Raul AguiarInterest in protecting the results of scientific research for financial purposes is quite common in the business world, but not in academia. Slowly but surely, Brazilian university researchers are expressing more interest in this. This is due in part to initiatives by some universities that in recent years have begun investing in strategies to develop a culture of intellectual property and innovation management among their students, professors and researchers. The idea is to advise them on the requirements for patenting a product or process so that it can be used for financial purposes.
A patent is a title of temporary ownership of an invention. It is granted to the holders of rights to an invention that can be manufactured or that represents an innovative solution for a technical problem in a given field. Patents also specify the technical aspects of the innovation that was the subject of the application. Patents are scientific and technological documents that researchers can use to great advantage as they conduct their research.
The holders of rights to an invention may also be the inventors, but frequently the rights are held by their employers or financiers. In Brazil, the National Institute of Industrial Property (INPI) is in charge of examining and potentially granting patents. If a patent is granted, it can be commercially exploited for up to 20 years after the date the application is filed. At that point, the invention is released into the public domain and can be financially exploited with no requirement to pay royalties to its owners.
Specialists recommend that as early as the project planning stage and as the project moves forward, researchers should check to ensure that their possible results meet the three basic requirements for patent applications: they must be considered novel (if they are not in the so-called state of the art, which basically means that the public must have access to them before the filing date); they must be an inventive activity (obvious items are not patentable since a patent must be the outcome of a research effort); and some sort of industrial reproduction must be possible (see Pesquisa FAPESP Issue nº 217).
With 56 applications filed, the INPI ranked the Federal University of Minas Gerais (UFMG) first among Brazilian institutions of higher learning for patent applications in 2015. According to physicist Ado Jório de Vasconcelos, dean of research at the university, the top ranking is because of the work of the UFMG Technology Innovation Center which, since 2006, has had a patent analysis and drafting unit. “Also, since 2010, we have been doing work to educate the scientific community about the importance of intellectual property,” he explains.
By 2005 UFMG had amassed 160 patents. In 2015, this figure jumped to 747. “In the last 10 years, UFMG filed five times more patents than in its entire history,” Vasconcelos reports. He believes it is important for researchers to periodically search patent databases to check whether their research is really novel in a way that is patentable. “If the search is limited to databases of academic articles, the researcher will lag several months behind since it takes a long time to publish an article after it is submitted,” explains Vera Crósta, innovation and technology transfer consultant at VC Consultoria and the Brazilian Association for Research and Development of Innovative Companies (ANPEI).
In addition to concern about the originality of the research and thinking about the possibility of protecting its results, researchers need to know that a patent is not an end in itself. The end goal of a patent is to have it licensed so that it can be financially exploited by one or more companies. A license is the permission granted by the owner of the intellectual registration to anyone who wishes to manufacture or market the patented product. The contract between the interested parties contains clauses, for example, on manufacturing timeframes, royalties to be paid and penalties.
There are several repositories for consulting patents in Brazil and abroad. Some are free, such as the US Patent Office (USPTO) database, which holds roughly seven million patent documents in any number of fields of knowledge, and Espacenet, maintained by the European Patent Office (EPO), with more than 60 million patents from many countries. Others are not free, such as the Derwent Innovations Index by Thomson Reuters that offers a collection of summaries of over 11 million patents. Repositories that require payment can be accessed free of charge by researchers at public universities in Brazil via the Periodical Portal of the Brazilian Federal Agency for the Support and Evaluation of Graduate Education (Capes).
By searching Brazilian and international repositories, researchers can gain a better understanding of the state of the art in areas of interest to them (this is separate from obtaining a patent as a goal of their own research). A review of the relevant literature, either in scientific journals or patent databases, is a must for a research effort that seeks original results capable of advancing knowledge. “Before drafting the application, researchers are advised to search the INPI archives to analyze patent documents that deal with subject matter similar to theirs,” suggests Ana Maria Nunes Gimenez, a researcher at the Department of Science and Technology Policy of the Institute of Geosciences at Unicamp (DPCT-Unicamp). According to Gimenez, it is important to avoid disclosing unpublished information at events or in scientific publications before the application is filed. Doing so could subsequently interfere with obtaining the patent. However, once the application is filed, researchers can disclose the results of their work normally, she explains.
The strategy of consulting patent databases has been used for some time by researchers at Clorovale Diamantes, a company founded in 1997 that produces synthetic diamonds, financed by the FAPESP Innovative Research in Small Businesses Program (PIPE). “This is a fundamental stage in the process of developing our scientific projects,” explains physicist Vladimir Airoldi, researcher at the National Institute for Space Research (INPE) in São José dos Campos in inland São Paulo State, and founding partner of Clorovale. “This helps us plan research to hone in on originality and the possible applications of our results.” Airoldi currently has five patent applications pending with the INPI and has had one patent granted on using synthetic diamonds for orthodontic braces, on the market for more than 10 years. The patent has been granted in Brazil, the United States, Europe, Australia, China and Japan.
