Technology Transfer (TT) is the process by which new inventions and other innovations stemming from scientific and technological research are turned into marketable products and services.

For the purposes of this guide, TT refers to the commercialization of research results, which typically begins with the discovery of novel technologies, followed by the disclosure, evaluation, and protection of these technologies. Traditionally, next steps include marketing, potential licensing agreements and the development of products or services based on the technical inventions, although these steps can vary in sequence and often occur simultaneously. The financial returns resulting from this process can then be used for further research and innovation activities. Technology development can occur through the “market pull” approach, which attempts to provide products to the market demands; or via “technology push”, when R&D in new technology drives the development of new products.

“Technology Transfer refers to the commercialization of research results, which typically begins with the discovery of novel technologies, followed by the disclosure, evaluation, and protection of these technologies”.

The knowledge transfer process can be summarized in 9 steps. Please note that (i) these steps can vary in sequence and often occur simultaneously, and (ii) this particular flow is essentially focused on research commercialization, although there are other forms knowledge transfer and valorization – not necessarily linked to direct revenue streams or channeled through more informal relations – that are also an important part of our mission, namely research communication, education or staff expertise that can positively impact the life of citizens and improve society; and (iii) that this process may take months or even years to complete. For inventions, the amount of time depends on several factors such as the Technology Readiness Level (TRL), potential markets, competing technologies, additional work needed to bring the technology to the market, available resources, or the willingness of the inventors.

1. Research. Observations and experiments during research activities often lead to discoveries, inventions or other research outputs (e.g., software, research materials) with potential commercial value. Often, multiple researchers may have contributed to a certain IPR.
2. Pre-Disclosure. An early contact with NOVA Impact (or IRIS if you are related to FCT NOVA, or the Innovation Unit if you are related to ITQB) to discuss your idea and to provide guidance with respect to the disclosure, evaluation, and protection processes described below.
3. Disclosure Form. Formal report of the invention or Copyrightable material to NOVA specialized services – the written notice that begins the formal transfer process. The Invention or Copyright Disclosure Form remains a confidential document and should fully document your invention so that the options for commercialization can be evaluated and pursued.
4. Assessment / Evaluation. The period in which the Disclosure Form is reviewed (with your input), prior art searches are conducted, in addition to market analysis to determine the commercialization potential of the disclosed research outputs. The evaluation process will guide the best strategy to commercially explore the disclosed results, that may pass to sell or licensing to an existing company, creating a new business start-up or social enterprise or, if applicable, collaborating with industrial partners to increase the TRL prior to commercialization.
5. Protection of Intellectual Property. The process in which the best protection route is defined to maximize the social and economic impact of the research outputs. In case of patent protections, the process typically starts with the filing of a patent application within INPI and, when appropriate, international applications. Protection and maintenance fees may require thousands of euros, particularly if the inventions are protected internationally. Other protection options include Copyright, trademark, design or trade secret, for example. At NOVA, this process is conducted with the help of patent attorneys or other external IP experts.
6. Marketing. Although this process is conducted by the University, the active involvement of inventors/authors can dramatically enhance its success. This process relates to the sourcing of potential licensees and/or candidate companies with expertise, resources and business to bring the work or technology to the market, which includes its showcase in national and international platforms or events. Marketing efforts can also focus on finding industry sponsors to fund additional research or proof-of-concept studies. If the creation of a new business spin-off presents as the optimal valorization route, NOVA will work, within its capabilities, to assist the founders in the venture creation and application to the NOVA Spin-off seal.
7. Negotiation / Licensing. After a negotiation process to define the terms and conditions for the commercialization of the IP asset, a license agreement is made between NOVA and a third party, in which NOVA’s rights to a technology or Copyrighted material are licensed for financial and other benefits. This applies both to new spin-offs and established companies. NOVA Spin-offs formally recognized as such can obtain an exclusive license of an IP right developed by its promoters, free of charge until the commercialization stage.
8. Commercial Development. The licensee company continues the advancement of the licensed IP and makes other business investments to develop the product or service. This step may entail further development, regulatory approvals, sales and marketing, support, training, and other activities.
9. Revenues. Revenues received by NOVA from licensees are distributed to inventors/authors, to Organics Units, and to Research Units or research groups to support new R&D and innovation activities. The development and commercialization of innovative solutions has the ultimate goal of giving back to society, by contributing to the economic development and social welfare of the country, and to the creation of highly qualified jobs.

While Intellectual Property (IP) refers to creations of the human mind, including all forms of knowledge that we are able to create, such as inventions, literary and artistic works, symbols, names, images, and designs used in commerce, Intellectual Property Rights (IPR) are the legal titles to which we apply for to get the right of preventing others of using and exploring IP.

In a broader sense, IP can thus be considered the knowledge that we create every time we perform research activities. In turn, IPR are the legal titles that ascertain the ownership of such knowledge, the contract that is made between the applicant and society in order to value the investment made by the IP owners in its development. Both IP and IPR can be exchanged between organizations leading to improved use of said knowledge and to innovation. IPR are the tools by which such transaction of IP is more valued since it offers a competitive advantage to the entities that have the authorization to use and explore it. By transferring just IP we are not able to prevent others from using it without our authorization. IPR allows us to prove that we own a certain IP asset and others can only use it if we allow it and under agreed conditions.

