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Yogesh Nathuji Dhoble Senior Scientist B.E. (Chemical Engg.), M. Tech.(Env. Sc. & Engg.) Innovation Protection Unit, CSIR 9555192402
The views expressed in this presentation are solely those of the author and do not necessarily reflect the position of CSIR
Inventor: Who is inventor: Anyone who contributes to the CONCEPTION of the invention Importance of the inventor:
51 out of 85 universities reported that The researcher is primarily responsible for recognizing the discovery and its potential, reporting it to the institution and requesting consideration for protection and commercialization.
Survery of intellectual property commercialization in the higher education sector, 2001,Statistics Canada, ST-03-12, 2003
What is CONCEPTION?
Conception is a definite solution to a problem that can be explained to and understood by one skilled in the art and that requires only the assistance of one of ordinary skill in the art to reduce to practice. Fed. Cir.
the inventor(s) had an idea a specific settled idea, a particular solution to the problem at hand and not a general goal or research plan that was definite and permanent enough that one skilled in the art could understand the invention.
PROOF OF CONCEPTION
The inventor must be willing to share the invention with others to reinforce the value assessment and to decide the appropriate next steps
this requires trust on the part of the inventor trust is built on mutual understanding and the outcome of previous interaction
The inventor must receive a signal that reinforces participation in the activity
recognition from others personal achievement and satisfaction
IDEA
Feedback
Feedback
Company A
IDEA
Company B
Inventor
Company C
IDEA
Managing Expectations
A clear understanding of how inventions will be valued, and under what circumstances, is central to managing expectations Involvement of the inventor in the valuing process lays the foundation for the development of a relationship based on trust Potential personal gain outcomes and the process by which these are bestowed must also be clearly defined
Incentives
Monetary awards
range from no monetary award to small cash incentives can sometimes vary with the number of inventors in some cases, further cash awards were possible based on profit generated by a new product introduction or substantial cost savings
Peer Recognition
celebration ceremonies are common (both formal & informal) awards presentations in the presence of peers and/or family inventors hall of fame acknowledgement in company newsletter calls and emails of congratulations
Career Enhancement
recognition in performance review
Organization needs to Review disclosure speak with inventor(s) perform prior art search/novelty Look in to the interest of organization Decide to file/ what to file / what data to be disclosed Determination to File PROVISIONAL/Complete or hold or let go(Informed decision with reason) Search for the prospective licensees from the existing network Give wide publicity to the availability of the patent for licensing
Inventor:
Types of Inventor:
1) Independent Inventor 2) Dependent Inventor(s) 1) Employed Inventor(s) 2) Contract Inventor(s) Problem solution
Organization: Who is this Organization: Which has Intellectual Property assigned by the inventors/Employees Which can utilize its own IP if required or out license or in license the patent for its benefit Interest of the Organization: To maximize benefit for the organization and for the society from the IP owned
Government organization NGO Industry Small and Medium Scale Industries -Multinational Industries
Licensee:
Who is this Licensee: Willing to sustain in the the market by increasing the products, products quality Willing to have the eco-friendly and cost effective manufacturing process Willing to earn more profits out of licensed technology Willing to share the minimum royalty or upfront payment on the licensed technology
Knowing types of licensing strategies (i) Exclusive license (ii) Non-exclusive license (iii) Cross-license (iv) Partial license (v) Licensing-in (vi) Know-how license
Inventor Licensee
Organization/ Financer