What are the differences between industrial and intellectual property?
In Spain, industrial property protects all creations related to industry: patents and utility models, distinctive signs and designs. In contrast, intellectual property is reserved for protecting creations of the mind. These creations can be literary and artistic works such as novels, poems and theatre plays, films, musical works, artworks, drawings, paintings, photographs and sculptures or architectural designs. In both cases the office in charge of processing these rights is the Spanish Patent and Trademark Office. The most commonly used industrial property rights are patents and utility models, which protect inventions consisting of products and processes that can be reproduced and replicated for industrial purposes.
Why should commercially-exploitable scientific results be protected?
The only way to make commercial use of the ideas and research results generated is to obtain protection by means of a patent or any other industrial or intellectual property right. Attention should be drawn to the fact that, in order to put a product on the market, a significant investment normally needs to be made. This investment would be meaningless without holding the exclusive right granted by industrial and intellectual property rights, which greatly facilitate the return on investment. The most commonly used industrial property rights are patents and utility models, which protect inventions consisting of products and processes that can be reproduced and replicated for industrial purposes.
What kind of results can be patented?
Not everything is patentable. As an example, the Patent Act indicates that the following are NOT patentable:
  • Discoveries, scientific theories and mathematical methods.
  • Aesthetic creations.
  • Schemes, rules and methods for performing mental acts, playing games or doing business, as well as computer programs.
  • Presentation of information.
Inventions contrary to public order and good manners are also NOT patentable, namely:
  • Processes for cloning humans.
  • Modifying the germ line genetic identity of humans.
  • Uses of human embryos for industrial or commercial purposes.
  • Processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit, and animals resulting from such processes.
  • The human body at any stage of its formation and development or the simple discovery of its elements.
Can I publish in scientific journals and patent? In which order?
There is no incompatibility in patenting and publishing research results in a journal, but one must proceed in the correct order. First protect your work, then publish it and finally transfer it. Please keep in mind that, for a patent application to be finally granted, the research result must comply with a series of requirements, one of which is novelty. A patent will thus never be validly granted if its content is not new, namely if it has been made public or disclosed before an application was filed for protection with the relevant body (in Spain’s case the Spanish Patent and Trademark Office). On submission of the application, the content of the invention can be made public without having to wait for the patent to be granted, since protection becomes effective at the time of the patent application (priority date).
Who has ownership of a patent?
Under the Spanish Patent and Trademarks Act and the Andalusian Science and Knowledge Act 16/2007, December 3rd, relating to work-related inventions, it is the organisation (private or public company, regional body, university, foundation, etc.) to which the inventor or inventors belong(s) that owns the rights of the patent. When the invention arises as a result of collaboration between groups from different organisations, ownership can be shared by these organisations as a proportion of the contributions made by their respective researchers.
Can I create a spin-off? What do I need?
All researchers belonging to the Andalusian Health System in the province of Cadiz have at their disposal advisory and guidance services aiming to create spin-offs or Technology Based Companies (TBCs) arising from technologies developed by researchers. This way, we guide the entrepreneur in the different stages of setting up the company by offering advice, training and seeking funding for the development of their business idea.
What benefits does patenting their results give inventors?
Firstly, inventors have to patent their results in order to protect their inventions. For curriculum purposes, appearing as an inventor on the patent is a recognition that can be considered in benchmarks for career advancement. In this respect, the resolution of 23 November 2010 by the Chair of the National Evaluation Committee of Research Activity, which established a new field relating to the transfer of knowledge and innovation and updated the specific criteria in each field of evaluation, establishes that, in evaluating research activity, preference will be given to researchers who participate in patents in exploitation that are granted by the European Patent Office or extended internationally. For economic purposes, under article 61 of the Andalusian Act 16/2007, December 3rd, and Decree 16/2012, February 7th, SSPA researchers, who, as a consequence of conducting research, development and innovation activities, have protected their results with an industrial property right, the exploitation of which brings income to their employing institution, will receive a special incentive in line with the following percentages:
Sum of gross annual income Percentage to be split between the research personnel Percentage for the owner organisation
Up to €10,000 65% 35%
Excess over €10,000 and up to €50,000 40% 60%
Excess over €50,000 34% 65%
This way, the inventor will obtain a direct economic benefit from his invention.
Where is a patent valid?
Patents are valid certificates in the country or countries in which the application is made. However, an initial application in Spain affords protection for the first year (priority year) for member countries of the Paris Convention. Before this term expires, protection can be extended internationally. It is essential to bear in mind that just applying for a patent does not grant the owner the right to prevent third parties exploiting his technology. For this to happen, patents are subject to an examination process in each country or region in which the application is made; and this finally determines the level or protection to which the owner has a right.
Who pays the costs of patenting and how much does it cost?
The Technology Transfer Office of the Andalusian Public Health System (OTT-SSPA) will be responsible for all patent filing, processing and management costs, and all costs relating to commercialisation. The cost of a patent is variable, and to a large extent depends on the number of countries in which protection is filed. By way of indication, a patent application in Spain can represent an outlay of between €700 and €1,000 for administrative fees to be paid in a period of approximately 3 years, if managed by the applicant himself. If the services of an industrial property agent are used, the cost will increase in proportion to the professional fees charged.
If a company is interested in my results, how do I deal with it?
First of all, we should analyse the case together. From the Innovation Management department we can advise you on how to deal with the company concerned, proposing different models of how to work with the company: collaboration agreements, provision of services, etc. and also help you to protect the confidentiality of your projects.
How do I market my idea?
Our Innovation Management department offers you support in the search for commercial partners, which will allow you to find companies that are interested in licensing your patent and put it on the market. We can also advise you if you decide to set up your own company and market the process yourself.
Do you have any other questions? CONTACT US at: giacomo.dibenedetto@inibica.es