FAQs

discoveries, scientific theories and mathematical methods;
aesthetic creations;
projects, principles and methods of performing intellectual activities related to gaming or business activities;
computer programs, as such, without any technical application;
presentations of information.

How should I manage the publication of a paper and the disclosure of an invention?

In compliance with the provisions laid down in the Portuguese Industrial Property Code, when an invention is made available to the public, it is considered included in the state of the art and can no longer be protected as a patent or as a utility model.

All research institutions face the challenge of managing the publication of scientific papers and the protection of intellectual property rights with commercial potential.

The new intellectual property policy of IST reduces the deadline for IST’s decision about the protection of the disclosed research results, from 60 to 30 days, the inventors or creators being informed about the possibility of publication of such results (art. 9º, nº 1 of the Policy).

In most institutions of excellence, this period may reach 120 days or more. If IST decides to legally protect such results, the elaboration and management of the filing process begins, which application may occur several weeks after the previously mentioned decision. During this stage, inventors, creators or authors must collaborate with the Intellectual Property Unit and keep the confidentiality related to the subject-matter to protect.

The success of the adequate management of the publication of papers and the protection of research results with commercial potential of an institution is achieved through the timely planning by the inventors and through the efficiency of internal services. In the end, it essentially depends on a good collaboration between both.

What is the difference between intellectual property, copyright and industrial property?

Intellectual property comprises industrial property, copyright and related rights. These branches are regulated by distinct legislation.

What is the difference between applicant, inventor, creator or author?

The IP holder is someone (single or collective) that owns the property right over the invention, creation or work. There may be other individuals associated with this right as inventors, creators or authors.

What is the difference between assigning and licensing a patent?

Conceptually, it is the same difference between selling and renting a property. Specifically, the sale of a right (transmission) over a patent implies the transfer of ownership. In licensing, the first owner retains its position as such, allowing the licensee to use the right over the patent for a certain period of time and under certain conditions.

What is a provisional patent application and why does IST discourage its use?

A provisional patent application (PPA) represents a way of ensuring the priority date of an invention, without having to meet all the requirements of a definitive patent application. The applicant has a twelve-month period to convert the provisional application into a definitive one, without adding new subject-matter.

The PPA may be a valuable tool for the management of industrial property of an institution. Taking into account IST’s specific characteristics, this tool should be used with extreme care and only in exceptional situations.

IST discourages the use of PPAs for three main reasons, related to the main goal of the technology transfer activities of IST:

1. The year following the filing of a patent application should be used to find market players that will be able to promote the economic exploitation of the invention. Since there is a one-year period from the filing date for the applicant to decide on a territorial extension, PPAs may have two effects that could substantially reduce the commercial value of the application. On one hand and for obvious reasons, IST or companies interested in exploiting the technology would feel much more confident about a definitive patent application rather than a provisional patent application; this fact has as direct consequence on the evaluation of a provisional patent application when compared to a definitive application. On the other hand, IST or companies interested in exploiting the technology would become extremely limited in the assessment and decision capacity concerning the internationalization of that application, therefore it is always preferable to proceed with an application for international protection after a prior definitive application has been filed and a strategy for economic exploitation has been defined. Consequently, the economic value of such right is smaller than if it had been filed as a definitive application right from the beginning.

2. Experience shows that when IST files a provisional patent application, the definitive application is usually filed in a shorter period of time than desired. For this reason, the definitive patent application is usually prepared in a few weeks, meaning the required effort is not applied to this definitive application to ensure that the application is adequately prepared. The resulting text will not have the desired quality and consequently, the economic value of this right would be smaller than if it had been filed as a definitive application right from the beginning.

3. The technical characteristics of the definitive application should not be different from the subject-matter of the PPA since substantial modifications may lead to a change in the priority date of some claims. Most of the times the urgency in filling the provisional patent application results in the restriction of the scope (and, consequently, the value) of the definitive patent application. Therefore, the economic value of such right is smaller than if it had been filed as a definitive application right from the beginning.

IST discourages the use of PPAs essentially for these reasons.

