Patents & Law
Below we have listed some of the most frequently asked questions to our patent engineer and legal counsel.
Questions around agreements and contracts
Who owns the idea?
According to the KTH IP policy, the main rule is that the inventor - the person who had the idea - owns the idea. That is the easy answer. Exceptions to this main rule can occur, for instance when the inventor has signed an agreement or is part of a research project that regulates the ownership of the research result. Because of the exceptions to the rule we strongly recommend that you go through the ownership of your idea with legal counsel.
How do I find out if I own my idea?
The easist way is to book a first meeting with KTH Innovation where you present your idea and what you need help with. Click here to book a first meeting!
What are the most common mistakes that researchers and students make regarding agreements?
Unfortunately we have met both researchers and students who have transfered the rights to their degree project, research results and research by signing contacts they didn't understand the implications of. Our message is to make sure you understand what you sign before you sign it. Is there something ambiguous? Ask. Is there a part of the agreement you don't understand? Ask. Did you not understand the explanation? Ask again. It is always possible to change an agreement before it's signed but it may be very difficult, if not impossible, to change something that you have already committed to. Make it a habit to always consult legal counsel before signing anything. If someone is rushing you to sign before you have had time to carefully review the contract it may be an indicator that you should take your time!
What should I consider regarding contracts and my degree project?
Sometimes students transfer the rights to the results of their degree project to the company, knowingly or unknowingly. This is unwise because not only may it lead to you as originator not having the rights to your findings, but it may also stop you from publishing your results in a paper. This means it is very important to clarify who owns the result and the right to publish it. Another aspect of this worth discussing is that if students transfer something to the company a reasonable fee should be payable. There is more on this in the KTH IP policy.
When and why do you need an agreement or contract?
During the innovation development project there are various useful contracts and agreements needed. Right at the beginning there is often a need for an agreement that stipulates rights, obligations and expections of the parties. A good contract is always tailored to the particular situation but you may be able to use templates. These shoud be seen as a framework for the agreement, but they should always be tailored, preferably with the help of legal counsel, for best results.
What agreements are crucial when taking an idea to the market?
Two particularly important agreements in the early stages of innovation development is a contract regulating ownership and right of use of the commercially interesting idea, and a confidentiality agreement - to be used then presenting the idea to a third party. A confidentiality agreement is particularly important if you are going to be able to get some form of intellectual property protection later on. KTH Innovation gives advice on all issues around agreements and contracts as they arise during ide development, both with in-house competence and an extensive network of external legal advisors.
What is the role of the legal counsel at KTH Innovation?
Our legal counsel helps researchers and students at KTH with all kinds of legal issues connected to commercialising new ideas. These issues vary depending on the idea and the focus of the idea owners but a majority of her time is spend on share holders agreements, confidentiality agreements and regulating ownership of IP.
Do I need to have any prior knowledge of agreements or IPR before contacting you?
Absolutely not. They are often difficult issues in complex situations so you are not expected to have any prior knowledge. But because we have all the support you need in-house, we'll tackle it together. Once again, book a meeting with us before you publish or sign any agreement just to make sure you continue to own your results and innovations.
Questions around IPR & patents
Intellectual Property Rights (IPR) - What are they?
Intellectual Property Rights is a term for various rights protecting intellectual and immaterial assets. Often the term IPR is used and the protection includes patents, trademarks, copyright and industrial design etc. Results and ideas can often be protected and the strategic handling of IPR increases the scope for successful commercialisation.
What is the KTH IP policy?
KTH has an IP policy that was created in 2014 and regulates the rights of researchers and students who have invented something or created an innovation.
What is the Professors' priviledge?
The law regarding employees' inventions (LAU 1949:345) regulates to what extent the employer can be entitled to claiming the right to the patentable inventions of an employee. The first paragraph states that "teachers at universities, colleges and other higher education institutions" are exempt from this law. In Sweden and at KTH teachers, researchers and phd students are exempt, and hence these groups own the rights to their own patentable inventions even when they occur during working hours.
What is the role of the patent engieer at KTH Innovation?
Our Patent Engineer supports researchers and students at KTH in protecting their inventions through patents. For the most part she is engaged in the patent application process and mainly helps researchers who want to patent a research result.
When is the best time to turn to KTH Innovation for support around IPR?
As early as possible is a good rule of thumb. The worst that can happen is that it's too early but then you'll gain a lot of important knowledge ecven before starting the patenting process. It is a lot worse to find out when it's too late.
How long does it take to patent something?
That is a tricky question because it's hard to generalise. Partly because each innovation and results i unique but also because it depends what you mean. It can take from a month up to several years to have a patent granted, but the timeline is very much subject to each patent process.
How do you file a patent application?
Before you file a patent application you need to prepare carefully. You investigate the possibility of patenting and make sure the critera is fullfilled. The next phase is to work on the actual patent application together with a patent lawyer. This usually also takes a few months. Finally there is the formal patenting process where the patent authority is involved and the time frame here is between one and several years.
Does it cost anything to file a patent application?
Yes. Both the patent application and the granted patent requires a yearly fee. This makes patenting potentially costly. KTH Innovation can help you find funding to patent your research result but it is also important to take this into account when drawing up a business model.