Not exactly. Intellectual property covers all exclusive rights to intellectual creations, including industrial property and Copyright. Industrial property is therefore a subset of intellectual property which take a range of forms, including patents for inventions, trademarks, industrial designs and models, and geographical indications.

• Inventions: patents or utility models;
• Distinctive trade signs: trademarks, logos, geographical indication or designation of origin;
• Design: industrial designs;
• Artistic and Literary Works (including software): Copyright
• Trade secret

Intellectual Property is protected only for a limited period of time, beyond which it is no longer protected and falls into the public domain. In general, when an IP right expires, everyone may use it with no restrictions from the right holder.

The term of protection shall be no less than 20 years for patents. The term of protection for utility models is shorter than for patents and varies from country to country (usually between 6 and 15 years). In Portugal, utility models have a maximum duration of 10 years. The term of protection is counted from the date of filing an application, and not from the granting date.

In turn, trademarks and logos protection lasts for 10 years, and it can be renewed indefinitely for equal periods, while design registration can be maintained for 25 years (registration at INPI is valid for 5 years and may be renewed for another four periods of 5 years)

In Europe and Portugal, in particular, Copyright protection generally lasts for 70 years after the death of the author, but the term of protection for Copyright can vary from country to country.

“The term of protection shall be no less than 20 years for patents, 10 years for utility models, trademarks and logos, and 5 years (up to 25) for industrial designs”

These terms are often used in Consortium agreements that establish research partnerships funded by public national and international Agencies.

Background IP, as defined by the European Commission, means any data, know-how or information – whatever its form or nature (tangible or intangible), including any rights such as intellectual property rights – that: (a) is held by the beneficiaries before they acceded to the Agreement, and (b) is needed to implement the action or exploit the results. Therefore, Background IP includes all Intellectual Property, independently of being protected by IPR or not, that a partner brings to a project and will be used as the foundation of a Result.

Foreground IP, or Results, as defined by the European Commission, is any (tangible or intangible) output of the action such as data, knowledge, or information – whatever its form or nature, whether it can be protected or not – that is generated in the action, as well as any rights attached to it, including intellectual property rights.

It is very important to define the Access Rights to Background and Foreground IP at the beginning of a research collaboration with a third party, i.e. the rights to use results or background under the terms and conditions laid down in the research agreement.

While, as a rule of thumb, these Access Rights, either for Background and Results are granted royalty-free for the implementation of the project, the use of Background and Results, either protected or not, by a Partner must be regulated by appropriate separate contractual mechanisms, following NOVA’s IP Policy.

Also important is to appropriately manage Access Rights: one has to be careful not to grant the same Access Rights to different partners, for example, you cannot grant exclusive worldwide licenses to two different partners, as the licenses could not be exclusive.

An invention is a product or process providing a novel and inventive solution to a technical problem. Products include goods and tools, equipment such as production facilities and machinery, and materials such as chemical substances or textiles, while processes describe activities for specific purposes, such as manufacturing processes (work or productions steps for a manufacturing process), control procedures (process steps for using an apparatus or machine) and measuring methods.

We generally refer to as invention, intellectual property which can be protected by patent (but it can also be a utility model). An invention generally consists of several technical features, including relations between them. In short, an invention uses technology to solve a specific problem in a new, non-obvious and technical way. The technical character necessary for patenting requires that the laws of nature are used to achieve the objective.

Some examples of inventions developed by NOVA researchers can be found here.

These terms are often confused, and it is important to know the distinction to appropriately manage Intellectual Property.

Inventors are those responsible for creating an invention, and the term inventorship belongs to the intellectual property branch of Industrial Property. On the other hand, an Author is someone that created a piece of writing or other literary work, and as such authorship belongs to the Copyright branch of Intellectual Property. Not all inventors are authors and vice versa.

To determine authorship you select every natural person that contributed to the scientific publication either by writing it or reviewing it. To determine Inventorship there are two main requirements: (i) the conception of the idea and (ii) the reduction of the idea into practice. An inventor to be considered as such must have had an “active contribution” to produce the invention, in the sense that without its personal involvement the invention would not have been devised. On the other hand, a person is not considered an inventor if they only carried out work under the direction of others. For example, project managers or supervisors, or reviewers of text cannot be considered inventors if they did not make any inventive contribution.

An inventor conceives the idea, materially contributes to the development of the invention, provides solutions to problems and implements the innovation. A person that puts forward hypothesis, passively follows instructions, performs routine tasks and executes results testing, is not considered an inventor.

An Inventor is someone who had actively and intellectually contributed to produce an invention;
An Author is someone that created a piece of writing or other literary/artistic work.

The concepts of invention and creation can be found in the Portuguese Industrial Property Code. Inventor refers to those who produce objects susceptible to protection by patent or utility model, while a creator refers to those who produce objects susceptible to protection by topography of semiconductor products or designs.

