On 14 November 2006, the Academy Board decided that (as of the January 2007 calls) inventions made within Academy-funded research projects are to be seen as having been made in commissioned research. This decision does not apply to projects that have received their funding from earlier calls. Inventions made in such projects have primarily been made in free research. More information on free and commercial research as specified in the Finnish Act on the Right to University Inventions is available in the Academy of Finland IPR Handbook, detailed below.
IPR is an abbreviation for the term intellectual property rights, which refers to intangible rights that belong to the creator/originator of an idea. IPRs include copyright, patent rights, rights in a trademark, utility model rights, design copyright, rights to a commercial name, protection of integrated circuits and layout designs (topographies), and plant variety rights. IPRs are structured as exclusive rights analogous to right of ownership. They provide protection for creative work (e.g. copyright and patent rights) or commercial marks (e.g. rights in a trademark and rights to a commercial name).
A common feature of all IPRs is that they are for a limited period only. They can be divided into two categories: rights of copyright and industrial rights. A characteristic feature of industrial rights is that they generally require registration in order to come into force. The national registration authority in Finland is the National Board of Patents and Registration. Rights of copyright need not be registered.
From the point of view of the Academy of Finland, the most important IPRs are copyright (e.g., every scientific publication enjoys copyright protection) and patent rights.
1.1 Definition of terms
A patent is an exclusive right granted for commercial application (production, sale, importation, etc) of a specific invention for a set period within a specific country. In Finland, patents come under the Finnish Patents Act (550/67). Should they so wish, the holders of a patent are entitled to allow others to benefit from the patented invention, or in other words to sell licences to the invention or discovery. To qualify for a patent, an invention or discovery must fulfil three basic criteria: novelty, inventiveness and industrial applicability.
Copyright is a general term covering all the exclusive rights belonging to the creator of a work. Copyright always originates with the creator of the work, a physical person, who has the right to transfer his right to another natural or legal person. In Finland, copyright is covered by the Finnish Copyright Act (404/61). In addition to traditional written, musical and pictorial works, the Act is also interpreted as covering such works as computer programs, multimedia products and large databases. The protection of copyright is extended only to original, independently produced works, i.e. works that cross the threshold for definition as a work for copyright purposes.
Background is any knowledge, ideas, methods, model solutions, equipment, materials, inventions, computer programs, etc in the possession of a party and essential to the project but arising outside of it, irrespective of whether such knowledge, etc is or could be protected under the law relating to intellectual property rights. Background may fulfil the criteria of a work, which would give it protection under the Copyright Act. It may also contain protectable industrial rights.
Foreground is any knowledge, ideas, methods, model solutions, equipment, materials, inventions, computer programs, etc generated during the course of a research project, irrespective of whether such knowledge, etc, is or could be protected under the law relating to intellectual property rights.
Free research is research that is carried out in an employment relationship, for purposes of executing the research tasks assigned to universities, without external funding and without involving any external contracting party. Free research is also such research that is carried out with funding from an external party but that does not involve any other regulations than those regarding the publishing of the results. In addition, free research also refers to such research that would meet the preconditions set for commissioned research but regarding which, before launching the research, the university and the research cooperation party have expressly agreed that the research shall be free research.
Commissioned research refers both to research that is charged service activity subject to the provisions of the Act on the Charge Criteria of the State and to research that includes at least one external party acting either as a performer of sub-research, a funding body or other participant and that involves responsibilities regarding the research results or the method of implementation of the research.
- Finnish legislation (partly in English) at www.finlex.fi
- Additional information in English at www.prh.fi/en.html, www.innofin.com, http://cordis.europa.eu/ipr-helpdesk/en/home.html and www.wipo.org
1.2 Inventions made with Academy funding
Researchers working on Academy-funded research projects come under either the Act on the Right to Employee Inventions or the Act on the right to university inventions, depending on their site of research. The latter is applied to university researchers.
The Act divides research into free research and commissioned or joint research.
According to the Act on the right to university inventions, inventors are obliged to submit a notification of invention when they have made an invention that falls within the scope of application of this Act. In case the university assumes the right to the invention, the inventor is entitled to reasonable compensation.
