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How to improve the efficiency of invention and innovation [April 26 - World Intellectual Property Day]

Літак Кудашев-1 на території КПІ на тлі ангару, 1910 р.

In his article "Science and Innovation - the basis of the modernization of the state's economy," Vice President for Research the corresponding member of NASU M.Yu.Ilchenko offers the following criteria for evaluating the effectiveness of inventive and innovative activities in the university: the number of licenses sold to the original design, the resulting royalties from the introduction, the number of companies established for the implementation of innovations protected by patents and the like.

One cannot disagree with this. Therefore, I would like to express my thoughts on the matter, which can be called "10 steps".

Firstly, we should thoroughly implement the final selection of ideas for further commercialization. In particular, the above-mentioned criterion of "originality."

The original idea is understood as the idea of ​​commercializing the original (from the point of view of the developer) technological development. Here we are speaking not just about the original technological idea, which can be obtained on the basis of the results of scientific research, but the idea of ​​a business based on the new product obtained on the basis of innovation.

It is well known that the development of innovative products starts with finding ideas for new items. The most important sources of ideas, as a rule, there are laboratories of universities, academic institutions and research institutes, and individual inventors. In this case, it is the inventors to publicly present their development (eg the famous TV show "Shark Business" on the channel ICTV) and argue their uniqueness.

The selection of commercially important ideas of many is an extremely difficult and responsible task. At this stage it is necessary to overcome the myth that this is the best idea. But in reality sometimes it is not so, as it seems at first glance.

A classic example is the dropout curve of ideas, made by 3M company on the methodic of OXFORD INNOVAIONS (see. Fig.).

So, with 540 ideas, do the scientifically adequately after screening at the first stage there were remained only 92 ideas. In the second step, these 92 ideas were tested in terms of their competitiveness in the market. Quality of eight ideas was tested on the remaining test specimens, which were selected after only two ideas. In the future, these two ideas were tested by the market. However, the final results showed that the market was seen only one (!!!) idea (with 540 (!) Ideas comprehensively worked in the early screening).

The world practice shows that the cost of sorting out the ideas in the first stage is 3-5% of the total cost of the work on the screening and at the final - 60-70%. It follows that the selection of ideas in the first step should be carried out very carefully, because a small saving money at this stage will result in the loss of significant amounts in subsequent phases.

For the final selection of such ideas in the first phase it would be appropriate to attract more highly qualified members of the Expert Advisory Committee on Intellectual Property in the Department of Science and Innovation University, which includes honored inventor of the University and Ukraine (chairman of the commission - Ph.D., prof. Yu.M.Kuznetsov), as well as patent attorneys and other independent experts - highly qualified specialists in the sphere of production and management, including those who work outside the university.

Secondly, in order to interest potential investors and licensees in introducing innovations of the university scientists, it should be regularly organized round tables with participation of the authors of scientific developments and scientists on the profile of the customer as  in the university, as well as directly on site at the customer (licensee investor ) - the so-called "scientific Troopers." This is also necessary to ensure that the inventors of the University will not been "cooked in its own juice" and adapted their existing development  under the specific problems and industrial problems of the customer, and then promptly carried patenting their development, adapted to the requirements of the customer, for example, enterprises Group DF .

Third, the domestic post-Soviet experience shows that the introduction of fully finished innovative development, particularly in the enterprise of the potential customer (licensee investor), and to promote it on the market it was needed a quality post-management of this development. And here the human factor is an important factor. Therefore, it is suitable to attract in the group of authors the effective manager-curator (one or more) innovative design from among the representatives of the customer (licensee investor), representatives of institutions and the like. Because the personal interest in the introduction of authoring, especially at the enterprise and even legally, to co-author of the invention is an added incentive for material and moral compensation.

Fourth, it should be clearly understood the limitations of legal protection under the patent for utility model of Ukraine. After the issuance of the patent for utility model the national legislation does not provide for the procedure qualification examination for inventions. Therefore, the customer (licensee investor), as a rule, does not consider the existing utility model patent as a serious tool for eligibility of the proposed innovation. Using the patentability of the utility model in business projects is considered only in a pair of the same invention.

In addition, there is a proposal to consider separately and to distinguish between patents and patents for the so-called innovative inventions (inventions, which carry a "breakthrough" in their respective fields of science and technology) and bet it on innovative inventions.