Nevertheless, and in special situations, IST may consider the filing of a provisional patent application. Actually, in some cases, this may be the most valuable tool.

The need to submit a scientific paper for publication does not represent an exceptional situation to file a provisional patent application in order to ensure the filing date. All research institutions of excellence can adequately manage their scientific publications and the protection of their intellectual property rights with commercial potential, so there is no reason why IST is not able to do it with the same efficiency.

As in those institutions, the researchers and the internal services (namely the Intellectual Property Unit) of IST are responsible for managing these two aspects of their activities.

Is it possible to protect software as a patent?

This is a very discussed issue and has different answers depending on the countries in which a patent is sought.

Some countries, like the USA, have laws which allow patenting certain types of software.

In Europe, it is not possible to file patent applications for software (software patents). Instead, there is the computer-implemented inventions (PDF, 132KB) concept.

On the other hand, software may be registered in Portugal at ASSOFT as copyright and commercialized through software license agreements.

A company has shown interest in commercializing a patent from IST; what should I do?

You should contact the Intellectual Property Unit.

How can I help IST to define a commercial exploitation strategy of a technology that was totally or partially developed at IST?

You should contact the Intellectual Property Unit.

I would like to publish a book based on my research; what should I do?

You should contact IST Press.

Does IST have an Intellectual Property Policy?

Yes.

If you are included in article 3 of IST’s Intellectual Property Policy, you should read it carefully.

What is the aim of IST’s Intellectual Property Policy?

IST’s main aim in its technology transfer activities is to create the conditions for market players to generate economic value from the intellectual property rights and trade secrets held by the Institute.

In general terms, the Policy is the tool that allows the implementation of the Industrial Property Code and the Copyright and Related Rights Code in IST’s activities to achieve that main aim.

Specifically, the Policy allows for the creation of three essential conditions for IST’s technologies to be transferred to society through market players:

– IST’s ownership over the intellectual property rights becomes robust;

– It defines the attribution of extraordinary financial incentives to IST’s inventors, creators or authors;

– It provides several commercialization flexibility mechanisms for IST’s technologies.

The full explanation and the robustness of intellectual property ownership is an essential aspect for market players to rely on patents (and other rights) held by research institutions. Only then, they will feel confident to properly invest in the transformation of technology into products or services as well as to commercialize them (articles 4 and 5 of the Policy).

Researchers will only develop inventions or creations with high commercial potential if they have the proper incentives. Furthermore, with these exceptional incentives, much higher than those offered by other R&D institutions, IST becomes attractive for fellows from other R&D institutions or companies to seek cooperation with and to carry out research with high commercial potential (number 5 of article 4 of the Policy).

There are always several forms of intellectual property valuation and the right way to do it depends on the specific case. The Policy creates conditions for following the most adequate path for the economic valuation of the invention, whenever an invention or creation has a high commercial potential (articles 7 and 8 of the Policy).

Who is responsible for IST’s Intellectual Property?

The President of IST decides on every matter related to IST’s intellectual property.

The President of IST may delegate this competence on the Member of the Management Board responsible for Technology Transfer affairs (number 5 of article 9 of the Policy).

The Member of the Management Board for Entrepreneurship and Corporate Partnerships supervises the Technology Transfer Office.

The mission of the Technology Transfer Office is to support the Management Board in IST’s link with society, namely through the economic valuation of the knowledge developed within the School, being responsible for the management and valuation of IST’s intellectual property and also the focal point for the stimulation of corporate partnerships and for the support of entrepreneurship at IST.

The office consists of the Intellectual Property Unit and the Corporate Partnerships Unit.

How do I know if IST’s Intellectual Property Policy applies to me?

Individuals to whom IST’s Intellectual Property Policy applies are defined in article 3 of the Policy.

In which situations does the ownership of an invention or creation belong to IST?

The ownership of IST’s intellectual property rights is defined in articles 4, 10 and 14 of the Policy.

Why doesn’t IST establish the ownership of IP based only on the employment relationship?

The definition of ownership and of the individuals to whom the Policy applies are some of the most important and valuable aspects of the Policy.

