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About
MIHR
PIPRA
Fiocruz, Brazil
bioDevelopments- Institute
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Why This Topic Is Important
This section approaches questions of inventorship and how to document and disclose inventions in order
to support applications for intellectual property protection. This section will give you most of what you
need to understand about intellectual property as a scientist.
Key Implications and Best Practices: Setcion 8
- IP management is an important element in facilitating the translation of research into useful products or services that benefit your community and country.
- Encourage your technology transfer office (TTO) to organize occasional seminars on the basics of IP management. Ideally, your institution should provide an IP management primer when you join the institution that will help you understand the basic elements of IP protection and smooth the interface with your TTO. Even if you have taken such primers or seminars before, attend those offered by your new employer and encourage those in your group to do so as well. This will facilitate communication with your TTO staff and answer your questions about IP management.
- One potentially controversial issue faced by many TTOs involves keeping laboratory notebooks. For private sector R&D centers, this is done as a matter of routine. Make it a habit to use laboratory notebooks, as doing so can lead to better science and easier invention disclosures and can facilitate patent applications.
- Good practices in laboratory notebook keeping should include the signing of each page by a supervising scientist, occasional spot checks, and the setting aside of time for recording experiments and results. This applies to research assistants, students, post docs, and everyone else working in a laboratory.
- Good record keeping is important. It includes linking research proposals with material transfer agreements, publications, invention disclosures, and so forth. It promotes both scientific goals (it facilitates the writing of publications and grant proposals) and legal goals (good records make it easier to obtain and defend patents).
- Good record keeping goes beyond publications and IP management. Especially in institutions dealing with the development of products and clinical trials in health, or biosafety research in agriculture, record keeping may be essential for providing regulators the necessary evidence that good laboratory practices have been followed and may underpin regulatory filings. In many cases, experiments conducted years before regulatory filings can become valuable for those filings and, unless laboratory detailed notebooks were kept, experiments may have to be repeated at great cost and may also delay filings.
- Invention disclosures are the first step in protecting intellectual property. Disclose early and often. Rather than wait until your scientific paper is accepted, make it a habit every few months to think what might be disclosed and what should be disclosed, and then disclose it. But expect only a small portion of your invention disclosures to lead to patent applications.
- recognize when you actually have an invention. Often, it is much earlier than you think. By filing an invention disclosure with your TTO, you are initiating a dialogue. Even if the TTO does not immediately file a patent based on your first invention disclosure, it is a process that has started, and follow-up invention disclosures will be much easier.
- Ideally, you should invite your TTO liaison to visit your laboratory occasionally and discuss with you and your research team what you have been doing. Discussions with technology transfer experts, especially patent attorneys, can help you to identify inventions.
 Abstract
Documentation of Inventions
by W. Mark Crowell
Abstract:
Documentation of research is a critical aspect of best practices in IP management. This is true because research and development activities that give rise to inventions must be thoroughly documented in order to successfully manage patents, including determining patentability, drafting and prosecuting patent applications, and later, if the need arises, protecting patents against third party challenges, for example, a patent interference proceeding. Maintaining, for each invention, a complete record of who made the invention, when it was made, and how it was made, must therefore become a formal component of a university’s policy and training programs and must be carried our according to specific protocols. An organized and methodical approach to documentation will support patent management, provide a readily accessible source of critical information, ensure the capture of maximum value of inventions, and protect patent portfolios against challenges when, and if, the need arises.
Abstract
How to Start–and Keep–a Laboratory Notebook: Policy and Practical Guidelines
by Jennifer A. Thomson
Abstract:
A laboratory notebook is an important tool that goes well beyond research management and can have important implications for issues ranging from intellectual property management to the prevention of fraud. This chapter discusses the key elements of a laboratory notebook, types of notebooks, what should be included in the notebook, ownership issues, archiving, and security. The chapter provides sample notebook pages that illustrate some of the recommended practices.
Abstract
Introduction to IP Issues In the University Setting: A Primer for Scientists
by Martha Mutschler, Gregory D. Graff
Abstract:
Intellectual property (IP) is inherent to many of the research, teaching, and extension functions of the university, and IP issues can occur in all phases of the corresponding programs. A research program may utilize IP generated and protected by others in its planning and execution phases. As a research program advances, decisions made regarding disclosure of results may affect whether or not discoveries made by the program can eventually be protected.
A successful research program will generate discoveries—and therefore IP—and decisions must be made regarding whether to protect, and how to deploy, those discoveries. The decisions must consider the management of IP as well as the goals and priorities of the research program and the university. It is also important to consider IP in the teaching and extension functions of the university, including the creation or use of written materials, software, networked resources, or designs.
IP and IP issues are not the sole or even the primary focus of a university. However, failure to properly consider IP issues can lead to frustrating and costly problems. Fortunately, realistic and efficient management of IP in research, teaching, and extension requires only a minimal working understanding of the issues and an ability to access on-campus assistance in dealing with them.
This chapter presents basic information that any scientist should know about IP, discusses the importance of IP management in a scientist’s work, and reviews additional sources of information regarding IP. We hope, this chapter will assist the reader in avoiding simple yet costly errors in IP management.
Abstract
Invention Disclosures and the Role of Inventors
by David R. McGee
Abstract:
This chapter is intended to assist intellectual property professionals, in working with inventors, to develop a high-quality invention disclosure and, eventually, to prosecute a patent application. Major topics include the importance of data records, utility and reduction to practice of inventions, understanding prior art (including the inventors’ own art), and determination of inventorship.
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