The following activities are not regarded as inventions:

• Discoveries (e.g. when a gene is merely found and described), mathematical methods and scientific theories;
• Naturally occurring materials and substances (in its natural state);
• Aesthetic creations;
• Projects, principles and methods of intellectual activities related to gaming or business activities;
• Software, as such, without any technical application;
• Presentations of information.

Author refers to literary and artistic works whose concepts can be found in the Portuguese Copyright and Related Rights Code.

Similar to patents, utility models protect new technical inventions through granting a limited exclusive right to prevent others from commercially exploiting the protected inventions without consents of the right holders (often 6 to 10 years from the filling date – 10 years in Portugal). They are sometimes referred to as “short-term patents” or “utility innovations”.

In general, utility models are considered particularly suited for protecting inventions that make small improvements to, and adaptations of, existing products or that have a short commercial life. Utility model systems are often used by local inventors.

In practice, protection for utility models is often sought for innovations of a rather incremental character which may not meet the patentability criteria, as the requirements for acquiring utility models are typically less stringent than for patents.

An invention can be protected by patent if it meets the three following requirements:

1. The invention is new, i.e., it must show an element of novelty, some new characteristic which must not form part of the “prior art”. Prior art means all existing knowledge that has been made publicly available anywhere in the world prior to applying for a patent, including printed and online publications, as well as public lectures and exhibitions. Anything you disclose about your invention before applying for a patent is considered prior art (e.g. a paper, an oral presentation, a LinkedIn post, etc.). Therefore, make sure you keep your invention a secret until it is protected.
2. The invention involves an inventive step, meaning that the invention must not be obvious to a person “skilled in the art”, considered to be a hypothetical person who knows the “prior art” in his technical field. If showing the purpose of your invention to the person skilled in the art, this person readily comes up with the same solution, then your solution is not considered inventive.
3. The invention is industrially applicable, i.e., the invention must be industrially applicable and practicable (it can be used or manufactured in industry or agriculture), and it must be possible to replicate its implementation.

Also, its subject matter must be accepted as “patentable” under law. Under the European law, for example, mathematical models, computer programs per se, scientific theories, aesthetic creations, plant varieties, discover of natural substances already existing in nature, business methods or methods for medical treatment (as opposed to medical products) are not considered patentable.

Full set of FAQ on Patents at: https://www.wipo.int/patents/en/faq_patents.html

In order for your invention to be patentable, it must be new, inventive and industrially applicable.

The short answer is no. It is true that ideas are a critical and valuable piece to the overall innovation equation, as nothing can or will happen without an idea. In and of themselves, however, ideas are not monetarily valuable. Without some identifiable manifestation of the idea there can be no intellectual property protection obtained and no exclusive rights will flow. What inventors need to do is identify a problem, formulate the idea and then work toward finding a technical solution. The goal is always to get to the point where the idea it is concrete enough to be more than what the law would call a mere idea, because the moral of the story is that mere ideas cannot be protected, so it is advisable to think in terms of an invention.

It is possible to apply to patent an invention in one or several countries individually or by choosing a centralized application procedure such as the European or international procedure (PCT). The procedures can also be combined. The filing date of the first application always establishes the priority date. You can check an example of procedure implemented at NOVA on section E2.

1. National patent application

It is possible to apply to patent an invention nationally, i.e. in one country or in several countries individually. An application for a Portuguese patent should be submitted at INPI – National Institute of Industrial Property, where the official language of proceedings is Portuguese. However, the application may initially be filed in English, being that a Portuguese translation thereof must be submitted within one month of the corresponding notification from the Office.

To apply for a patent in Portugal the following elements are needed: i) claims of what is considered new and inventive and characterizes the invention; ii) a detailed description of the object of the invention; iii) drawings necessary for the perfect understanding of the description (when applicable); iv) summary of the invention; v) drawings for publication in the Industrial Property Bulletin (if there are drawings that are necessary to understand the abstract); vi) a title for the invention; and vii) identification data of the inventor(s) and applicant(s).

Average time from filing up to grant of a patent application in Portugal is 2-3 years.

A provisional patent application (PPA) can also be submitted to secure a priority date, without the need to meet all the rigorous requirements of a definitive (non-provisional) patent application. Note that a PPA must be converted into a definitive application within 12 months of filing. Learn more at the INPI website.

2. International patent application

With a PCT application, it is possible to request protection in as many member states of the Patent Cooperation Treaty (PCT) – and therefore almost worldwide – as desired. It is a centralized application and search procedure (single language and a single publication). The application is submitted to WIPO, but it can also be done through INPI or the European Patent Office (EPO). The WIPO carries out a search on the state of the art (also known as prior art) and publishes the search report together with the application. Within 30 months after the priority date, it is necessary to initiate the national phase and make requests for examination at the offices desired. The application will be studied according to the national laws of each country, and the granting or refusal are responsibility of that country, which means that the same invention may be refused in one country and granted in another country.