If IST defined ownership only based on the employment relationship, it would prevent other people (non-employees of IST) from benefiting from the excellent conditions provided by IST for the development, protection and commercialization of technologies developed at IST.

On the other hand, as a general principle and unless otherwise stated, and contrary to what others entities may determine, if an employee from IST does not use the resources of IST to conceive or carry out an invention or creation, than IST understands that the ownership of that right should belong to the individual instead of IST.

By defining the ownership according to the Policy, IST intends to encourage the collaboration of employees from IST with students and with other collaborators (e.g. research grant holders), as well as with other entities (companies, other R&D institutions), throughout the process of development, protection and commercialization of technologies developed at IST.

The supervision of people who may have access to IST’s resources for the development of inventive or creative activities, and who should be bound by IST’s Policy, is a responsibility of the coordinator of the research unit of IST with which that person collaborates (numbers 3 and 4 of article 4 of the Policy).

Finally, the Policy foresees the possibility of defining rules of ownership resulting from the collaboration with other entities in specific agreements (see article 5 of the Policy).

What are IST’s resources and how is their use defined?

IST’s resources are defined in article 2 of the Policy.

For the purposes of the Policy, the use must be understood as “relevant use” of the resources of IST, in other words, the use which has been relevant for conceiving or carrying out of the invention or creation.

Which rules should be applied when IST’s Associated Research Units are involved?

IST’s Units are identified in Annex 1 of IST’s Statutes.

IST Associated Research Units are:

– Institute of Mechanical Engineering;

– Institute for Systems and Computer Engineering- Research and Development in Lisbon;

– Institute for Systems and Robotics;

– Telecommunications Institute;

– Associated Laboratory for Energy, Transports and Aeronautics;

– Associated Laboratory – Institute for Biotechnology and Bioengineering.

Unless otherwise stated between IST and the Associated Research Unit, the Policy is fully applicable to the use of resources of the Associated Research Unit of IST.

In the disclosure form there is a field (number 4 of the form) in which the coordinator of the research Unit should confirm the use of resources of the Unit.

The aim is to contribute to the legal compliance related to IST’s ownership assumption regarding the inventions or creations totally or partially developed in the Associated Research Units of IST.

In such cases, the coordinator of the research unit should also sign the form.

Do I have to disclose all research results that are likely to be considered an invention or a creation?

No.

Individuals to whom the Policy applies do not have the obligation to disclose inventions or creations when they consider, in good faith, and if necessary resorting to IST’s competent services, that such invention or creation does not have any possibility of economic exploitation (numbers 1 and 2 of article 6 of the Policy).

This is a mechanism that facilitates the disclosures of results which do not jeopardize the intellectual property rights of IST with commercial potential.

This freedom granted to inventors or creators from IST obviously implies their responsibility for making an adequate interpretation of what has commercial potential or not.

IST recommends prudence and, in case of doubt, you should contact the Intellectual Property Unit or disclose the invention or creation.

And what if IST doesn’t want to protect an invention or creation, or what if it doesn’t want to protect or exploit such invention or creation the way I consider it should be done?

Once the invention is disclosed, in compliance with article 6 of the Policy, IST will consider whether to protect or not the disclosed information, including the analysis of the commercial potential of the invention.

If the analysis reveals that the disclosed information has commercial potential, IST may decide to protect the invention through a patent application submitted at the Portuguese Institute of Industrial Property or through a trade secret, or in another way, if it is software.

If IST decides to file a patent application, it will pay the fees related to the process of legal protection and maintenance of the granted rights, in proportion to its ownership, except if decided otherwise (number 1 of article 7 of the Policy).

If the inventors or creators from IST do not agree with the form of protection to be applied for, or already applied for, by considering that it does not maximize the economic value of the invention or creation, they may request, to the President of IST, the assignment of the property right to them, in compliance with number 12 of article 6 (number 2 of article 7 of the Policy).

If IST decides not to proceed with the protection of the invention, by considering the invention does not have commercial potential, it may grant such option to the inventors or creators from IST (number 3 of article 9 of the Policy).