So, there is no doubts about the need for a fundamental and comprehensive information search not only for utility models, but also for the many inventions as such (worldwide practice shows that the likelihood of a meaningful search is only 85% due to the existence of "white spots" in the information sources. My experience shows that this work should be carried out (and successfully and completely free holding) examination Ukrpatent, so the efficiency of obtaining patents is almost 100%. However, it also helps to fully and carefully drafted description of the invention, as when writing a solid scientific operation.

In addition, for the performance of innovation departments of the university, you can set the "weight ratio" number of patents for utility models of Ukraine ("paper patent") in the amount of licenses sold, for example, 1: 100 (or 1: 150 or 1: 200).

At the same time in order to reduce by 50% the cost of maintaining already received promising patents for utility models or even the invention without losing their actions one should use the relevant rules of the Ukrainian legislation. Indeed, the Law of Ukraine "On Protection of Rights to Inventions and Utility Models" states: "The patent owner has the right to ... in an institution for the official publication of a statement of willingness to provide to any person permission to use the patented invention (utility model). In this case, the annual fee for the maintenance of the patent is reduced by 50 percent from the year following the year of the publication of such a statement. " In Russia, this decrease is generally 100%, that is not necessary to pay for 10 (20) years.

But if the higher organizations (in particular, the Ministry of Education and Science, Youth and Sports of Ukraine) propose in the future to take into account the number of patents for utility models as one of the criteria for evaluating the effectiveness of innovation at the university, it is necessary to consider and suggest how to shift some of the costs of  sustaining patents for utility models to all stakeholders, including those units where they work (study) the authors (co-authors), utility models, or even the authors themselves (however this issue is debatable).

Fifth, one should compile more thoroughly innovative formula of the invention, without disclosing fully the essence of inventions developed, ie leaving unresolved element of know-how. In his article "Research universities as centers of innovation development of the country" ("KP" on February 3, 2011) The Rector of  NTUU KPI" Academician M.Z.Zgurovsky draws attention to the fact that the vast majority of Ukrainian patents written by the scientists  reveal the main the idea of ​​the invention, and are not able to protect it legally. Therefore, in this case one should  attract highly qualified specialists in intellectual property (patent attorneys). I will add: it is better not only humanitarian but also with technical education (better - with the two entities).

As a positive example, one can present the formula of an invention given by the author of these notes. It is related to the patent for an invention of Ukraine №29570. "Polymer insulators containing electrically insulating fiberglass rod and the insulating member, which are interconnected with n 'linking agent and ferrules, insulating element is a one-piece shell made of silicone rubber in the form of annular ribs and the housing having a conical recess in the lower part, which is characterized in that the sheath is made of silicone rubber, the active fillers comprising a high molecular weight silicone rubber or vulcanized silicone rubber two-component liquid based on components A and B in a ratio of 1: 1 (wt. h.). "

That is, in the independent claim the specific nature of the two components, which makes it versatile and suitable for protection during the patent term (20 years, of course, subject to regular payment of the annual fee for maintenance) for any two-component silicone rubber previously unknown components A and B is not disclosed.

Sixth, one should involve a not yet used in university patenting activity tool like patenting of computer programs, as well as technical means (software systems). Indeed, in the framework of the University it is performed a large number of the state budget topics, based on the use of algorithms and software and computer systems, which developers are just scholars of the university. Therefore, to increase the investment attractiveness of running development is appropriate to consider the possibility and expediency of patenting and put it into practice.

This is due to the fact that the patenting of programs as well as implementing their software and hardware within patent law (and not only as objects of copyright) in recent years has become widespread in many countries, including the EU and Russia.

As examples are the names of some Russian patents: Russian pioneer patent for invention №2145115 "group method of verification of computer codes with their corresponding original" published ZAO "To Software" IPC G06K9 / 00, 2000), "The development environment software "thin" client "," information processing apparatus, verification processing apparatus and control methods. "

Seventh, it is advisable to carry out not a separate but complex patenting of developments. That is, except for the classical scheme: a substance - a way - a device (for inventions / utility models), one can  add  industrial design (product design), if you intend to commercialize, and copyright (technological schemes, regulations, sketches, design documentation, technical conditions , program code, logo design, test reports, monographs, manuals, brochures, etc.), trade marks for goods and services (trademarks), as well as know-how of a technical nature.

