Inventions and Patents

Links
www.depatisnet.de
Derwent
ep.espacenet.com
Google
www.ige.ch
www.uspto.gov

Topics

1. Definition
2. Patentability
3. Patenting and Publishing
4. Procedure
5. Patent proceedings
   
6. Ownsership
7. Costs and financing
   
8. Further information
   

1. Definition: What is a patent?

Patents are used to legally protect "inventions". An invention must have a "technical character", or in other words, it must make a technical contribution to the state of the art. It is very important that the invention is new in order to be protectable. Novelty in this context means that the invention may be shown only to those persons who are bound to confidentiality prior to filing a patent. In particular, the invention shall not be published before filing a patent (this applies not only to scientific articles but also to websites, media reports, posters and oral presentations). In return for protection, the invention must be disclosed. The patent protection consists of the patent holder being legally entitled to prevent a third party from using the invention commercially. The patent holder may transfer this right to third parties by selling the patent or by concluding a license agreement.

The exclusivity applies to those countries where the patent has been filed and granted. Furthermore, the protection time is limited to 20 years.

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2. Patentability: What can be patented?

Patents may be granted for inventions of technical character, if the invention is new, involves an inventive step and is industrially applicable. There are, however, some exceptions to patentability mainly in the field of biotechnology and medical treatment.

In many countries, software or procedures based on computer programs can be protected only if they contain further technical elements. This means that program-controlled equipment, procedures for production and control of procedures can be patented as a rule. In some countries, for example the US, the possibility of patent protection is broader. In any case, software is protected by copyright.

More details may be found under Computer programs.

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3. Patenting and publishing

Many scientists are hesitant to patent an invention expecting that publishing their results will be restricted by a patent application. This is not correct. The following information explains how patenting and publishing can be combined:

In principle, results can be readily published as soon as a patent is filed. It is important however, that nothing, not even a part of the invention, reaches the public before the patent application is filed, neither via a lecture, a poster, an exhibition, a scientific publication, a presentation or any other kind of public disclosure. Internal group seminars are not regarded as public disclosure. It is however highly recommended to make the group members aware of the confidentiality. As soon as the patent is filed, you can publish as you like.

Some countries, such as the USA and Japan, allow a grace period within which inventors can still patent their invention even after having published it. Others, such as Europe, do not have a grace period.

Every patent application is published by the respective patent office 18 months after the priority date. From that time point onwards, you can cite it as a publication.

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4. Procedure

Inventors at ETH Zurich must report every invention that was made in the course of their employment to ETH transfer in writing.

The following inventions are not subject to mandatory reporting:

• private inventions not made in the scope of the employment contract and without having used the infrastructure of ETH Zurich;
• inventions by students within the scope of their bachelor or master thesis (and if no other employees contributed);
• inventions by professors within the scope of consulting activity and without having used the infrastructure of ETH Zurich.

If you have any doubts, please contact ETH transfer.

The mandatory reporting does also apply for patent applications filed in the name of a company on which you are named as an inventor, for example as a result of a research collaboration. This shall be reported at the latest four weeks after application.

The general procedure is as follows:

1. Carry out a patent search

To patent, it is important that your invention is new. As a rule, you will know the scientific literature of your field very well, but what about the patent literature? You may consult various patent databases on the Internet in advance to find out whether patents already exist for inventions which resemble your own or concern a similar problem.

2. Write an invention disclosure

An invention disclosure provides the most important information allowing us to make an initial assessment as to whether it makes sense to file a patent for the invention, and if so, where and how. You can find a questionnaire for the invention disclosure on this website under Documentation and Forms.

Normally, this is the first step. Please do not hesitate to call if you have any questions.

3. Evaluation by ETH transfer

After having evaluated your invention disclosure, we will jointly take the first decision as to whether a patent application makes sense in principle or not. Whether a commercial exploitation of the patent is desirable and is possible plays a major role here.

In the case of a decision in favor of a patent application, we will link you with a patent attorney, who will together with you draft a patent specification and the corresponding patent claims. ETH transfer will subsequently take over the administration of the case, whereas you as the inventor are responsible for the technical content and information.

For the exploitation, we will jointly look for a licensee. This may also be yourself, if you start up your own company and wish to use the patent (spin-off of ETH Zurich). Within 30 months after the filing date of a patent, an interested party should be found, in order to coordinate the subsequent patent strategy with the licensee.

If both the Vice President Research and Corporate Relations/ETH transfer and the responsible institute/professorship reject the patenting and commercial exploitation of an invention, the rights can be assigned to the inventors privately. These inventors can file for a patent in their own name and at their private cost, and exploit it independently of ETH Zurich.

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5. Patent proceedings

A “patent strategy” must be developed for each invention. This will depend on several factors, including the countries in which the invention may be commercialized. A patent always confers protection only in those countries in which it was applied for and granted. Thanks to several international agreements, it is sufficient to first file in a single country. Within one year, you can extend the application to other countries. The submission of the application will be confirmed by the patent office and a priority date is given. This date triggers novelty: from now on, you are allowed to publish, but not before.

Most inventions of ETH Zurich are registered either in Switzerland, at the European Patent Office, in the United States or as an international PCT application (Patent Cooperation Treaty, allows to seek patent registration simultaneously in around 140 countries).

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6. Ownership of inventions: To whom does an invention belong?

An invention belongs to ETH Zurich if it was made in the scope of the official employment activities at ETH (service invention). This normally applies to inventions of Ph.D. students, scientific collaborators, assistants and professors, but not for students without an employment contract with ETH. Such service inventions must be filed in the name of ETH Zurich. The inventors are normally remunerated with one third of the net income generated by the exploitation of such invention.

If an invention was made in the course of a research project with industry, the research agreement stipulates the ownership to the results and the rights to use them.

To whom do inventions of students belong?

ETH Zurich cannot claim inventions made by its students within the scope of their bachelor or master thesis (i.e. without being employed or paid). In the case of an employed co-inventor (e.g. a supervisor), both parties are joint owners. However, the students may transfer their rights to ETH Zurich and will then be supported and participate in any income on the same basis as ETH employees.

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7. Costs and financing of a patent application

A patent application tends to be relatively expensive. It costs several thousand up to over 100’000 Swiss francs, depending on the complexity of the patent as well as the country where the patent application is filed. The expenses are accounted for the work of external patent attorneys preparing the patent specification, for office fees and translations.

If an invention is made within an internal ETH project, patents will be filed in the name of ETH Zurich. The costs will be borne by ETH transfer if:

• the invention appears to be patentable on the basis of the available information;
• a potential market or prospective customers exist;
• the exploitation strategy has been discussed in advance with ETH transfer and the Vice President Research and Corporate Relations supports the exploitation.
  

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8. Further Information

• American patent office - www.uspto.gov: Here the full text of US patents can be examined and downloaded free of charge
• Derwent Innovations Index (with costs, but free access for ETH-members). A very good patent database with 20 million patents and good summaries of the patent contents. The full text of the patent may be inspected via the patent number in esp@cenet or in USPTO
• European database (Espacenet) - ep.espacenet.com: This database contains the bibliographical data and facsimiles of patent applications from individual European countries, EPO and PCT applications. It also holds abstracts and titles in English with bibliographical data of over 30 million documents worldwide inclusive of Japan and China (all since 1920)
• German patent office (Depatisnet)
  
• Google Patent - www.google.com/patents: contains US patents. Very user frienly search tool
• Swiss Federal Institute of Intellectual Property (IGE) - www.ige.ch: At IGE, you can do your own patent search supervised by a professional patent examiner (begleitete Patentrecherche)

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