Why does IST assign 80% of the revenues resulting from the commercialization of an intellectual property right to inventors or creators?

In addition to guaranteeing legal compliance regarding IST’s assumption of ownership of the intellectual property rights and the commercialization flexibility of such rights, one of the most important aspects of IST’s approach to technology transfer is the incentives given to its inventors or creators.

IST considers that inventors or creators must feel that their effort is intellectually and financially rewarded.

Thus, the attribution of 80% of the revenues (which belong to IST due to its share of ownership) to inventors or creators from IST is a strong sign of IST’s willingness to enable them to financially benefit from their inventive skills (number 5 of article 4 of the Policy).

On the other hand, it is not uncommon that some of IST’s employees prefer to transfer all or part of these revenues to the IST unit they are associated with or even to IST in order to invest in technology transfer activities (number 10 of article 4 of the Policy).

The attribution of 10% to research units of IST is a way of directly compensating those units which create conditions for inventions with commercial value to be developed.

Finally, the 10% of expenses assigned to technology transfer activities are a way of capacitating IST in this field and of providing support for the growth and sustainability of the School’s technology transfer process.

I am preparing my MSc/PhD thesis; how is the intellectual property regulated?

The copyright over the thesis belongs to the student (or the other co-authors, if applicable) (number 1 of article 10 of the Policy).

Nevertheless, IST’s rights should be safeguarded in respect of the information disclosure which may affect its intellectual property rights (number 2 of article 10 of the Policy).

Such is the case of a thesis developed within a research project, which may have originated or may originate an intellectual property right (e.g. a patent) whose ownership (or co-ownership) belongs to IST, or a trade secret whose property (or co-property) belongs to IST, making it necessary to comply with some of the duties defined in article 6 of the Policy (e.g. confidentiality).

In case of doubt, you should contact your supervisor and/or the Intellectual Property Unit.

I wish to develop a research project in collaboration with a company and/or University; how is the intellectual property regulated?

Al collaborations must be preceded by an agreement celebrated between the parties, regulating the intellectual property (article 5 of the Policy).

The Intellectual Property Unit may provide help with drafting the clauses related to intellectual property aspects to be included in the collaboration agreements.

I have been integrated in another university for a certain period of time and the results of my research at IST and at that university have originated an invention or creation; how is the intellectual property regulated?

All collaborations must be preceded by an agreement celebrated between the parties, regulating the intellectual property (article 5 of the Policy).

In this case, it is particularly important to understand the intellectual property policy of the university hosting the researcher of IST, in order to celebrate an agreement which takes into account the policies of IST and of that university.

The Intellectual Property Unit may provide help with the preparation of the clauses related to intellectual property aspects to be included in the collaboration agreements.

Some of the inventors of a patent of which IST is co-owner are students or employees from different institutions; how is the intellectual property regulated?

All collaborations must be preceded by an agreement celebrated between the parties, regulating the intellectual property (article 5 of the Policy).

In this case, it is particularly important to understand the intellectual property policies of these institutions in order to celebrate an agreement which takes into account the policies of IST and of those institutions.

The Intellectual Property Unit may provide help with the preparation of the clauses related to intellectual property aspects to be included in the collaboration agreements.

IST’s Intellectual Property Policy is extremely favourable to the individuals to whom it applies.

Intentionally, IST’s policy may benefit not only the employees, collaborators and students of IST but also the employees and students of other institutions (number 1 of article 3 of the Policy).

This is an important mechanism to attract talent in the collaborations with IST.

However, to prevent the employees, collaborators or students of IST from being negatively affected in terms of compensation in relation to employees, collaborators or students from other institutions, the policy foresees, in compliance with number 7 of the article 4, the following:

“(…) except when otherwise defined in a contract or agreement signed by IST or one of the research units defined in IST’s Statutes, in the cases where IST is co-owner of an industrial property right or a trade secret with another institution, and there is asymmetry in the distribution of the remunerations, defined in paragraph 5, among IST’s inventors or creators, as a result of the distribution of revenues to only some of them by the other institution that is also co-owner of that right, IST shall retain and distribute the part assigned to them among the other IST inventors and creators of IST. It is IST’s inventors and creators’ responsibility to inform IST, in compliance with article 6, about the remuneration systems, such as the one established in this Policy, which they are subject to due to their connection to another institution.”

