Team:Brasil-USP/Practices/USPInovacao
USP Innovation Agency
Policy and Practices
The Agência USP de Inovação (Innovation Agency of the University of São Paulo) is responsible for managing innovation policy in order to promote the use of scientific, technological and cultural knowledge produced at the university for sustainable socio-economic development of the state of São Paulo and of the country. Engaged in the protection of industrial and intellectual property generated at the University, performing all necessary procedures for the registration of patents, trademarks, copyright books, software, music, among other creations. Provides support to professors, students and USP employees to better manage the relationships with the business sectors, as well as communicate to society the impact and benefits of innovation guided by science developed by researchers from USP. Through business incubators, technology parks and specific training, it promotes entrepreneurship by providing technical support, management and additional training to the entrepreneur. It also works on technology transfer, concerned to place them at the disposal of society.
When the first initiatives of founding a startup came up in our project, a meeting was scheduled to discuss about patents. Our technology lies in the state of the art of enzymatic rubber degradation and there were concerns about intellectual property to guarantee the success of our entrepreneurship initiatives. Knowing this, we recognized a deficiency of how we were intended to proceed. If we should patent as a partner with the university, what is the cost, how to write, what can be patented, how many types of patents exist. Eduardo Brito from AgênciaUSP de Inovação explained many of our questions and stated all possible scenarios. We have learned a lot about required documents and policies that govern the development of a technology inside the university.
First, we have analyzed the parts of our project and what needed protection, in order to implementate the project and benefit all the people involved.
Once defined the ideas to patent in each part of the project, it was discussed about the rights and licensing. The team’s opinion was very divided about patent strategies. In this senses, we considered three options:
1) Patent without the partnership of USP, look for funding and develop the technology in partnership with other startups.
This option is not possible because we were already using USP resources, such as equipment and human resources. Additionally, USP has an excellent infrastructure and it would not be a smart choice to not use it. In future scenarios, we intend to fully developed in the company, showing the viability of this option.
2) Patent and develop everything inside the university and pay for licensing later.
This is a fair option. Licensing procedures are explained below.
3) Patent with the university and the company in co-ownership.
This is also a fair option. Although, to make it possible, our company would have to exist and participate in project development and funding since the beginning, which is not the case. Our future plan after iGEM is to make a covenant between company and university for future development and patents.
Here is some important information about rights and licensing we have learned:
- Professors and students involved in the project are the inventors of the patent but the University of São Paulo is the titular.
- The University of São Paulo licenses the technology to companies and three different forms: (1) Royalties are applied based on negotiations and market literature; (2) The company pays an annual fixed value; (3) The company pays a single time for the license. Furthermore, the license can be exclusive or not, which means that the company can be the only one to use the technology or not. These decisions are based on market literature and negotiations with the USP, company and inventors.
- In all the licensing methods, the University of São Paulo holds 70% of the money received and this percentage is not negotiable. Inventors share the other 30%.
- If the technology is being licensed to a startup founded in the university with its students that also are the inventors, some facilities can be discussed, as a two year grace in licensing fees.
When the University of São Paulo develops a project in partnership with a company, they can share the ownership of the patent. We considered this case as a good option for us in the future because we would not have to pay license fees. The first step to make it possible is to open a company and formalize an agreement between USP and startup. In this document we would describe the work plan and establish patent shares based on it. Our team went to the financial division of Instituto de Física de São Carlos - USP and discussed about this option. We have the document to the agreement, unfortunately is confidential. Agência USP de Inovação also esteem that it is a good future plan and we are working on that. In this case, our startup would be responsible for founding, studying the market and projecting the scale up, while USP would give us infrastructure to keep the study in laboratory scale. This is not possible right now due time. All the technology described in our wiki page must be patented before the grace period and this time is not long enough to set legalize the company and set the agreement.
The grace period was explained to us by Eduardo Brito and Freid Artur. We were worried about wiki divulgation before the patent deposit. In Brazil, there is a “one year grace period” after idea disclosure that gives the inventors the right to patent. Our wiki also will be previous registration to another countries and it makes impossible to another person to copy our idea and try to patent. By law, it would not be accepted because we already own it. The ideal is to hold the technology to yourself and make it a secret. However, as we can’t do it on iGEM, we recommend future teams to understand how it works in their countries and make use of the “grace time”.
A patent in Brazil lasts 20 years and taxes costs approximately $5000 during this whole time. But there are some costs not included, such as a specialized person to review our text and claims. The University holding the ownership, it pays all the fees during the 20 years. As a result of this, USP only pays international patents when there is a non-Brazilian company interested on exploring it. We have been in contact to multinational companies in Brazil to make a partnership in future and make our technology expand reach more than only the brazilian market.
In our last meeting, we presented them our project and showed the entrepreneur spirit of iGEM. They got very excited to support us as sponsors to take more members of the team to the event and have the opportunity to present our project in the best form and speak with potential investors.
We are grateful for AgênciaUSP de Inovação help, they teached us a lot!