Disclose & protect your IP

Publication of research results, whether in a scientific review, conference presentation or oral examination for example, generally prevents protection by patent (except in the USA, where a grace period of one year is granted). Indeed, once made public, the invention loses its novelty value, which is a condition for its patentability. Keep in mind, once a patent application has been filed, the invention may be published without destroying its novelty.

A patent is a certificate of intellectual property concerning an invention. An invention consists of a product or process providing a new technical solution to a problem. The patent gives its holder exclusive rights over the protected invention. The patent is valid in the country or countries where it was issued. It is valid for a limited period, usually 20 years.

• The invention must be new, in other words, it must not be part of existing knowledge of the technical domain concerned (state of the art). This is why publication of research results, whether in a scientific review, conference presentation or oral examination for example, generally prevents protection by a patent (except in the USA, where a grace period of one year is granted). On the other hand, once the patent has been filed, the invention may be published.
• The invention must imply an inventive step; this is the case when, for the specialist, the invention does not obviously result from the state of the art.
• The invention must lend itself to industrial applications, i.e. its object must be manufacturable or useable on an industrial scale.

Patents are issued by national patent offices (in Switzerland: Institut fédéral de la propriété intellectuelle; in the United States: US Patent Office) or regional offices (e.g. European Patent Office). It is also possible to make an international application (PCT filing), which simplifies the procedure, but results nonetheless in examination of the patent application by each national or regional office of the countries chosen by the applicant.

The right to apply for a patent belongs to the owner of the invention. Note that the inventor is not always the owner! Therefore, an invention made by an employee while fulfilling his work contract usually belongs to his employer. The inventor (even when he is not the owner of the invention) has however the right to be mentioned as such on the patent.

EPFL is the owner of its employees’ inventions and software. Inventors or authors in case of software have the right to one-third of net revenue resulting from the commercialization of their inventions with some exceptions according to directives.

The inventor employed by the EPFL is entitled to a share of the income received by the EPFL as a result of the invention’s commercial exploitation by a company having signed an agreement with the EPFL. Usually, such income is allocated as follows, after the deduction of certain expenses:

• One third to inventors
• One third to the laboratory
• One third to the EPFL