It thus tries to prevent that employees, collaborators or students of IST – who collaborate with other institutions, whose policy does not provide compensations to non-employees, collaborators or students of such institutions – are affected by the asymmetry in the distribution of the revenues.

The invention that resulted from the research I am conducting would probably have more commercial value if it was treated as a trade secret; what can I do?

The Policy foresees the possibility of exploitation through trade secret (number 3 of article 7 of the Policy).

Upon the invention, creation or software disclosure, inventors should mention the benefits of the commercialization of the information through trade secret.

When should I disclose an invention or creation?

Within three months following the conclusion of the invention or creation (number 1 of article 6 of the Policy).

How can I disclose an invention or creation?

You must follow the procedure defined for the invention, creation or software disclosure.

When should the coordinator of the Research Unit of IST sign the disclosure form?

In two situations:

– When the Unit is an Associated Research Unit;

– When there are different percentages of contribution among the inventors.

In all other cases, only the inventors, creators or authors should sign the form. Nevertheless, the coordinators of the Research Unit must be kept informed about the disclosure process.

In what situation should I sign the Compulsory Declaration?

The situation depends on the disclosed information and on the contractual relationship with IST or any of the Units identified in IST’s Statutes. The Compulsory Declaration identifies 4 categories:

1. For communications related to inventions or creations protected in accordance with the Industrial Property Code, or related to trade secrets, this paragraph of the Compulsory Declaration applies to the teaching and non-teaching staff associated with IST or with any of the research units identified in IST’s Statutes through an employment contract in public functions;

2. For the communications related to inventions or creations protected in accordance with the Industrial Property Code, or related to trade secrets, this paragraph of the Compulsory Declaration applies to all other individuals identified in article 3 of the Intellectual Property Policy of IST (e.g. students and grant holders from IST or from other institutions, employees of other institutions, or anyone covered by this Policy);

3. For the communications related to software, this paragraph of the Compulsory Declaration applies to the programmers hired by IST for informatics career;

4. For the communications related to software, this paragraph of the Compulsory Declaration applies to all other individuals identified in article 3 of the Intellectual Property Policy of IST (e.g. teaching and non-teaching staff associated with IST or with any of the research units identified in IST’s Statutes with an employment contract in public functions, students and grant holders from IST or from other institutions, employees of other institutions, or any other person covered by the Policy).

Number 5 of the Compulsory Declaration is relevant for IST to assess the rights of the declarant related to revenues regarding the intellectual property rights received from other entities (number 7 of article 4 of the Policy).

It is not necessary to refer the number which is applicable to your particular situation in the Compulsory Declaration. Information provided in the disclosure form should be sufficient. In case of doubt, the Intellectual Property Unit will contact you.

How is a patent application prepared? Does IST help in the preparation and protection of the patents?

The preparation of a patent application is a complex process, which may involve substantial expenses and it is very important for the protection and commercialization of technologies.

The General Information Package provides a set of basic information which must be carefully read by the inventors, creators or authors, before the submission of the invention disclosure.

It is up to IST to define the most appropriate form of protection for the inventions and creations whose ownership vests in IST, covering the costs of the legal protection and maintenance process of granted rights in proportion to its share of ownership, except if otherwise stated (number 1 of article 7 of the Policy).

In the cases where IST decides to apply for legal protection, the inventors or creators of IST must collaborate with IST throughout the entire administrative process (number 2 of article 9 of the Policy).

The Intellectual Property Unit is responsible for ensuring that patent application texts have the desired quality in order to safeguard the intellectual property rights of IST. Inventors or creators from IST should provide all the necessary support in the administrative process after the invention disclosure.

The assessment of the interest of IST in protecting the object of the disclosure and, if so decided, the preparation of the patent application imply several tasks that must be shared by the Intellectual Property Unit and the inventors, creators or authors.