Following the PCT route we have, in most cases, up to an additional 18 months from the time we file an international patent application (or usually 30 months from the filing date of the initial patent application of which you claim priority) before we have to begin the national phase procedures with individual patent Offices and to fulfil the national requirements.

An overview of the PCT contracting states can be found on the WIPO website. Learn more about the PCT application at the INPI website or at WIPO.

3. European patent application

With a European patent application, it is possible to obtain patent protection in as many member countries of the European Patent Convention (EPC) as desired. Portugal belongs to the EPC as a member state of the European Union.

The examination of the application – including for novelty and inventive step – and the granting of the patent take place centrally through the European Patent Office (EPO). The European patent grant procedure takes about 3 to 5 years from the date an application is filed. Following the grant of the patent, it is necessary to pay renewal fees in those countries in which one want to keep the patent in force. At the time of the validation of the European patent in the designated countries, national fees are due according to the scale in force in those countries. To request the validation of the patent in a particular country, it is necessary to present the translation of the document into the official language of that country in the corresponding institute (e.g. at INPI, in Portugal).

With the direct European route, the entire procedure is governed by the EPC alone. With the Euro-PCT route, the first phase of the grant procedure (the international phase) is subject to the PCT, while the regional phase before the EPO as designated or elected Office is governed primarily by the EPC.

If a priority of a prior national application is not claimed, the European patent application must be filed at INPI, otherwise the patent, once granted, may not be effective in the national territory. Learn more at the INPI website or at the EPO website.

A provisional patent application (PPA) is a patent application that can be used by applicants to secure a priority date of an invention, without the need to meet all the rigorous requirements of a definitive (non-provisional) patent application. A PPA must be converted into a definitive application within 12 months of filing.

The PPA has no practical effect if it is too simplified, vague or comprehensive. The submitted document must show all the technical characteristics that will be later claimed in the definitive application, meaning that new subject-matter eventually found during the twelve-month period cannot be added when converting the PPA to a definitive application, since substantial modifications may lead to a change in the priority date of some claims.

For a year, the applicants can determine whether the invention is commercially viable, decide on a territorial extension and find companies interested in exploiting the technology (although market players are often more confident with definitive patent applications).

A PPA can be a valuable tool to be used in certain, not always, circumstances. Each case should be analysed separately in order to define the best route for protection and commercialization of a particular invention. In other words, a PPA should be wisely used, not as standard but to be applied whenever duly justified and proven to be the most suitable tool for that particular situation.

All top research institutions should be able to simultaneously manage their scientific publications and IP rights with socio-economic potential. Therefore, the need to submit a paper for publication or defending a Ph.D. thesis, for example, should not represent an exceptional situation to file a PPA. Our goal is to create the conditions to always choose the best path for the inventions produced at NOVA, while fulfilling NOVA’s obligations as an institution committed to excellence in education and research (see section B).

Any communication of an invention to the public is considered a public disclosure. The disclosure can happen in writing, orally or even just by exhibiting the invention to the public (e.g. at a fair trade). As long as the recipient of the information is not bound by confidentiality, the communication is considered to be public.

All public disclosures before the date of filing of a patent application are considered to be part of the prior art. Therefore, technical journals, poster sessions, slides, lectures, seminars, MSc. or Ph.D. defenses (which are public according to the Portuguese law), letters, or even conversations can count as an obstacle to patentability.

For these reasons, if you are considering patent protection, a patent application should be filed before you make any public disclosures about your invention. NOVA Impact staff can advise you on this, as well as IRIS , for the FCT NOVA community, or the Innovation Unit, for the ITQB community.

Patents are often useful to reduce the risks taken when making major initial investments to bring innovative technologies on the market. As patent owners, Universities may license or sell the rights to the inventions to industrial partners on mutually agreed terms, therefore generating additional revenue streams for their activities, generously shared with the inventors and their research units. It is also a way of maximizing the socio-economic impact of the knowledge produced in the University, by contributing for the generation of new products and processes with industrial application and to more collaborative R&D projects with companies. Moreover, it helps to position the University as an innovative and entrepreneurial institution, creating value to the region and country, as well as to the companies and society at large.

The inventor is the creator of the invention. In general, for one to be considered an inventor, it is acknowledged that a certain level of “technical creativity” must be met. Inventors are always private individuals and are always entitled to be designated on the patent, regardless of who files the application. Joint inventors or co-inventors exist when a patentable invention is the result of the inventive work of more than one inventor, even if they did not equally contribute in equal parts.

The applicant is the person or entity that applies for a patent, which will not necessarily be the inventor – for instance in Portugal the Universities are typically the owners of the inventions produced within the University – even if the inventor will always keep the moral right to be mentioned as such in the application.

Ownership recognizes a proprietary right to the invention that will in principle vest in the applicant after the patent is granted. As a proprietary property right, the ownership of a patent can be transferred.

The same applies for creators of utility models.

Patents are territorial rights. In general, the exclusive rights are only applicable in the country or region in which a patent has been filed and granted, in accordance with the law of that country or region.

