The Nucleus for the Patenting and Licensing of Technologies (Nuplitec), created by FAPESP, is showing good results. In the period of one year, with support from Nuplitec, 13 patents have been deposited with the National Institute of Industrial Property (INPI). One of them, relating to a product developed in the area of Biology, was also deposited in the United States. With support from the Foundation, the inventors are now negotiating the licensing of their products with private partners.
“Half of the inventions are close to being licensed”, reveals Edgar Dutra Zanotto, the assistant coordinator of the Foundation’s scientific directorate. Patents have been deposited for inventions in the areas of Biology, Medicine, Chemistry, Agrarian Sciences, Civil Engineering, Physics and Materials. Another 11 products that are applicants for patenting are being analyzed by FAPESP’s advisers.
Nuplitec is a pilot program, through which FAPESP intends to provide a service for the scientific community. But its main objective is to try to disseminate among researchers the culture of protection for intellectual property. According to figures from INPI, in the the 90s, the universities put forward 355 patent requests, or 0.24% of the total deposited in the period. The State University of Campinas (Unicamp) leads the ranking, with 125 patent requests, followed by the University of São Paulo (USP), with 76; the Federal University of Minas Gerais, with 39; and the Federal University of Rio de Janeiro, with 31 applications. It is not very much, in particular if compared with the 5% share of American academic institutions in the total of patent requests deposited in the United States. This percentage tends to grow even more: between 1986 and 1997, the number of patent requests presented by universities in the USA grew 280%, whilst requests from American companies increased 73% in the same period.
Nuplitec will be engaged whenever a researcher and the FAPESP advisor responsible for the project consider that an invention resulting from a project sponsored by the Foundation is original and has market potential. The application for a patent to be deposited is carried out through a form, available on the Foundation’s website, accompanied by replies to a questionnaire with a series of questions as to technical viability, maturity of the project, need for prototypes, and costs, among others, and by a report describing the invention. This report should be sufficiently detailed to be analyzed by FAPESP’s advisors. The proposals are analyzed taking into account the items of originality and market potential. “Once the request is approved, the report will be used as the basis for the patent itself”, Zanotto explains. The final text to be forwarded to the INPI, in perfect “patentese”, will be written by specialists from an office hired for this purpose.
FAPESP finances the deposit of the patent with the INPI and makes funds available for travel for a 12 month period, to ensure mobility for the inventors in the stage they are negotiating the licensing of the product, both in Brazil and abroad. When this period is over, and if the product is licensed, FAPESP finances the deposit of the patent abroad. If not, Nuplitec withdraws its support, and the inventors have to carry on negotiating the licensing for their own account.
When a product is patented, ownership lies with FAPESP, as the party responsible and the sponsor of the patent request. In the case of licensing, the expectation is that something between 1% and 5% of the proceeds from the sales of the new product, developed by private sector partners, should be kept by the owner of the patent. Costs incurred with the process of registering the patent are to be discounted from this percentage, and the net profit will be split between the inventors and the universities or institutes with which they are connected. The Foundation will keep for itself a third of these funds, to be used to finance new projects.
When the invention is patented with co-financing from private enterprise, FAPESP will split ownership with the company. In this case, its share in the net sales proceeds will be one quarter, with the rest being shared between the inventors, the university or research institute, and the private sector partner. This was the model used for the patenting of Evasins, which was deposited with the INPI with the support of Nuplitec.
Developed by the Center of Applied Toxinology (CAT) at the Butantan Institute, the product is the active principle of a molecular prototype that will be used in the production of a drug with anti-hypertensive properties. Evasins will be developed in partnership with the National Pharmaceutical Consortium (Coinfar), made up of the Biolab-Sanus, Biosintética and União Química laboratories, with which FAPESP shares ownership and, in future, the sales proceeds. The new drug will compete with Captropil, an anti-hypertensive medicine produced by Squibb that ensures the company annual earnings of US$ 5 billion.
Nuplitec does not yet have a specific allotment in the budget, since the program is of an experimental nature. It will grow along with the demand for the patenting of inventions. “It is another service for the community”, Zanotto stresses. The estimate is that there is a repressed demand of at least a hundred patents a year, in the universities and research institutes of São Paulo.
In defense of intellectual property
The National Institute of Industrial Property (INPI) launched a program to encourage the creation of nucleuses of intellectual property at the main academic institutions in the country. The objective of the program is to guarantee support for researchers who want to register inventions, make patent requests, or to negotiate their licensing. After identifying the universities with potential for setting up these structures, the INPI will carry out seminars, with the support of specialists, to consolidate the program, which will extend for a period of two years.
“In the past, the INPI was very timid in its relations with the universities. We are making an effort to produce agreements, and to implement nucleuses of intellectual property and the transfer of technology in those institutions that do not have this structure yet”, points out José Graça Aranha, who is the INPI’s president.
In the assessment of Maria Beatriz Amorim, the coordinator of the program, the creation of this nucleus is fundamental to bring relations between the universities and the productive sector closer together. “The nucleuses in the American universities negotiate licensing agreements, handle the depositing of patents, and generate millions in business for the universities and their researchers”, she says. She mentions the Carnegie Mellon University and its inventors as an example; in 1998 they earned over US$ 30 million in royalties and capital gains.