Another company that uses this strategy is Apis Flora. “Searching for prior art helps us avoid reinventing the wheel. We don’t waste time and we focus on what is really not out there already,” says Andresa Berretta, manager of research, development and innovation in the company. With headquarters in Ribeirão Preto, São Paulo State, Apis Flora was one of Brazil’s pioneers in manufacturing honey and propolis-based products. Founded in 1982, Apis Flora has four patents for propolis: a standardized extract, a thermoreversible gel, a biomembrane and product-based microparticles (see Pesquisa FAPESP Issue nº 241). According to Berretta, her in-house team drafted the first four patent applications for Apis Flora. “We rely on guidelines from the technical staff of a patent office that we use,” she says. More recently, due to the number of pending projects, Apis Flora has begun to send technical reports to outside offices that draft patent applications with the Apis Flora team.
Companies are required to pay fees to file patents and hire firms that specialize in writing intellectual property applications. In Brazil, filing fees range from R$70 to R$260, depending on the type of applicant and whether the application is filed in electronic form or on paper. In the United States, the cost is between $70 and $280. In addition, there are also fees for intellectual property agents who assist in the process of drafting the application, not to mention future costs of maintaining patents, as well as annual fees, concession fees, etc. According to Patrícia Leal Gestic, director of Intellectual Property at the Unicamp Agency for Innovation (Inova Unicamp), the University of Campinas manages most of the assets and expenses of the entire protection process, from the phases of analysis and drafting to payment of the official fees. “In July 2016, Unicamp crossed the threshold of 1,000 active patents in Brazil and abroad. Of this total, 130 are licensed for the market,” she says.
Patrícia Villar Martins, coordinator of Intellectual Property at the Federal University of São Carlos (UFSCar) Agency for Innovation, stresses that it is important for researchers to contact innovation agencies or the technology innovation center (NIT) at their institutions. “These entities provide advice to researchers throughout the process on protecting, managing and maintaining patents, from the time the application is filed until the patent is granted,” she explains. According to Martins, the scientific community is still unfamiliar with existing protection mechanisms, their requirements, the importance of patents for scientists and universities, and the best strategies for taking the product to market by transferring the technology.
For universities that do not have innovation agencies and for businesses, the procedure is to find offices that specialize in providing intellectual property consulting services. According to intellectual property agent Leonor Magalhães Galvão, the partner who runs the patent department at Magellan IP in Rio de Janeiro, “many researchers do not know what a patent application is or how to prepare one.”
For Vera Crósta, it is important to have a professional who specializes in intellectual property write the application. This is because writing a patent application and writing a scientific article are two different things. “You have to keep an eye on the market to determine the possible applications of the product or process being developed. If the claims are drawn up by an academic and no one else, the scope of coverage of the application may be restricted, making it difficult for a company that is interested in it to license and exploit it for commercial purposes,” she says. Once an application is filed, it remains confidential for 18 months before it is published in the INPI Revista Eletrônica da Propriedade Industrial (RPI) [Electronic Journal of Intellectual Property]. If the patent is granted, it will be valid as of the application filing date. This means that legal action can be taken against any party that accesses information about the application and attempts to copy the product, even before the patent is granted, and that party can be required to pay for the intellectual property rights.
Researchers often fail to obtain advice and then they make mistakes, such as filing a patent application in the United States just because processing time is shorter. On average, it takes the USPTO four years to grant a patent or reject an application, while in Brazil the wait can be 14 years. “The problem is that a patent obtained in the United States does not guarantee that a researcher will have exclusive rights for the same invention in Brazil,” Galvão explains. “A patent is a territorial right,” according to a clarification by Patrícia Tedeschi of the Center for Patenting and Licensing of Technology (Nuplitec), in charge of managing intellectual property for projects funded by FAPESP. She adds: “The advantages of obtaining a patent here or elsewhere will depend on the strategy of the party interested in registering the patent.”
According to a report by the World Intellectual Property Organization (WIPO), the United States has the largest number of valid patents, 2.2 million of which are registered. Next is Japan, with 1.6 million. These figures tell us more than just the results of national efforts in inventions; there are major differences in intellectual property cultures in countries, with different beliefs about what can be considered deserving of a patent. Brazil ranks 19th, with 41,453 valid patents. Another reason for Brazil’s ranking is the amount of time it takes to process applications submitted to the INPI. It can take from eight to 14 years from the time a patent is filed until it is granted. The INPI ended 2016 with a backlog of 243,820 pending applications. Just 25,481 were fully processed. All told, the INPI received 31,020 new applications in 2016. Luiz Pimentel, president of the INPI, acknowledges that “our ability to review applications has failed to keep pace with the flow of incoming applications.”
Today the INPI has 292 specialists to review all patent applications; in the United States, there are about 6,000 examiners. To speed things up, the INPI hired 95 new examiners in 2017. These professionals are currently in training and they are expected to begin working in 18 months. There are cases in which the INPI offers priority processing, such as for environmental conservation technologies and patents considered strategic, especially for the Brazilian Unified Health System, to name a few.
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