An invention may, in principle, be freely used by anybody in those countries where it is not protected. This means that a product protected only in Portugal can be produced by somebody else in France, for example. However, you reserve the right to have it imported into Portugal, meaning that import can be prevented or allowed upon payment of a license fee.

The Biotech Directive of the European Union (EU Directive 98/44/EC) defines “biological material” as any material containing genetic information and capable of reproducing itself or being reproduced in a biological system. It covers nucleotide sequences, full length genes, complementary DNA (cDNA), and fragments. Under the Biotech Directive, inventions which are new, involve an inventive step and are susceptible of industrial application are patentable, even if they concern a product consisting of or containing biological material or a process by means of which biological material is produced, processed or used.

Additionally, biological material that is isolated from its natural environment or produced by means of a technical process may be the subject of an invention, even if it previously occurred in nature.

For biological material from the human body, the provisions are slightly different. The simple discovery of the sequence or partial sequence of a gene cannot constitute a patentable invention. Only if any of the following are satisfied can naturally occurring genetic sequences from the human body be patentable:

• biological material isolated or purified from its natural environment;
• biological material produced by means of a technical process (e.g. to identify, purify or classify it, which human beings alone are capable of putting into practice and which nature is incapable of accomplishing, even if it previously occurred in nature) such as artificial DNA constructs, cDNA, genetically engineered proteins;
• discovered to exist in nature and a technical effect is revealed (e.g. gene used in making a certain polypeptide or in gene therapy).

Merely finding and describing a new gene, or identifying the structure of a protein which does not have a clear role or practical use, is not enough to be eligible for patenting.

It depends. Laws and practice in this regard differ from one country or region to another. In some countries or regions, software-related inventions must have a “technical character” to be protected by patent (e.g. Europe), while in other countries such requirements are less stringent (e.g. in general, software can be patented in USA).

In Portugal and Europe, it is not possible to patent the source code of a computer program. We do not have the concept of “software patents” as in the USA; instead at the European level there is the concept of “computer-implemented inventions”, defined as inventions whose implementation involves the use of a computer, a computer network or other programmable apparatus, having one or more features realized by means of a computer program.

It is important to mention that the patentability must not be denied merely because a computer program is involved. As with all inventions, computer-implemented inventions are patentable only if they have technical character, are new, involve an inventive technical contribution to the prior art, and are industrially applicable. The technical effect provided by a computer program can be a reduced memory time access, a better control of a robotic arm, improved user interfaces, etc., meaning that it does not have to be external to the computer (hardware).

Should a patent turn out not to be a viable option for a software-related invention, then using Copyright as a means of protection may be an alternative. Computer programs are generally protected under Copyright as literary works. The protection starts with the creation or fixation of the work, such as software or a webpage. Although, in general, it is not required to register or deposit copies of a work to obtain Copyright protection, in Portugal, software can be registered at IGAC or ASSOFT as Copyright and commercialized through software license agreements. Many companies opt to protect the object code of computer programs by Copyright, while the source code is kept as a trade secret.

Although Copyrightable works do not require a Copyright notice, we do recommend that you use one. For works owned by NOVA, use the following notice:

“Copyright ©[year/ano] Universidade NOVA de Lisboa. All rights reserved / Todos os direitos reservados”.

The basic principle underlying Open Source Software is that the software source code is made available, allowing others to modify the software. But this is only one aspect. An Open Source license means license conditions that are compatible with the principles defined by the Open Source Initiative, for instance free redistribution, or no discrimination against persons, groups, or fields of endeavor. For more information see http://www.opensource.org/osd.html.

In a legal perspective, an industrial design constitutes the ornamental aspect of a product. An industrial design may consist of three-dimensional features, such as the shape of a product, or two-dimensional features, such as patterns, lines or color.

Industrial designs are applied to a wide variety of products of industry and handicraft items: from packages and containers to furnishing and household goods, from lighting equipment to jewelry, and from electronic devices to textiles.

Registration is the only legal way to protect a design. In Portugal, the registration of a design must be requested to INPI, through the design modality. Product design is the key to consumer choice. Therefore, the appearance of the product can and should be protected. The registration protects a design from being used without the owner’s consent.

To register a design, it must be: (i) not registered yet; (ii) new and unique (cannot be confused with any product, registered or unregistered, that already exists); and (iii) no identical design was made available to the public, in Portugal or abroad, before the date of the application.

Designs which are not entirely new, but which make new combinations of already known elements or different arrangements of already used elements can be registered, giving them a unique appearance.

According to NOVA’s IP Policy, Research Materials include:

• Biological materials, including DNA (deoxyribonucleic acid);
• Other non-biological materials or products;
• Engineering projects;
• Database Content;
• Prototypes;
• Associated research equipment and data;
• Other elements associated with the previous points.

Please note that scientific collaboration that involves transferring research materials from NOVA to other entities, and from these to NOVA, must be agreed in writing through an MTA (cf. E6) and approved by the Rectorate or by the Organic Units, when they have specialized services, upon presentation of a reasoned request.

