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Paths to intellectual protection

Specialists recommend searching patent databases even before starting research projects

Daniel BuenoThe more patents researchers have, the more likely it is that they will leave academia to sell the results of the studies and receive better compensation. At least this is what an article in the January 2 issue of the journal Nature shows. The article comments on a study conducted with Belgian researchers in the period from 1996 to 2005. No such trend has yet been seen in Brazil, but researchers and universities are in fact paying more attention to filing patents before publishing in scientific periodicals. This is a culture in the making. For researchers who at the end of a project believe that it is possible to obtain intellectual protection for the results, specialists recommend that the first step should be to analyze three things: Determine whether the invention is really novel, whether it can be classified as an inventive activity, and whether there is an industrial application for it.

The Centers for Technology Innovation (NITs) that are affiliated with universities and research institutes, also called innovation agencies or intellectual property coordinating offices, are responsible for evaluating applications in terms of the requirements and for the interaction between the public and private sector. “The notification form that researchers complete contains the information our specialists need in order to be able to understand the technology, conduct research using Brazilian and foreign public patent databases and, if protection is being sought, identify the most appropriate strategy,” says Patrícia Leal Gestic, Director of Innovation and Intellectual Property at the Innovation Agency (Inova) of the University of Campinas (Unicamp).

“When I file for an invention, Inova recommends that I also research prior art documents in international patent databases such as Derwent and USPTO (the United States Patent and Trademark Office),” explains Professor Oswaldo Alves, coordinator of the Solid State Chemistry Laboratory and the Nanostructure Synthesis and Biosystems Interaction Laboratory at Unicamp. Alves knows what he is talking about: He has already filed 25 patents, three of which are international, and have been granted five letters patent; he has also signed a technology transfer agreement with Contech, a company based in Valinhos in inland São Paulo State.

Gestic points out that the agency recommends that researchers use public patent databases, not only for analyzing technologies having patent potential, but also before starting a new research project. “When these databases are consulted beforehand, researchers can then begin to plan their research with emphasis on unpublished works and the possible application of the technology,” says Vera Crósta, a consultant in the area of innovation and technology transfer at VC Consultoria and the National Association of Research and Development of Innovative Companies (ANPEI). “The focus is on the advancement of knowledge and going beyond what has already been done,” advises Crósta, who has a degree in industrial pharmacy and specializes in the quality and management of innovation. “If the research is limited to academic databases of articles, researchers will be one or two years behind the state of the art,” Crósta notes. In many countries, there is already a culture that dictates that a patent must be filed before scientific articles are published, particularly in areas of technology. “A scientific article should not be submitted for publication until the National Industrial Property Institute (INPI) has assigned a registration number,” says Alves.

Crósta points out that it is important for the NITs to have staff available who are qualified to assess the technology and its potential “because you have to keep an eye on the market to know what its possible applications are.” Everything that needs to be protected in a patent is described in the patent claim. “If the claims are prepared only from an academic viewpoint, the scope of coverage may be limited,” Crósta notes. It is necessary to understand the opportunities for application in the market as well.

Technologies that have many different uses and can serve different sectors expand the range of applications, and they usually have greater sales potential. Confidentiality, intellectual property and participation in the results are, in the consultant’s opinion, the most sensitive points in a negotiation. “If the specialists decide that the invention does not satisfy the requirements for protection, we will still attempt to develop strategies to sell the know-how,” says Gestic from Inova.