Who owns the discoveries and inventions made by scientists?

© 2021 EPFL Natalia Givannini

© 2021 EPFL Natalia Givannini

SUMMER SERIES: HOW SCIENCE WORKS Every year, scientists churn out over 4,000 journal articles on new discoveries and nearly 140 inventions. Even though discoveries and inventions are closely related, it would be a mistake to put them in the same basket: the intellectual property is handled in two very different ways.

First comes a passion for science; the drive to conduct research in its purest form. Next comes the excitement of finding something new, either unexpectedly or building on work done by peers. Then there’s the discovery and the publication of an article in a scientific journal - although discoveries may also give rise to inventions (and vice versa). In practice, the world of research consists of various groups that coexist, overlap and conflict at times, but that don’t disseminate their work in the same way. The underlying issue is one of intellectual property, which can be a minefield that scientists need to tread through very carefully.

Inventions belong to EPFL; discoveries to the scientist

EPFL’s mission is clear. Its scientists receive funding from the Swiss federal government to carry out research and apply their discoveries for the public good. The discoveries are published in scientific journals, a practice that began in the 17th century with the Journal des savants in Paris and Philosophical Transactions of the Royal Society in London. The scientists and their teams are the legal owners of their discoveries, and their ownership rights stay with them - all the way to the Nobel Prize in some cases.

Ambrogio Fasoli, EPFL’s Associate Vice President for Research, firmly believes that discoveries should be shared in journals as openly and transparently as possible, so that other scientists can pick the method apart and try to replicate the results using the same approach. "It’s very important for scientists to double-check their work - and have their co-authors double-check it too - before publication," says Fasoli. "But it must also be checked by peers, who look at whether the data were analyzed correctly and the conclusions drawn logically. Publishing a research paper is a form of quality control."

Fasoli, a plasma physicist, knows that conducting research sometimes entails developing new research tools that can potentially be patented. "It’s a back-and-forth between research and invention," he says. "The invention process can lead to the creation of new research tools, and vice versa. It’s a circular, not linear, process that drives both research and invention forward," he says.

Unlike discoveries, inventions belong to EPFL when they are made by EPFL employees. They are the original devices and gadgets that provide a solution to a specific problem and have an industrial application as well as an economic value. From an IP perspective, they are intangible assets owned by the School. Some inventions are patent-protected in view of their market potential. This is a practice that in Switzerland dates back to 1888 when the country’s first Patent Act was passed. Many patent applications were reviewed by none other than Albert Einstein, who worked as a patent examiner at the Swiss Federal Institute of Intellectual Property in Bern from 1902 to 1909.

Another difference is that, unlike discoveries, which are typically shared with the general public, inventions must be kept under wraps until the patent application is filed. Otherwise, the patent might never be granted. Andrea Crottini, the head of EPFL’s Technology Transfer Office (TTO), warns inventors to stem their natural tendency to talk about what they’re working on, especially at conferences and on social media, if it could lead to a patent. "I remember one researcher who was refused a patent because he’d posted about his work on Twitter. The patent examiner considered that to be disclosure - and there went the patent!" says Crottini. So the golden rule is: keep quiet about your invention until you file the patent application.

Filing a for patent: a race against time

There are other things to consider when filing for a patent. First of all, you have to make sure you really are the first across the finish line. The TTO helps researchers check whether any elements of their invention have already been published or patented. This is meticulous work that can take several weeks and must be done in complete confidentiality - otherwise, the patent could be refused.

Once a patent application has been filed, the inventor has between 12 and 30 months to show that the new device has real market potential, either because a company has demonstrated concrete interest in acquiring it or because the inventor creates a startup. "The cost of an initial patent application can range from CHF 5,000 to CHF 10,000. EPFL covers these costs for its employees - and we file around 90 patents each year, for a total investment of around half a million francs annually," says Crottini. And the School expects to make a return on its investment. The goal is to find a company or startup to license the technology to within two to five years. The proceeds from the license agreement are meant to pay back the cost of the patent application.

Although EPFL owns the patents, it often grants the inventors an exclusive license to use the technology; that is, the inventors are given the sole right to market their inventions. That prevents clever competitors from trying to copy the idea. EPFL earns royalties on the sale of the patented technology.

Sometimes inventions arise from joint R&D that is funded by a company. In that case, the School and the company reach an agreement on how the intellectual property will be financed and managed, and spell all that out in a research contract. The company usually retains the right to use the EPFL researcher’s invention or to license the technology for a negotiated fee. When

"The patent to prepare the future of my doctoral students"

Carlotta Guiducci, an associate professor at EPFL’s Laboratory of Life Sciences Electronics (CLSE), never thought she’d find herself filling out a patent application. She was perfectly happy in the world of research until she got a permanent professorship two years ago. "At that point I started asking myself what my goal was and what role I wanted to play in my profession. I decided it was time for me to orient my fundamental research more towards practical applications," she says. Today Guiducci wants to help the young scientists in her lab build a solid future, and works with them to apply for patents. "Many of my PhD students want to take their work further. Obtaining a patent will let them link up with industry, establish a foundation for their careers and sell a technology that may have a concrete use," she says.

One startup that recently came out of her lab is Rea, which has developed sensors that can be worn by pregnant women and detect when they are at risk of a preterm birth. The sensors, designed in association with the Lausanne University Hospital (CHUV), are embedded in a smart panty liner and can identify a specific biomarker that’s secreted by a protein when a preterm birth may be imminent. The development work is still ongoing, but a patent application has been filed and the research team has already won several startup awards and grants in Switzerland from Venture Kick, Innogrant, Innosuisse and Innobooster.

In another example, Mark Pauly and his team at EPFL’s Geometric Computing Laboratory (GCM) developed a method in 2012 for reproducing caustics, which are patterns of light rays reflected or refracted by a curved surface onto another surface. The team filed a patent application for their technology, created a startup called Rayform and negotiated an exclusive license from EPFL. "It was clear that we’d discovered something new and exciting, and that our method paved the way to applications that were never before possible," says Pauly. "Ours was obviously an inventive activity, which is important for obtaining a patent. And even though our main invention was a calculation method, which is hard to patent, its applications involve creating physical products."

Rayform formed early-stage partnerships with companies, which often require that the technology they use be patent-protected.


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