Under WIPO’s Budapest Treaty, people seeking patent protection for biological material are required to deposit a sample of it with an international depositary authority where it is tested (for viability) and stored for up to 30 years.

Are you looking for a recognized international depositary authority for biological material? The following link lists all recognized depositary authorities: Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.

Individuals to whom NOVA’s Intellectual Property Policy applies are defined in article 4 of the IP Policy.

The IP Policy applies to NOVA faculty, researchers, students, employees/staff and research fellows, and to research visitors or other individuals collaborating with NOVA, its Organic Units and associated Research Units, using significant NOVA resources (funds, infrastructures, equipment, lab materials, etc.). If you have any doubt, please contact NOVA Impact. If you are related to FCT NOVA, you should contact directly IRIS, and if your related to ITQB NOVA, you should contact the ITQB’s Innovation Unit.

NOVA’s resources are defined in article 3 of the NOVA’s IP Policy.

Significant use of NOVA’s resources means the use which has been relevant for conceiving or developing the invention, creation or work. It includes, for example, the use of specialized, research-related facilities, equipment or supplies, libraries and intellectual property owned by NOVA, regardless of whether or not is protected by IP rights.

You may contact the NOVA Impact office to have a preliminary talk on the results to be disclosed. If you are related to FCT NOVA, you should start by contacting IRIS, and if you are related to ITQB, you should contact the ITQB’s Innovation Unit.

The Copyright over the thesis/dissertation belongs to the student (nr. 1 of article 7 of the IP Policy).

However, the results produced during the development of a Ph.D. thesis or MSc. dissertation may have originated or may originate a patent or trade secret owned by NOVA – for example, if the student is remunerated (even if through a scholarship from FCT – Fundação para a Ciência e Tecnologia) and have used significant resources from NOVA. In these cases, students must comply with the duties as defined in article 9 of the IP Policy (e.g. confidentiality or not disclosing the invention before being authorized to do so).

In case of doubt, you should contact your supervisor and/or the NOVA Impact team and/or IRIS if you are a FCT NOVA student, or the Innovation Unit if you are a student from ITQB.

Once the invention is disclosed, NOVA will decide whether to protect it or not (by patent application or trade secret) based on the potential commercial potential of the invention.

If NOVA decides not to take ownership of a certain IP right (Copyright included, when applicable), the inventor(s)/author(s) will acquire the full rights related to the respective invention, creation or work, including the rights of exploitation, and may request, in their name and at their own expenses, the adequate legal protection (see number 6 of article 12 of the IP Policy). In these cases, NOVA is entitled to receive a compensation if and when the commercialization succeeds, reflecting its contribution to the invention, creation or work, to be agreed in writing.

NOVA, through its specialized services on intellectual property and tech transfer, is responsible to define the best approach for protection and commercial exploitation of an IP right. Nevertheless, the support and cooperation of the inventor/author is considered critical to the success of these processes.

NOVA Impact, or the specialized support services of FCT NOVA (IRIS) or ITQB (Innovation Unit), in articulation with the Rectorate, will manage and conduct the necessary steps to protect and explore IP rights owned by NOVA. Activities of this specialized services include researching the market for the technology, identifying third parties to commercialize it, entering into discussions with potential licensees, negotiating agreements, monitoring progress, among other relevant tasks.

For certain inventions, the decision may pass to not apply for a patent if the economic valuation of the research results is expected to be maximized following a trade secret route.

The most appropriate approach to commercialization depends largely in the stage of development of the technology. Many inventions need further development or validation prior to commercial licensing, which can occur through industry collaborations.

All collaborations that may imply inventive activity must be preceded by an agreement celebrated between the parties, regulating the intellectual property, as defined in article 13 of the NOVA’s IP Policy.

All agreements must include clauses regulating:

• The ownership of the Background and Foreground IP;
• The assumption of the costs associated with the process of preparation, maintenance, protection, promotion and commercialization of the IP rights with commercial potential;
• The benefits that may be assigned to NOVA, in cases where NOVA may not be considered as owner of the IP rights;
• Confidentiality issues, publication, and dissemination of research results.

Generally, if the other institution is a University or Research Institution, there will be an agreement defining who will take the lead in protecting and licensing the technology, sharing expenses associated with the patenting process and allocating any licensing revenues.

According to the IP Policy, if an individual, who is unpaid to perform research activities or do not have an employment relationship with the University (e.g. MSc. students and visiting researchers), collaborates with NOVA and invents or creates something, using significant resources from NOVA under its research activities, she/he must assign their rights to NOVA.

The responsible person of each Research Unit (or Organic Unit) with whom these individuals collaborate is responsible to collect the respective declarations assigning the IP rights to NOVA.

It is therefore essential that all individuals participating in the research be made aware of their obligation to assign rights to NOVA and collaborate in the IP protection and commercialization processes, as needed. In the case of visiting researchers from external institutions an agreement must be previously drawn up between the two entities, regulating the terms of IP rights that may arise from his/her research activities, including Background and Foreground IP.

Doctoral students with a scholarship from FCT – Fundação para a Ciência e Tecnologia, for example, are considered to be paid for their research activities and, by default, NOVA owns the industrial property rights arising from their work within the University (article 5 of the IP Policy).

