Module 3 - IP management from idea to impact – basic rules and recommendations

The most important point to highlight is that when it comes to IP management, all steps in the research project are connected. What you do in one part of the research process influences what you can and will do in other parts and there are lots of dependencies.

 

 

Here are a few key rules and recommendations that apply to all stages of the research process and some specific situations that require particular attention to potential IP issues:

 

1. Agreements and contracts!

Agreements and contracts are the practical tools you can use to control and manage IP in the research. Correct agreements in all steps of the process is important to enable smooth collaborations and to make impact and innovation happen.

Examples of common agreements are:

• Research collaboration agreements
• Sponsored research agreements
• Funding agreements
• Employment agreements
• Confidentiality agreements
• Material transfer agreements
• License agreements
• IP transfer agreements
• Shareholders agreements

Agreements should be made early on in the process, when you are still friends… And if agreements are changed or amended during the course of the research, which may very well happen since things change along the way, those changes should always be clearly documented in writing to avoid any later misunderstandings.

Finally, make sure that the agreements are signed by all parties! You'd be surprised to know how many agreements that are discussed but then in the end never formally signed...

 

2. Agreements when you get external funding or use material from others 

 

 

Clear agreements are always important, but it is particularly important when you get external funding for your research or when you get things from others that you use in your research. These are situations where external parties have clear interests in your research (whether it is explicitly communicated or not) and for that reason it is very important for all involved parties that you know the "rules of the game" when you start playing. 

These agreement are made early on in the research process and can have significant impact on what you can do with the results, so it is worth paying attention to getting them right.

Let's hear more about this in this conversation with Malin Koch and Therese Viksten who are both legal counsels at KTH.

 

 

3. Controlling your possibilities for future research and potential to make impact

 

 

Spending some time thinking about what you want to do with your research results even before you start the actual research is always time well spent. Many decisions further down the line will depend on what goals and ambitions you have for your research and the results that come out of it, and the sooner you have a clear idea of this the better it is for your chances of reaching good agreements that fit with your future plans.

You'll hear more about this in this discussion with Malin and Therese.

 

 

3.1 From theory to practice - Examples of IP management in practice at KTH - Agreements in the research process

What we have talked about so far in this section are recommendations and best practices for how to manage your results and IP. In the real world there can be situations that are less clear-cut, and for that reason we want to share some examples of how researchers at KTH are dealing with IP management issues today and the insights and experiences they have gathered.

Here is professor Amelie Eriksson Karlström who talks about her experience of agreements and contracts in the research process.

 

 

4. Keep track of who has contributed with what and in what context/project

 

 

Ideas and research results don't come into existence by themselves, it's always people who come up with ideas and create results and IP. Since the general rule is that you own what you create (unless there's a contract saying otherwise) and you control what you own, it is very important to know who has contributed with what in your research results.

This is particularly important in academic research projects since it is very common that several people are involved and projects may run over a long time.

In this video Therese and Malin discuss some key things to consider related to the creation process of a research result and keeping track of who has done what.

 

 

4.1 From theory to practice - Examples of IP management in practice at KTH - Keeping track of who's done what in a research project

Since keeping track of who's done what is such an integral part of the research work, we want to share some examples of how researchers at KTH are dealing with this today and the insights and experiences they have gathered.

Let's meet professor Amelie Eriksson Karlström again and talk about her experience of documenting individual contributions in the research.

 

 

5. You can both publish and protect your results, it’s all a matter of timing

 

 

As we explained earlier, protecting IP with some of the Intellectual Property Rights, most notably patents, requires that you haven't published the results before filing for the protection due to the novelty criterion. However, publishing your results is pretty much mandatory when you do academic research, so how do you deal with this situation?

Rest assured, this is a situation that is possible to handle, and it's happening all the time, as we talk about in this video.

 

One thing to highlight is that when we talk about sensitive information from a patenting point of view, we refer to detailed descriptions of your invention (process, method, device, etc.) and how it works. It is typically not a problem to publish or talk about the benefits of your technology, high level descriptions, etc. without actually describing the specific solution, it's the detailed descriptions of the technology that are problematic from a patentability point of view.   

 

5.1 From theory to practice - Examples of IP management in practice at KTH - Publishing and patenting your results

Once again it's easy to give recommendations on how to manage the situation where you want to both publish and patent your results - first patent, then publish - but the tricky thing is how you do this in practice in your research work.   

In this short video, professor Amelie Eriksson Karlström shares her experiences of both publishing and patenting results, and the questions that can come up both within your research group and in discussions with external collaboration partners.

 

 

Module 3 - Key take-aways

The key take-away from all of this is that IP management ultimately is about concrete, and many times simple, actions that you as a researcher take in your day-to-day work. Some situations, like the ones mentioned here, are particularly important to pay attention to, and to help you make the right decisions and take the right actions you have very knowledgeable support from the Research Support Office for questions relating to research collaborations and research agreement where KTH is the party and KTH Innovation for questions relating to how you can commercialize and create impact from your research results and agreements relating to your IP.

Most of the things mentioned here are also formalized in the KTH IP Guidelines (In English here Download English here, in Swedish here Download Swedish here), which can be good to read.

 

Before we move to the next module, let's spend a few minutes reflecting on how you handle these questions in your research by answering some questions.