INTERVIEW
receives a payment. In addition, if the results are successfully commercialized, the originator receives part of the earnings from commercialization. A deduction is made from the sum earned by the originator to cover costs for protection, legal representation, or further research connected with commercialization. The originator can also integrate the findings from commercialization and experience from cooperation with an industrial partner into the classes that she or he presents for students. Who is the official owner of inventions developed by members of the academic staff? Ownership depends primarily on the employment status of the originator at the time when the intellectual property was created, and it also depends on whether the university’s infrastructure was used in the process of creating the intellectual property. By law, the university owns every invention created by university employees (including students in an employment relationship), that was created within their work duties, or using the university’s infrastructure. What happens if there are several originators, and some of them are not CTU employees? We recommend that the originators should without further delay point this out to Inovacentrum CTU, or to the Patent Office. The legal solution to this situation usually involves drawing up a contract between CTU and the employer of the external originator. Do employees have to report an idea that they came up with, let us say, while taking a shower at home? By law and according to the rules of CTU, if the technology was created in fulfilment of work duties, the intellectual property belongs to the university. If the employee shouts “Eureka!” at home, or in his or her cottage in the country, it does not mean that the university has no claim on the invention. It will be important to determine whether or not the intellectual property in question is related to fulfilling the duties of the staff member’s employment. If you are not sure, contact Inovacentrum CTU.
How much does the filing of a patent cost, and who will pay the fee?
mature enough to find new industrial partners.
The costs are directly proportional to the number of countries in which we try to get the patent. A very important consideration is the costs for the relevant patent agent, which can be significant. For filing a Czech patent, where the applicant is CTU, the Patent Office fulfills the role of patent attorney (free of charge for CTU employees). The cost of filing the application itself is usually around CZK 5.000,-. Filing a European or international application is significantly more expensive, and nowadays costs around CZK 90.000,. In addition, there are the costs for the patent attorney for each country in which we want the application to be filed. The patent costs are typically paid by the applicant for the patent, in our case CTU.
What is the role of the originator in the process of commercializing intellectual property?
“By law, the university owns every invention created by university employees. Filing a Czech patent, where the applicant is CTU, is free of charge for CTU employees. The originator receives part of the earnings from commercialization.” How long does it take Inovacentrum CTU to transfer one technology into practical application? Technologies and results are typically transferred through licensing contracts, where the university, as the provider of the license, guarantees to the acquirer rights to use a specific technology for a set period of time, often even for a set location. The license is often limited geographically. The process of finding the right license partner and finalizing the contractual relationship may last months, or even years. The amount of time spent on a specific case depends on the state of maturity of the technology, the availability of competitive solutions, and on the level of investment needed to place the new concept on the market. University technologies are often not
Connecting Science and Commerce at the Czech Technical University in Prague
The originator plays a significant role in various phases of commercialization. His main role is to cooperate with the patent attorney on preparing the patent, or some other form of protection. He proposes possible commercial partners - foreign studies have shown that more than 70% of all license contracts are concluded with partners who are known to the originators. The inventor also helps by reacting to technical questions from potential buyers. And what is the role of Inovacentrum CTU in the commercialization process? Inovacentrum takes all the necessary steps leading to successful commercialization. In cooperation with the originator, Inovacentrum identifies and evaluates promising technologies generated by CTU scientists or students of CTU. It then recommends a strategy for handling the intellectual property, helps with marketing the technology, recommends a business model, negotiates licenses and other contracts, maintains long-term relationships with companies developing products based on a particular licensed technology and, last but not least, it collects and distributes the license fees from the inventions. What are the qualifications of the Inovacentrum CTU specialists in licensing technologies? The technology transfer team at Inovacentrum CTU consists of people with many years of experience in industry in positions in marketing, business, or product development in the Czech Republic and in foreign countries. Some of them have strong expertise in the area of engineering or natural science. The team also includes lawyers specializing in business law and in intellectual property law. AH
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