Yes. Following the Portuguese Industrial Property Code (art. 59º), NOVA’s IP Regulation determines that any invention/creation must be disclosed by the inventors to the University. At NOVA we defined a maximum period of 3 months for invention disclosure since it is considered concluded. This applies whenever you realize you may have discovered something with potential commercial value.

In case there are two or more inventors/creators from NOVA, you should appoint a representative to be the point of contact with NOVA’s specialized services, as defined in the article 9 of the IP Policy.

You should fill the appropriate disclosure form available here and send it to the NOVA Impact office, or to IRIS if you are affiliated to FCT NOVA, or to the ITQB’s Innovation Unit if you are affiliated to ITQB.

A skilled employee of these services will begin the process of evaluating the invention for patentability, commercial potential, and contractual obligations. The first step will typically be a meeting with the inventor(s)/author(s), who may be also requested to participate in a literature search of prior art, if applicable.

Direct contacts of specialized services: NOVA Impact (novaimpact@unl.pt); FCT NOVA / IRIS (gab.ad.iris@fct.unl.pt); ITQB (marta.ribeiro@itqb.unl.pt).

The potential economic value of an IP right may be substantially increased if an extension beyond the Portuguese territory is sought. However, international patent application and maintenance is quite costly (can reach thousands of euros in a few years). For that reason, international application is often dependent on the viability of the invention commercialization, demonstrated for example by the existence of a commercial partner that can support the associated costs (as defined in the number 4 of article 15 of the IP Policy).

In some cases, even if a commercial partner is not yet identified, the decision may pass to legally protect the invention abroad or to maintain an international patent application, considering that commercialization opportunities are promising, and depending on the extent of the funds available for investing in foreign patents.

Writing a robust patent application requires extensive expertise (ideally legal and scientific expertise). A poorly written patent application may compromise the success of the invention commercialization.

Questions like “Is it better to patent the finished product, a part of it or the method for manufacturing the product – or all three?” or “In which countries should the patent be protected?” should be thoroughly analyzed. A skilled person must be able to understand the solution. It must also be clear what precisely you are claiming protection for.

At NOVA we have been dealing with external partners (patent attorneys) specialized in drafting patents in different fields of technology and respond to patent offices in the countries in which patents are filed. These processes often involve significant expenses and are managed by NOVA’s specialized services.

NOVA is responsible to ensure that a patent application has enough quality to be filed, in order to safeguard the University interests. All inventors from NOVA must collaborate in this process, providing all the information and documentation as needed. This is a very important aspect, as no internal service knows more about the invention or creation than the inventors themselves.

PATENTING YOUR INVENTION 

This figure illustrates a typical process at NOVA, from the invention disclosure form to the filing an international patent application. Note that this process may be different in certain situations, as the best protection approach is defined on a case-by-case basis, considering the maximization of the socio-economic impact of each invention.

You should contact NOVA Impact. If you are related to FCT NOVA you should contact IRIS, and if you are related to ITQB you should contact ITQB’s Innovation Unit.

From existing relationships of the inventors/authors and technology transfer staff, to market research analysis, showcase of the technologies and advanced expertise in national and internationals events or online matchmaking platforms, several strategies and sources can be used to identify potential licensees and market inventions, or other developments owned by NOVA.

At NOVA we have been showcasing our most promising technologies in the international platform IN-PART, as well as in the NOVA Impact website. In particular cases, we have also been collaborating with external IP brokers to help us in this challenging process.

An agreement may include multiple types of payments. The categories mentioned below are not exhaustive and some of them can be combined in the same agreement:

• Single lump sum payment – a single payment for a determined period of time, typical of agreements in which the technology offers a relatively low industrial and commercial risk.
• Royalties – based on a percentage of the price of the licensed product, or on a percentage of the product sales operational results. This type of payment shares the risk between the licensor and the licensee, since the licensor receives a larger or a smaller payment depending on the sales success.
• Fixed fee payment – a fixed payment per sold unit or technology utilization may be established.
• Up-front payment – a payment required by the licensor on or shortly after the signing of a license agreement, whose purpose is to assure the licensee commitment in the invention industrialization and commercial success.
• Minimum cash payment – annual payments required by the licensor for the licensee to maintain its exploitation rights. The aim is also to assure that due diligence is being taken by the licensee in the invention commercialization success.
• Milestone payments – payments required to the licensee each time certain development or commercialization objectives or milestones are successfully attained such as, the conclusion of an R&D stage, the beginning of sales or the development of a new application based on the technology.
• Option agreements and options payments – an option the right to make future decisions relative to the acquisition or exploitation of a technology. Option agreements generally last for less than 1 year and are very useful on the creation of new enterprises.
• Sub-licensing payments – if the licensee is interested in distributing the technology to third parties, the contract must preview how the gains will be distributed among licensors, licensees and sub-licensees (common in exclusive licensing agreements).
• Equity payments – some universities opt for an equity participation in a spin-off, assuring financial support for the firm or tech transfer without or at reduced cost for the firm. So far, NOVA does not take equity on its recognized spin-offs but provides them several benefits, such as license in exclusive terms the IP generated by the spin-off promoters, without fees until the commercialization stage.