Regarding free research, a university may acquire the rights to an invention, in case the inventor has not within six months from the submission of the invention notification published the invention or notified his/her willingness to utilise the invention him/herself. In case the university does not submit a notification within the set time, the university is seen as having renounced its secondary right to an invention. In free research, the inventors thus have the primary right to decide whether they want to utilise their inventions.
Regarding commissioned research, a university may acquire the right to an invention within six months from the submission of the invention notification. Further, the university may within the set time acquire the right to the invention, even if the inventor would notify his/her willingness to utilise the invention him/herself.
The Academy Board has decided that inventions made in Academy-funded research projects are seen as having been made in commissioned research. The Act on the right to university inventions is not applicable to persons researching on grants or students, since they do not have an employment relationship to a university.
1.3 Inventions made with joint funding
A growing number of projects supported by the Academy also receive funding from other sources. It may be in the interests of other funding bodies to impose different conditions on their financial support.
As noted above, projects belonging to Business Finland research programmes and European Union framework programmes require university researchers to assign their IPRs to the university. Business companies often have their own interest in the results of the research they fund. The terms of jointly funded research projects in which one or more of the funding bodies is a business company may secure the right of the participating company or companies to have first refusal on commercial utilisation of any technological innovations that may emerge from the project. Commissioned research funded by business companies will also generally involve requirements for IPRs to be assigned to the company providing the funding.
1.4 Research carried out abroad
Where research is carried out abroad, local legislation governing the utilisation of research results must be taken into account. The position of university researchers as owners/users of research results varies considerably from country to country. In some countries, the basic legal assumption is that the rights to their inventions are held by the researchers themselves, as in Finland, while in other countries the rights belong to the university. It is generally possible to negotiate and agree on distribution of the fruits of an invention.
1.5 Advancing the application of research results
The Academy seeks to ensure that the results of scientific research are extensively utilised to the benefit of society as a whole. The Academy considers it a good thing if universities are able to harness the results of research conducted in a university context.
Many universities (e.g. University of Oulu) have begun to develop mechanisms for the application of research results and have created their own innovation strategies. You can read more on the University of Oulu's innovation strategy and utilisation of research results at www.oulu.fi/english/research/support/inventions-and-business-ideas.
1.6 Follow-up on inventions made with Academy funding
Reports prepared by researchers on the progress of their work furnish the Academy with valuable data on their inventions and the use to which these have been put. All reporting shall explain how the research results have been used.
The application of research results can be taken into account as an evaluation indicator in the follow-up of the use of research funding. It is, however, admitted that scientific fields are in a different position in the utilisation of research results.
2.1 Intellectual property rights from the point of view of the researcher
Researchers would be well advised to examine at the research proposal stage whether the project is likely to produce inventions that could be developed into commercial products. It is also advisable to clarify the rights and obligations of inventors with the other members of their research team and with research partners and funding bodies. Actual inventions should not be included in the research proposal before an application for a patent has been filed.
It is particularly important for researchers to know what forms of protection, if any, they can use to protect the fruits of their work, how to get this protection, and what rights they have to use other people's work.
2.2 Responsibilities of researchers
The general goal of research work involves certain conditions that researchers are personally responsible for observing. In the first place, research must be planned and carried out so as to genuinely advance the discovery of new knowledge. Secondly, the research results must be true. Also, they must be made available for further research and for confirmation of the results.
Satisfaction of the third criterion in particular is hampered by a conflict between the pressures on researchers to publish and the pressures for commercial utilisation of research results. After all, one condition for granting a patent is that the invention has not been made public – neither verbally nor in writing. Researchers are responsible for placing their results at the disposal of the research community for evaluation and further research. But, at the same time, they must also see to that publication does not infringe upon their own possible commercial interests, or those of their cooperating partners or financial backers.
In Finland, patents are granted by the National Board of Patents and Registration (NBPR). Instructions for applying for a patent are available on the NBPR website at www.prh.fi/en.html. Application is subject to a charge, and the process usually takes from two to four years to complete. Application for a foreign patent usually takes even longer. The conditions for a patent are outlined above in Section 1.1 (Definition of terms).
