This section is dedicated to scientists. It includes information regarding patent process and management of Material and Animal Transfer Agreements.
PATENTS
To be patentable, an invention has to meet three basic requirements:
There are certain things that are deemed to be un-patentable:
Any written or oral "prior disclosure" outside the San Raffaele Scientific Institute prevents you from patenting in Europe.
Before you disclose any new aspects of your work:
- Think about industrial applicability
- Contact us if you think your work has potential commercial interest
A patent application can be filed very quickly when necessary, and can significantly enhance the chances that a technology will be developed and generate further research funds for your laboratory.
It is hardly ever necessary to delay a publication/talk/research poster in order to protect the technology it describes with a patent.
If an inadvertent disclosure is made by the legitimate inventor, patent protection in the US is still possible if filing is made within 12 months (grace period).
The patent process
It is not always straightforward to judge whether an invention is patentable, so scientists should contact us as early as possible by filing a Patent Interview Form (download pdf) to the Office of Biotechnology Transfer. The OBT will give a first evaluation on the patentability of the invention in terms of contents, prior art and potential market, then the Intellectual Property Committee will take the final decision on whether to file a patent. Members of the Intellectual Property Committee are the Research Direction, OBT, internal experts. If a decision is made not to file a patent then the Fondazione Centro San Raffaele del Monte Tabor will reassign the rights on the intellectual property to the inventor.
Aims of a prior art search
Download Patent Interview Form
LICENSING
As soon as a patent is filed OBT will proactively search potential licensees of the technology. Inventors’ suggestions of and connections with companies to be approached are extremely valuable. If the company show interest in the technology then a Confidentiality Agreement needs to be signed to protect all confidential information necessary to be disclosed to evaluate the technology. The negotiation of a license is a process requiring flexibility and clear vision of the market opportunity as well as the capacity to find creative solutions to accommodate the needs of licensee and licensors. License agreements regulate long term relationship and need to be closely monitored ( due diligence milestones and financial reports) and might need to be renegotiated over the license life term.
A license is a legal agreement by which the owner of the intellectual property grants the licensee the right to use and commercialize eventually after further development the invention. The agreement defines also the commercial value of the licensed material, foreseeing upfront payments, milestone payments and royalties on the net sales of the licensed product. OBT plays an important role in assessing a value to the product and in the negotiation of the best ways to support San Raffaele research development in a product of use and value for the community.
MATERIAL TRANSFER
Material Transfer Agreements and Animal Transfer agreements need to be signed whenever there is a transfer of technology or biological material or animal models.
MTAs are contracts which rule the transfer of material that is not commercially available from the owner or licensor towards an external institution whether profit or non profit for research purposes only.
The MTA defines the rights of the provider and the recipient with respect to the materials and any derivatives. The main issues defined in a MTA are: confidentiality, delay in publication, use of material in sponsored research projects, definition of material, loss of control of intellectual property, conflicts with existing agreements.
Every time a scientist working at San Raffaele Scientific Institute needs to transfer material to another institution profit or non-profit or to obtain material from third parties a MTA agreement needs to be signed before any material is transferred. For processing the necessary documents, please contact Simona Locatelli.
Download ATA | Download MTA
Download STANDARD PROCEDURE
Note: for patented material please contact: locatelli.simona@hsr.it
PATENTS
To be patentable, an invention has to meet three basic requirements:
- Novelty: the invention cannot be patented if it is already known to the public.
- Inventiveness: the invention cannot be obvious.
- Industrial applicability: the invention must be susceptible of industrial application, i.e. for an invention which can be made or used in any kind of industry
- Product (proteins, antigens, biomarkers, small molecules,…)
- Process (method for isolating/enriching a cell population, methods for obtaining cells/proteins/antibodies,…)
- New Medical Use (new uses of existing drugs, molecules)
There are certain things that are deemed to be un-patentable:
- A discovery, scientific theory or mathematical method.