To find a potential licensee for a technology can take months or even years, depending on its attractiveness and development stage, competing technologies, and the amount of work required to increase the maturity level of the technology. Early-stage technologies typically require substantial efforts to attract a licensee.

Technology Readiness Levels (TRL) are a type of measurement system used to assess the maturity level of a particular technology. Technologies rated at a TRL level of 7 or higher are easier to license. Because university technologies are often too early-stage to attract industry investment, NOVA, in partnership with inventors, strives to increase the TRL rating, increasing the chances of successful licensing.

You should contact NOVA’s specialized services on IP commercialization. Generally, the most successful research commercialization results are obtained when the inventor or author and the licensing professionals work together as a team to market and promote the use of the IP asset.

Your network of contacts can be extremely useful as research relationships are often a valuable source for licensees, but do not start any negotiation process without involving NOVA’s specialized services.

The disclosure process must be followed.

Computer programs in which NOVA acquire rights may be either copyrighted or patented (if considered “computer-implemented inventions”) and made available by NOVA for commercial purposes, under various forms of Copyright licenses or patents (if applicable). Potential revenues will be shared according to what is mentioned in section E4. If authors desire to distribute software for noncommercial research purposes which has been commercially licensed by NOVA to third parties, such licensing must be validated by NOVA.

Revenues are considered as income related to IPR and not as supplements to the salary. These revenues are compatible with exclusivity requirements.

Revenues from intellectual property are generally taxable. Consult a tax advisor for specific advice.

Each case should be analyzed according to its own particularities, but some key factors when considering a spin-off company are:

• Development risk (established companies are often unwilling to take the risk for unproven technologies)
• Availability of venture capital
• Multitude of markets/products from the same technology
• Very large competitive advantage and target market
• Potential revenues sufficient to sustain and grow a company
• Motivation and commitment of the inventor(s) to this approach
• The management team of the proposed spin-off company

Licenses typically include performance milestones that, if unmet, can result in termination. In principle, this allows for subsequent licensing deals.

Also, a technology or other IP asset can be licensed to multiple licensees, either non-exclusively to several companies or exclusively to several companies, each only for a unique field-of-use (application) or geography. Check section E3 to know more about the different types of licensing agreements.

All collaborations that may imply inventive activity must be preceded by an agreement celebrated between the parties, regulating the intellectual property, namely with clauses regarding the ownership of the IP rights and their exploitation (article 13 of the IP Policy).

These agreements should never define a priori the transfer of IP rights or trade secrets from NOVA to other entities, or realize also a priori the percentage of benefits to be attributed to each co-owner (in case of joint ownership of results), without the consent of the Rector. If this is case, the contract should never be signed without the approval of the Rector, preceded by the analysis of the NOVA Impact office, who has 15 days to comment on them after receipt.

Please note that these agreements should not only provide clauses regarding Foreground IP – typically defined as all Intellectual Property arising from the R&D undertaken within certain project after the date of signature of the agreement (“prospective” IP) -, but also concerning Background IP, i.e., all Intellectual Property deemed to be relevant to the project and already owned by the Parties before the beginning of the project (“existing” IP, whether or not protected by IP rights).

The overheads of a simple service provision are differently calculated from the overheads typically charged in an R&D collaborative agreement.

As mentioned in the previous question, all collaborations must be preceded by an agreement celebrated between the parties, to regulate intellectual property rights. In this particular case, it would be very important to get to know the IP Policy of the hosting institution, so the agreement could take into account the IP Policies of both institutions.

NOVA Impact or the specialized support services of FCT NOVA (IRIS) or ITQB (Innovation Unit) will provide help with drafting the IP clauses to be included in such collaboration agreements.

According to NOVA’s IP Policy (see article 19), “research materials” can be biological materials (e.g. DNA, plasmids, antibodies, cell lines), other non-biological products or materials, engineering drawings/projects, computer databases, prototype devices, equipment and associated research data, among other elements associated with the previous ones.

In cases where research materials are transferred from one institution/entity to another it is important to complete a “Material Transfer Agreement” (MTA), documenting the items to be shared and conditions of use, i.e., regulating the background IP and research results arising from the use of the transferred material(s).

Be aware that some companies may give research materials free of charge for research purposes (e.g. expensive reagents, chemical or biological samples or a laboratory animal), by signing an MTA, that may contain clauses regarding the commercial exploitation of research results coming from the use of the transferred research material, requiring a careful evaluation from NOVA specialized services to safeguard the interests of both parties.

Under the scope of a research agreement between NOVA and a third party (or third parties), you may be asked to sign a confidentiality agreement. The same may apply if you are in contact with IP that has been or may be protected, or that is commercially sensitive (meaning that it is perceived as being able to generate profit or may lead to other competitive advantage).

For additional information, see articles 11 and 13 of NOVA’s IP Policy.