Combining openness and innovation

Publishing and commercialisation – Can I have both?

Managing research data enables its use for both patenting and publishing as citable data, as long as timing is successful. Before filing the patent application the research data has to be kept as confidential data. After the patent application is filed, the curated research data can be published, also as open data. Drafting a patent application that will result in a commercially valuable patent requires co-operation of the researcher and patent attorney. The required time span is typically 1.5 to 2 months.

Patents are also published. Espacenet offers access to information about inventions and technical developments of more than 90 million patent documents from around the world.

The European IPR Helpdesk has issued a fact sheet Publishing v. patenting that examines the different aspects of knowledge dissemination tools, taking into account the different needs and objectives of research organisations/universities (ROs) and small and medium sized enterprises/industry (SMEs). No general rules apply when choosing the right means of dissemination, but one needs to ensure that the chosen tools are in line with the overall strategy of the organisation.

Commercialisation policy of Aalto University

Aalto employees shall submit an invention disclosure to the university concerning all inventions and software generated as a result of their employment. Software disclosure should be made for software of commercial potential.

Aalto University uses intellectual property to achieve benefits for society. The results generated in research projects can be utilised commercially, for instance, by licensing or assigning them to industry or other partners, such as start-up companies.

In research projects with external funding received by the university, the research data is owned by Aalto University. Research data is one of the results of the project and ownership to results is transferred to Aalto University with Annex 1 of the work agreement.  Funding agencies such as Academy of Finland  require a  data management plan  and ask about the ownership of research data created with the funding. An Aalto University employee will state that research data is owned by Aalto University.

What part of data is published, length of embargo needed, and how data is curated, are all strategic decisions of the Principal Investigator (PI), taking into consideration agreements, policies and law. The repository chosen is a strategic decision of the PI. University service units offer guidance for selected repositories.

It is possible to ensure the possibility of commercial licensing by double licensing. This means first publishing citable research datasets for non-commercial use and simultaneously or later licensing the dataset for commercial use with a separate license.  

When planning commercialisation activities, it is critical to have clear agreements on the ownership of the results. Any other related engagements, such as previously granted licenses or rights of first refusal, have to be clearly documented. 

In most cases research results are utilised in subsequent research projects, where prior results are used as background. The project agreement and funding terms applicable to the results at issue may set forth provisions for use in further research. 

After patent applications and other needed registrations have been filed, the research project results can be utilised in publications such as open access journal articles and citable datasets.

The Aalto University commercialisation policy establishes guidelines for intellectual property that has commercial potential and to which the university is entitled to. Tradable IP consists of patents and registered designs, copyrights, trade- and service marks and  trade secrets.   

The strategic objectives of the policy are to maximise the overall value created through societal impact; support and secure scientific research and teaching; respect the rights of Aalto faculty, staff and students when commercialising research results; and maximise the transparency of policies and processes related to IP management and commercialisation.

The operational goals of the policy are to effectively transfer research results, in order to both distribute knowledge and reap economic benefits. This includes evaluating, developing and transferring the knowledge created by Aalto researchers, and owned by the university. The results created in contract research must be swiftly transferred to the sponsors according to the agreements. This encourages the economic applications of the research for the benefit of the public, and helps to justify the support of the society to research. An operational goal is also to effectively manage Aalto University´s tradable intellectual property assets.

Transactions of IP and property can take place to existing companies or spinouts. When IP or property is transferred to existing companies, the transaction can either 1) be a sale of IP to a third party or 2) a licensing transaction. If IP or property is transferred to spinouts, the transaction can either 1) be based on equity taken by Aalto, 2) as exchange of assignment of Aalto owned IP and property, or 3) a sale of IP and property with “pay as you grow” -pricing.

For more information, contact the Aalto University Innovation Services.

 

Page content by: | Last updated: 18.01.2017.