Typically, scientists of the University as part of patentability development mainly performed using utility models (or invention). Other above mentioned instruments  have very limited use. In addition, it is advisable to complete the entire process of patenting implementation cycle of development, rather than its individual stages, for example, the whole plant (plant) for the manufacture of the product, production line, and the like. Because the cost of these complex patent is much higher than the cost of a patent for a separate operation (example: the cost of a patent on the wheel of the car compared to the cost of a patent on the car as a whole).

In this case, it would also be advisable periodically (eg, once a year) to give (reissue) catalog of innovation University and distribute at trade shows or to present to potential customers (licensees, investors). It is also appropriate to establish, for example, the Ukrainian Center for Innovation and Patent Information Services, Internet Exchange of Industrial Property of the University scientists with lighting the essence of innovation. At the same time there is a proposal to provide a catalog of mostly information on developments, protected by patents (or innovation patents) of Ukraine for the invention and not for utility models.

Eighth, there are proposals (also based on my own experience) to enhance the advertising and promotion of development of university scientists not only within the university competition, but also as part of the All-Ukrainian competition "Best Invention of the Year", which was held for the first year.

The site of the Ukrainian Center of Innovations and Patent Information Services ( has the appropriate requirements for patents submitted for Ukrainian competition (by the way, as the inventions and utility models).

Applicants for university inventors at National recognition should first consider the following:

  1.  Analysis of patents received prizes at the previous Ukrainian contests, shows that the advantage in the examination provided behalf of the Group of patents that are relevant to the integrated conservation development (See above. P.7), rather than individual methods or devices are protected by utility models ;
  2.  The need to provide documents on the implementation of (acts calculation) and the calculation of the economic efficiency of development of Patents;
  3.  If there is no licensing agreements on patents, it is necessary to actively participate in international exhibitions (the last figure is equal to the weight of 0.2, that is, participation in 5 international exhibitions equivalent to one franchised);
  4.   The need to advertise and provide (copies) reviews in the press about the developments that were shown on the above shows, that is to carry out a promotional campaign;
  5.  There is a separate competition categories at regional representation, age restrictions, etc., and it is necessary to use these features when submitting more applications from university;

6) For the contest there are accepted only  inventions or utility models, which does not cease to be effective at the time of announcement of the competition, so it's extremely relevant is the maintenance of the existing security documents.

Ninth, it is desirable to diversify the list of paid services on a contract basis in the field of intellectual property rights that may be provided to potential customers or business partners of the University to provide a comprehensive state protection of innovative scientific and technological developments both in Ukraine and in Russia and Belarus, with which Ukraine has signed the relevant agreement.

The list could include:

  • conduction of the comprehensive audit of the patent in enterprises to identify potential and new objects of intellectual property and law, and (OIPL) for which it is advisable to obtain state protection in Ukraine, Russia and Belarus, with the provision of customer report;
  • implementation of information retrieval for new OIPL enterprises in respect of which it is advisable to obtain state protection in Ukraine, Russia and Belarus, which relate to: inventions; utility models; marks for goods and services; industrial designs, copyrights;
  • improvements and state registration of  new OIPL in Ukraine, Russia and Belarus;
  • providing ongoing legal advice on intellectual property rights and for new OIVP enterprises in respect of which it is advisable to obtain state protection in Ukraine, Russia and Belarus;
  • identification, revision and state registration of potential know-how of technical, managerial and financial nature.

Tenth, it would be useful to introduce in the staff of the Department of Science and Innovation (or science park or other structures of the University) the posts and provide adequate funding for highly qualified consultants part-time with extensive practical experience in identifying, evaluating, making available to the state of the industry and the introduction of the acquisition comprehensive protection of innovations, in particular, distinguished inventors and patent attorneys of Ukraine, which provide ongoing advice on complex issues thereof, and, if necessary, carried out the so-called "brainstorming" or expert evaluation offers the most effective and innovative development (for example, above TV show "Shark Business" on the channel ICTV).

At the same time it is necessary to develop documents governing the work and responsibilities of such consultants, including in terms of the conditions of confidentiality of the information received.

In my opinion, the use of the whole complex of the above proposals will contribute to the number of license agreements on innovations. This, together with the corresponding persistent and painstaking managerial work, permanent field supervision and support (not automatically) will result in royalties from the introduction of development, innovation patents are protected, as well as an increase in the number of companies founded to implement them.

I invite colleagues to launch a discussion on this issue and express their thoughts in the newspaper.

A.E. Kolosov, Ph.D., honored inventor of NTUU "KPI", Patent Attorney


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