Below are briefly described the main steps and most important aspects of the process for the protection of intellectual property included in the University regulation on intellectual property:
1. Technology disclosure
The Scientific coordinator supervising a researcher who has authored works that can be patented, registered or protected, must inform the Division for the Valorization and Impact of Research at UniTrento using the "Invention disclosure form" or the "Software disclosure form", which must be duly signed.
Ownership belongs to the researcher, the University, the research funder, based on the law or on the contract that regulate the relationship between the researcher and the University.
When intellectual property rights belong to the University, the Division may exploit them to the benefit of the University and of the researcher. When they belong to the researchers, the latter can patent, register or protect their invention but must award the University the value it is entitled to under article 65 (2) of the Code of industrial property and article 16 (2) of the University regulation, or they can transfer their rights to the University.
2. Intellectual property rights assignment proposal (“Proposta di cessione”)
The Scientific coordinator, on behalf of all researchers involved in the creation of the work who have not already transferred their intellectual property rights, can submit to the University a proposal to transfer the intellectual property rights in favour to it, using the "IPR assignment proposal" form, duly signed.
3. Intellectual property rights committee
The University has the right, but not the duty, to accept the proposal.
The role of the Committee is to assess the proposals submitted by the researchers through the "IPR assignment proposal" form and to make a decision about them.
4. Intellectual property rights assignment agreement and filing for protection of intellectual property rights
If the Committee decides to accept the proposal, the Division drafts a "IPR assignment agreement" for the researchers, that they must sign in order to file an application for protection of intellectual property rights.
5. Exploitation of intellectual property and distribution of revenue
When the parties have signed the IPR assignment agreement, the University, in collaboration with the Scientific coordinator of the researcher, takes action to exploit the protected work, with appropriate sharing of benefits.
Any revenue generated by the exploitation of the work is distributed based on the provisions laid down in article 16 (1) of the Regulation:
- 50% to the researcher [Note: when this share must be distributed among several researchers, the shares are based on each one's contribution to the research work, as described in the Agreement that they have signed. Where the agreement did not provide for the distribution of profits, the latter will be divided in equal shares];
- 20% to the department or centre participating in the project;
- 30% to the University.
Expenses incurred by the University to protect and exploit the work will be subtracted from the revenue before distributing the shares.
Ownership of intellectual property rights
Intellectual property rights in works created by researchers in their research activity belong either to the University or to researchers based on the provisions of the law or of the contract governing the relationship between the parties.
Specifically, intellectual property rights belong to the University:
- when the patentable invention is the result of research:
- funded, in full or in part, by private entities (except where otherwise agreed with the funding entity); or
- conducted within specific research projects or programmes funded by public entities other than the University (except where otherwise agreed with the funding entity), in compliance with the Code of industrial property rights.
- when the patentable work is a software product or a database created by a researcher of the University within his or her research activity, in compliance with the legal provisions on intellectual property rights. In any case, moral rights allow the researcher to assert rights to be known as the author of the work.
When the University or one of its departments participate in research programmes or projects
When the patentable invention is the result of a research programme or project which includes the University and is funded by private entities or by public entities other than the University, they are subject to the research agreement signed by the parties. Such agreement will govern any commercially or industrially exploitable results.
Before the start of any research activity, the Scientific coordinator is required to make sure that all the researchers involved in the research work have been informed on the rules in place (and have accepted them by signing a research agreement), and have assigned the intellectual property rights to the University through the Division for the exploitation of research results.
Note: the Scientific coordinator will also collect, before the start of any research activity, the declarations signed by all researchers who will participate in the research.
The Scientific coordinator will make sure to enter into intellectual property ownership agreements with entities or organizations whose staff is participating in the research activity. When UniTrento is the owner of intellectual property rights, the Scientific coordinator prepares the above documents.
PhD students, postdocs, teaching and research staff and intellectual property rights
PhD students and Intellectual property rights
PhD students own intellectual property rights on patentable inventions and copyrighted works including software, except when their research work if funded by third parties (through contracts with third parties, national, European or international funding).
Ownership of intellectual property rights must be carefully assessed because of the collaborative approach to research work, which is the reason why intellectual property rights are often shared among researchers and organizations.
PhD students who intend to protect their works must verify that such works have not been publicly released before filing for protection.
When they are filing for protection and about to defend their theses, PhD students may request the members of the thesis committee to sign a non-disclosure agreement.
When defending their thesis, PhD students are actually making their work public, which is why it is recommended to file for protection beforehand.
Postdocs and Intellectual property rights
Postdoc researchers sign a research agreement with the University of Trento that usually includes provisions on intellectual property rights deriving from research work.
Postdocs usually transfer any intellectual property rights deriving from their research project to the University.
The terms of the agreement can differ from case to case and must always be verified.
Teaching and research staff and intellectual property rights
Article 65 of the Code of industrial property rights (Legislative decree no. 30/2005, as amended) foresees that teaching and research staff owns intellectual property rights of patentable inventions, except when the research work is funded by third parties (through contracts with third parties, national, European or international funding).
Under article 12 of the Italian Copyright law (Law no. 633/1941, as amended), since faculty members and researchers are employed by the University they are not entitled to intellectual property rights on copyrightable works like software and databases. In this case, intellectual property rights belong to the University, but faculty members and researchers have the moral right to be known as the authors of the works.
Note: before filing for protection of the intangible asset (invention, software, etc.) or transferring the rights to third parties, including the case when this transfer falls within contracts of collaboration or with third parties, the Researcher, through the Scientific Coordinator of the research team or project, is required to contact the Division for the Valorization and Impact of Research and to send the document "Invention disclosure form" duly signed, so that the Division can assess the ownership of intellectual property rights and explore possible protection options.
When the Researcher proceeds autonomously, also through third parties, to the protection and valorization of the Intangible Asset, the Researcher is required to distribute 30% of the profits to the University (Article 16 § 3 of the Regulation). The percentage is intended net of the expenses incurred by the Researcher for the protection and valorization. This provision does not apply if the Intangible Asset consists of software or a database, unless otherwise agreed between the Researcher and the University.