Always contact the Innovation Office before publishing if there is even the smallest chance that the findings may need intellectual property protection.
Intellectual property protection, such as a copyright or patent, goes to the person who made an intellectual effort to achieve the finding. In brief, this means that if something resulted from a person's individual choices, then intellectual property rights may be relevant, but if something can only be done one way, no such right is relevant. One example of this is the collection of research data. Purely factual data have no intellectual property protection. Findings based on research data have intellectual property protection if they are based on an individual's choice of method, for example. Read more about intellectual property protection on the pages on patents and copyright.
Support for commercialising findings
The Innovation Office and Umeå universitet Holding AB can provide personalised guidance and assessment of findings that can be commercialised or used in some other way. They can assist with mapping intellectual property and civil law ownership and devise strategies for managing your findings. Commercialising findings does not necessarily mean forming your own company. The Innovation Office and Umeå universitet Holding AB can help you find alternative forms of commercialisation, such as licensing models.
Checklist
When you want to protect, commercialise, or use a finding in some other way, do the following:
- Contact the Innovation Office for support.
- Check whether any agreements regulate the rights to the project findings.
- Wait to publish your findings. Remember that poster sessions and presentations at conferences count as publicising findings.
- It is always better to contact the Innovation Office an additional time if you are uncertain.
Additional information
Patentable inventions
In some situations, a patent may provide a competitive advantage for the holder. No one uses findings available for anyone to use as there is no incentive for investment. One strategy for using your findings could be to apply for a patent.
Applying for a patent to an invention requires that the invention is new and previously unknown. This may mean that you need to wait to publish the findings of your research. It is important to determine what part of the findings can be protected by a patent. Because research projects typically involve multiple individuals, you also need to determine who contributed to the invention. Being considered an inventor requires the contribution of an intellectual performance; it is not enough to have made a mechanical contribution, for example by conducting tests. Meeting the criteria to be considered an author of a publication is also insufficient to be considered an inventor. You need to have specifically contributed to the invention that can be patented.
Determining ownership in collaborations, especially with foreign contributors, can take time.
Review agreements
Many cooperation agreements with private or foreign contributors include conditions on the rights to the result. Agreements may include an option to acquire ownership rights or the right of use to the findings. These clauses can impact whether you can use the findings. All clauses in an agreement are to be reviewed before signing the contract, since conditions may sometimes be hidden under unexpected headings. Do not sign an agreement if you are uncertain of its content. Agreements to which Umeå University is a party are reviewed by the Legal Affairs Office.
Wait to publish
Publishing a result can prevent commercialisation. For example, if you want to apply for a patent, the invention may not be previously known or published anywhere. As such, you may need to wait to publish the findings of your research. Some protection applies once a patent application is filed.
Publishing the findings of your research while a patent application is being processed can diminish the news value of the information not included in the application. The Swedish Intellectual Property Office (PRV) has a guide for important dates in the patent process.
The exemption for intellectual property rights of academic staff and rule of thumb
The right to an invention or work belongs to the creator(s) of the invention or work. The Act on the Right to Employee's Inventions (1949:345) specifies rules on patentable inventions made by an employee as part of their work. The Act entitles the employer to acquire the employee's invention in certain circumstances. Through for intellectual property rights of academic staff exemption, teachers employed by a Swedish higher education institution are exempt from this law. This means that patentable inventions made by a teacher in the course of their duties are not covered by the right of employers to acquire inventions. The teacher retains the right to the invention. This exemption means that an individual employed as a teacher in accordance with the University's appointments procedure for teachers has the right to findings produced in the course of their duties.
A rule of thumb entitles the University, within its areas of activity and for its normal activities, to use the findings of a staff member from the performance of their duties and with specific obligations to their employer. The University's "normal activities" typically refers to teaching and non-commercial research.
Does the exemption for intellectual property rights of academic staff include doctoral students?
The intellectual property rights of academic staff do not include doctoral students, because doctoral students are not employed as teachers. As such, the University, as an employer, may have the right to acquire a doctoral student's findings. The University typically has no interest in acquiring intellectual property produced by a doctoral student in the course of their employment.
As with other employees, a doctoral student must have made an intellectual contribution to be entitled to the intellectual property rights of the findings. If the doctoral student has been assigned a question to solve and some degree of freedom to solve it, the doctoral student is deemed to have contributed to the findings and consequently, in many cases, may be entitled to intellectual property rights. Conversely, if a supervisor or head of research has given the doctoral student specific instructions for how to carry out the work and the doctoral student has not made any individual choices, normally the doctoral student is not deemed to have contributed to the findings and thus has no right to them.
Umeå University considers it important to protect the rights of doctoral students to findings. The way in which doctoral students may use their findings can impact their opportunities for continuing to research the findings. As such, Umeå University is very careful to ensure that the rights of doctoral students to findings are protected in cooperation agreements with external parties.
For externally employed doctoral students and doctoral students in the Industrial Doctoral School who are employees of the company with which the doctoral project is being run, the right to the doctoral student's findings is determined based on the applicable rules for employment at the company. The company may have the right to acquire the findings as per the Act on the Right to Employee's Inventions (1949:345). There are also collective agreements that regulate this area. In these collaborations, the University needs to ensure access to and use of findings in future research and education.
The exemption for intellectual property rights of academic staff does not apply to technical and administrative staff
The exemption for intellectual property rights of academic staff does not apply to technical and administrative staff, such as research engineers. If you are employed as technical and administrative staff and would like to commercialise a finding, you may need a letter in which the University describes what interests, if any, it has in the findings, known as a "fribrev". The University is usually only interested in obtaining the right of use to findings in its area of activity and for its normal activities. Contact Umeå universitet Holding or the Legal Affairs Office for help with drawing up a "fribrev" letter.
Secondary employment
Commercialising by starting a company means that you have secondary employment. It is important to clearly separate secondary employment from your regular duties at the University. Once a year, teaching staff and employees covered by the Manager agreement are to submit a report on their secondary employment. Read more about reporting secondary employment.
When you have secondary employment, it is also important that your actions do not risk causing conflicts of interest. The page Conflicts of interest, bribery and corruption describes in detail possible conflicts of interest.