I already have a draft of a patent application; should I send the draft with the invention disclosure process?

By following the disclosure process, it is possible to enclose a set of documents, together with the disclosure form, which should help IST with the decision of protecting or not the disclosed information. All documents enclosed must be identified in number 20 of the form.

The draft of the patent application can be attached to the form, in order to allow a better understanding of the disclosed information. Nevertheless, all communications will be assessed according to the same procedures, namely through legal, technologic and commercial due diligence.

In case IST decides to proceed with the patent application, the draft of the patent application attached to the form can be a relevant contribution for the process of preparation to be more efficient and effective.

In which circumstances can IST apply for the protection of an invention or creation abroad?

The potential economic value of an intellectual property right may be substantially increased if an extension beyond the Portuguese territory is sought.

The territorial extension of an intellectual property right can be quite costly, reaching several thousands of euros, in a few years.

IST has limited resources to invest in the territorial extensions of intellectual property rights.

Therefore, IST will perform an assessment of the commercial potential of each invention or creation and of the benefit of its territorial extension, taking into account the available resources and the intellectual property portfolio susceptible of being internationalized.

During the invention disclosure stage, the inventors must fill in the fields defined in the form which should help IST to make a decision regarding the territorial extensions of a possible intellectual property right.

As inventor, how do I receive the revenues resulting from the commercialization of an intellectual property right?

There are two ways of processing the revenues related to the payment of industrial property rights:

– As a form of compensation for the right of option, in case of teaching and non-teaching staff, associated with IST or with any other unit identified in IST’s Statutes with an employment contract in public functions;

– As a form of compensation for the onerous transmission, in favour of IST, of all, or a share, of ownership of the industrial property rights or of the property of trade secrets.

(number 2 of article 4 of the Policy)

In both cases, the revenues are considered as income related to industrial property rights and not as supplements to the salary.

I would like to register a trademark in the scope of a research project which I am working on; what can I do?

The disclosure process must be followed, with all necessary adaptations.

I have developed software and I would like to commercialize it; what can I do?

The disclosure process must be followed, in compliance with number 2 of article 14 and article 6 of the Policy.

If IST is co-owner of a patent, who makes the decisions about eventual territorial extensions, commercialization strategies, etc.?

Al collaborations must be preceded by an agreement celebrated between the parties, regulating the intellectual property. According to article 5 of the Policy, all agreements must include clauses related to the following:

– The ownership of the resulting inventions or creations;

– The assumption of the costs associated with the process of preparation, maintenance, protection, promotion and commercialization of the industrial property rights or trade secrets;

– The decision process defining or changing the protection right, namely regarding the territorial extension;

– The commercial exploitation of the invention or creation and sharing of the revenues;

– The safeguard of the rights entitled to IST and to inventors or creators of IST, particularly in the case of licensing or assignment to third parties;

– Confidentiality and conditions of disclosure and publication of the results achieved.

Some of these elements may be regulated in an addendum to the contract or agreement.

I would like to create a company based on a patent which is owned by IST; what can I do?

The Policy foresees the possibility of commercial exploitation of an intellectual property right owned by IST through a spin-off.

Upon the invention, creation or software disclosure, the inventors should mention the benefits of the commercialization of the information through a spin-off.

At any time after the invention disclosure, the inventors may contact the Intellectual Property Unit indicating their desire to create a spin-off based on a patent (or other intellectual property or trade secret right owned by IST).

The guiding principles for the commercialization of an intellectual property right or of a trade secret are the maximization of their economic value and the sustainability of the technology transfer process (number 2 of article 8 of the Policy).

I would like to use a trademark which is owned by IST; what can I do?

The use of trademarks owned by IST or the creation of a trademark which alludes to any collaboration with IST must be preceded by a request addressed to the Management Board, through the Intellectual Property Unit.

IMPORTANT NOTICE: These answers are merely informative and in case of conflict with the Policy, the latter shall apply. Questions related to the application of the Policy may only be clarified through an order issued by the President of IST.