Intellectual Property Gains Growing Importance in Researchers’ Daily Work
On January 9th, researchers of the Institute of Molecular and Cell Biology participated in a joint seminar with Alina Paas, an Intellectual Property Analyst from the University’s Entrepreneurship Center. The seminar aimed to address challenges scientists face in managing intellectual property and navigating the initial steps of commercialization, providing practical tools to help overcome these obstacles.
Alina Paas is responsible for the protection and commercialization of intellectual property (IP) created at the university. She also provides guidance and training for students and staff. With extensive experience, Alina has advised corporate clients and startups from 19 countries on matters related to intellectual property and contract law.
How to identify intellectual property?
One of the first questions researchers often encounter in their daily work is: "How can I identify intellectual property and potential opportunities for commercialization?" Researchers think differently from IP analysts - they often don’t know whether topics intended for future protection can, for example, be presented at international conferences. The researchers' perspective is often confined to the lab, without extending to the potential application of their invention or product in the market or economy. In addition to sharing, it is also essential to protect the results.
Challenges arise in recognizing IP rights, protecting them, and utilizing existing rights further. Publishing, which is often required as a valid output of a researcher's work, can at some points in the timeline conflict with the possibility of applying for a patent. Rapid publication is not always the best solution when there is potential interest in patenting and bringing the innovation to the market.
Over half of the university's patent applications successfully result in granted patents, and the goal is to maintain this high success rate in the future.
The researchers are not alone on their journey
It’s reassuring to know that researchers are not alone on the journey of identifying potential inventions and protecting them. The Centre for Entrepreneurship and Innovation stands ready to support scientists every step of the way.
Entering the market brings challenges and opportunities such as licensing and commercialization. Companies that provide funding often seek all and exclusive IP rights, while the university aims to retain some of them for broader commercialization opportunities. This creates a bottleneck that requires extensive negotiations. However, a business-oriented mindset is highly encouraged within the university. Researchers have the opportunity to take academic leave to work in industry and receive consultations on establishing spin-off companies.
If a researcher has already published their work, it does not necessarily mean that it can no longer be protected or commercialized. It is encouraged to seek advice of IP strategy from EIK in this case too.
In the coming years, the Entrepreneurship Center plans to enhance training opportunities for employees, offering both online and on-site sessions, while also organizing meetings with patent attorneys to provide expert guidance.
The meeting with the researchers also led to several practical cooperation directions, including:
- Mandatory short web courses to researchers with questions and multiple-choice answers, similar to those in cyber hygiene;
- A concise instructional guideline for each researcher upon signing the employment contract on the topic “Where the IP starts?”;
- Short courses on specific business.
The courses already available are grouped on the website.
The meeting provided valuable opportunities for researchers to ask questions and find answers to various concerns, such as:
- Do I need to sign an intellectual property agreement with a student, and if so, when?
- How can the university secure IP rights from a person who has already left the institution and had no active contract in place?
Who owns intellectual property?
At the University of Tartu, intellectual property created by researchers within their employment belongs to the university. While companies can license this IP, it is often not the most suitable approach for some business models. This is an area where the university could adopt a more flexible stance for commercialization models. However, it is important to note that our operations are guided by existing legislation, which, in its current form, does not always support seamless cooperation between the university and enterprises.
Another sensitive topic discussed was how to protect and manage trade secrets. It is crucial to document trade secrets, as only then can they be properly safeguarded. Researchers were also advised not to rely on invoice-only or contract-less services to sell their expertise, consultations and knowledge. Instead, consider structuring collaborations in a contract and keep a good care of your trade secrets to better protect valuable intellectual property.
