special care must be taken in the selection of terms, since the use of exact words can lead to null search results. The use of keywords requires consideration of possible variations in terminology, such as synonyms and synonymous expressions, different spellings in British or American English, and the use of truncations to cover as many derivative forms of the term as possible. Sometimes it is also necessary to consider the use of equivalent expressions and antonyms.

Which databases can I consult to perform a novelty search?

The recommended databases are:

• Web of science | Go to the website
• Espacenet – Advanced Search – Worldwide Option | Go to the website
• Google Patents – US Patents | Go to the website

Once it is decided that the patent application will be filed, i2T contacts Industrial Property agents to start the drafting work. The agent reviews all the documentation generated around the result (first description, inventors’ prior art search, patentability report, inventors’ observations to the report…) and works on a draft of the patent. The inventors will be in contact with the drafter to solve technical doubts and to review drafts. When the last draft is approved by the inventors and i2T, the patent is filed at the Patent Office.

“Explora IPR” is an application that you can find on your intranet, in the research section, and in which you can consult the file of both the patents of which you are the inventor, and those of which a member of your Research Structure is the scientific interlocutor, in the event that you are the Director of a Research Structure.

The public search engine “Explora I+D+i UPV” shows, of the patents, only a commercial abstract and an access to the external database ESPACENET, where the text can be downloaded.

With “Explora IPR” you can privately consult the application/concession/abandonment status of the same, both at Spanish and international level.

While studying and preparing a patent application, the result should not be published. It is important to avoid articles, online abstracts, press releases, presentations/posters/discussions in conferences…

Nor should courses or presentations be given prior to submitting the application, except under a confidentiality agreement.

Once the patent application has been filed with the corresponding Office, it is given an application number and a priority date. From that priority date onwards, results related to the patent can be published without these publications interfering with the evaluation of the patent.

However, it is important to note:

• As long as the patent application is not published, the content of the patent is kept secret.
• Any new development not covered by the patent that would later be protected could be affected by all previous publications.

Industrial property rights are territorial, and therefore only obtain protection in the territory of the country or countries in which the registration has been applied for.

From the date of filing of a first registration with a patent office, the holder has 12 months to decide whether to file an international application. If this period is not extended, the patent will only be protected in the country of first registration.

To obtain protection in several countries, protection procedures must be carried out in each of them. However, there are international agreements that simplify registration procedures at the European or international level.

The UPV’s strategy is to apply for the priority patent in Spain and before 12 months to request PCT. The PCT application allows 18 more months to make the decision about the countries in which the patent should be protected (entry into national phases) and to find an interested company.

At 30 months (12+18) is when the extension to the United States, Europe, or the regions of interest (national phase entry) would be requested. If at 30 months the phase entry does not proceed, the protection remains only in Spain.

The UPV generally does not enter into phases if there is no company that has licensed the technology and assumes the costs, since in this phase they rise considerably.

However, in cases where there is no such license to a company, if the researchers consider of interest to make such an extension, the status of the file is reviewed, the opinion of the co-owners is sought and it is analyzed if the UPV can finance part of the costs. According to the instruction of the Vice Chancellor of October 4, 2019 on co-financing of patent files, from the entry into phases, the inventors must co-finance 50% of the costs from their specific keys.

i2T accompanies you in all the phases of the process of commercialization and licensing, from technical validation and market analysis to the connection with companies for third party licensing or the creation of a spin-off.

A patent license is the contract that allows a third party to manufacture, use or commercialize the protected technology without infringing the exclusive rights of the UPV: the UPV remains the owner, while the licensee obtains access to the invention in exchange for the agreed conditions (payments, development milestones, territories, deadlines). From i2T we take care of the whole process, valuation, negotiation of technical and economic clauses, and administrative management so that your invention reaches the market.

The UPV assumes the initial costs of protection before the Spanish Patent and Trademark Office (SPTO), both for Spanish priority applications and international extension applications via PCT, of those inventions that are its property.

For phase entries, co-financing schemes are established whereby part of the patent protection and defense costs are paid by the UPV Patent Pool and part of the costs are assumed by the inventors’ cost centers.

At the UPV, if benefits are obtained from the patent license, once the expenses have been deducted, the distribution between the researcher and the university is as follows:

• 40 % UPV (reinvestment in R&D system)
• 60 % Inventors (a portion may be allocated to the Research Structure)