- A literary, dramatic, musical or artistic work or any aesthetic work whatsoever.
- A scheme, rule or method for performing a mental act, playing a game or doing a business, or a program for a computer (software).
- The presentation of information.
- Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body shall not be regarded as inventions which are susceptible of industrial application, therefore are not patentable, as such. This provision shall not apply to products, in particular substances or compositions, for use in any of these methods.
Any written or oral "prior disclosure" outside the San Raffaele Scientific Institute prevents you from patenting in Europe.
Before you disclose any new aspects of your work:
- Think about industrial applicability
- Contact us if you think your work has potential commercial interest
A patent application can be filed very quickly when necessary, and can significantly enhance the chances that a technology will be developed and generate further research funds for your laboratory.
It is hardly ever necessary to delay a publication/talk/research poster in order to protect the technology it describes with a patent.
If an inadvertent disclosure is made by the legitimate inventor, patent protection in the US is still possible if filing is made within 12 months (grace period).
The patent process
It is not always straightforward to judge whether an invention is patentable, so scientists should contact us as early as possible by filing a Patent Interview Form (download pdf) to the Office of Biotechnology Transfer. The OBT will give a first evaluation on the patentability of the invention in terms of contents, prior art and potential market, then the Intellectual Property Committee will take the final decision on whether to file a patent. Members of the Intellectual Property Committee are the Research Direction, OBT, internal experts. If a decision is made not to file a patent then the Fondazione Centro San Raffaele del Monte Tabor will reassign the rights on the intellectual property to the inventor.
Aims of a prior art search
- Patentability evaluation of an invention.
- Find out what already exists and build on it (it helps you formulate your patent application more precisely and avoids negative search reports issued by the examining divisions).
- Get access to -hard to get information- from commercial suppliers.
- Keep track of who’s doing what (keep an eye on your business competitors, or even locate potential partners).
- Evaluate if your project is innovative, before even starting it.
- References for grant proposals, paper publications,….
- Freedom to operate analysis to avoid infringing other parties’ patent rights.
Download Patent Interview Form
LICENSING
As soon as a patent is filed OBT will proactively search potential licensees of the technology. Inventors’ suggestions of and connections with companies to be approached are extremely valuable. If the company show interest in the technology then a Confidentiality Agreement needs to be signed to protect all confidential information necessary to be disclosed to evaluate the technology. The negotiation of a license is a process requiring flexibility and clear vision of the market opportunity as well as the capacity to find creative solutions to accommodate the needs of licensee and licensors. License agreements regulate long term relationship and need to be closely monitored ( due diligence milestones and financial reports) and might need to be renegotiated over the license life term.
A license is a legal agreement by which the owner of the intellectual property grants the licensee the right to use and commercialize eventually after further development the invention. The agreement defines also the commercial value of the licensed material, foreseeing upfront payments, milestone payments and royalties on the net sales of the licensed product. OBT plays an important role in assessing a value to the product and in the negotiation of the best ways to support San Raffaele research development in a product of use and value for the community.
MATERIAL TRANSFER
Material Transfer Agreements and Animal Transfer agreements need to be signed whenever there is a transfer of technology or biological material or animal models.
MTAs are contracts which rule the transfer of material that is not commercially available from the owner or licensor towards an external institution whether profit or non profit for research purposes only.
The MTA defines the rights of the provider and the recipient with respect to the materials and any derivatives. The main issues defined in a MTA are: confidentiality, delay in publication, use of material in sponsored research projects, definition of material, loss of control of intellectual property, conflicts with existing agreements.
Every time a scientist working at San Raffaele Scientific Institute needs to transfer material to another institution profit or non-profit or to obtain material from third parties a MTA agreement needs to be signed before any material is transferred. For processing the necessary documents, please contact Simona Locatelli.
Download ATA | Download MTA
Download STANDARD PROCEDURE
Note: for patented material please contact: locatelli.simona@hsr.it