The Foundation for Finnish Inventions (www.innofin.com) gives advice on and funding for patenting and product development of inventions by private individuals and small business companies.
There are three alternatives open to university researchers for utilising their inventions by patenting:
- patenting and licensing in their own name
- patenting via a special technology transfer company or the university, which requires agreement on the distribution of costs and income between the company, the university and the inventor(s)
- patenting via a cooperating production company, with the related transfer of rights that this entails.
In addition to a Finnish patent, inventors would do well to consider to what other countries it would be worth extending the protection of a patent, as patents must be sought separately in every country. It is also worth taking note of the different patent regulations in different countries.
3.1 Copyright issues in research projects
In terms of copyright, research projects include two distinct components. On the one hand, material protected by copyright is used in the actual research work. This may involve processing, adaptation, modification, combination or development of the protected material, which may include materials produced by parties to the project, individual researchers or outside sub-contractors. Use of such background material requires sufficiently detailed agreement on related copyright issues.
On the other hand, projects produce results. Copyright to these results must be agreed both with the original copyright holders and among the parties to the project, such as the researchers, the university, the research institute and any private business company involved.
3.2 Copyright issues with respect to academic theses
Academic theses are normally regarded as works protected by copyright. Before a thesis is published, its author has unrestricted control over it. After publication, the thesis comes under the law governing quotations and can be quoted from as a contribution to scientific debate, for example in another thesis or in a scientific article.
Rights of copyright to theses written as commissioned research should be agreed with the customer who commissioned the research. Copyright to group theses is held jointly by all members of the group, and no individual member can decide issues covered by copyright without the consent of the other members of the group.
Copyright protection does not extend to the research results presented in the thesis or the factual content as such. If the author wishes to restrict use of the research results, discoveries, etc, for example by the supervisor of the work or for commercial reasons, any restrictions must be agreed.
Research contracts provide a legal tool for defining the rights and obligations of participating parties in respect of research and the results of research. Research contracts involve several parties and other interest groups: a researcher or researchers, whose status within the university will vary from case to case; the university, university department and possibly subject or project; the funding body and the entrepreneur interested in using the results of the research.
The key issues of a research contract include the following:
- the ownership of initial or envisaged intellectual property rights within the sphere of the project, and any related licences
- the responsibilities of the parties involved to abide by agreed rules of confidentiality in respect of technical data within the sphere of the project
- administration of the project, factors relating to practical coordination, and the selection of the precise form of cooperation.
From time to time during the course of a research project it is advisable to consider when you might invent something worth patenting. The basic objective behind applying for a patent is to develop your invention into a product and get it onto the market. You must have a clear description of it. You may have developed it into prototypes or models and have results of tests on its properties. You should consider the costs of commercial development and think about an appropriate business plan. The following factors should be borne in mind when seeking to utilise research results:
- You should not go public with your invention (publications, conferences, posters, briefings, the media, fairs, articles or other writings, the Internet or application documents) before filing your patent application.
- You should assess the advantages of your invention, which are affected by topicality and marketability. Important criteria include what it will be used for, who needs it, and how it can be developed into a product and marketed.
- You will have to establish the novelty of your invention, and its suitability for patenting. The sources for this are publications, patent databases (e.g. esp@cenet, http://ep.espacenet.com) and the Internet.
- Evaluation should focus on the invention's technical solutions, functionality, cost-effectiveness, overall costs, funding and production feasibility in comparison with competing products already on the market.
- Ownership of an invention should be established in good time. When drawing up a research contract, it is advisable to agree with the other parties in advance on the ownership of any inventions that might emerge from the project.
- Most universities offer guidance on patents. Information is also available from the Foundation for Finnish Inventions; the National Board of Patents and Registration; Sitra, the Finnish National Fund for Research and Development; and Business Finland. The Internet is also a good source of information on patents and other aspects of intellectual property rights. Expert assistance is available for assessing the development of inventions, their potential and related costs, and ways of approaching their commercialisation.