European Commission Vlada Republike Srbije The World Bank

Terminology

What is an invention?

An invention is a unique or novel device, method, composition or process. Some inventions can be patented. A patent legally protects the intellectual property rights and legally recognizes that a claimed invention is actually an invention. The rules and requirements for patenting an invention vary from country to country, and the process of obtaining a patent can often be expensive.

What is technology transfer?

Technology transfer is a term used to describe a formal transfer of rights to use and commercialize new discoveries and inventions resulting from scientific research to another party. R&D organizations typically transfer technology through protecting (using patents and copyrights) and then licensing these inventions. The major steps in this process include the disclosure of inventions, patenting the invention concurrent with publication of scientific research and licensing the rights to these inventions to the industry for commercial development.

What is meant by Applicant and what by Inventor?

Applicant is a public sector R&D institution that has the legal and economic rights (in full or partially) on the intellectual property in question. The Inventor, as the creator of the intellectual property, would ideally serve as the contact point and by that be responsible for providing the TTF with any information regarding that proposed project, in the format required by the TFF. The Inventor will also be responsible for project implementation on behalf of the Applicant, in case financial support under the TTF Program is awarded. The relationship between the Applicant and the Inventor is defined by the Inventor’s employment contract, the applicable Law on Scientific Research Activity and any other valid contract between these two parties that is in place.

What is Technology Readiness Level?

Technology Readiness Levels (TRL) is a method of estimating technology maturity of Critical Technology Elements of a program during the acquisition process. They are determined during a Technology Readiness Assessment that examines program concepts, technology requirements, and demonstrated technology capabilities. TRLs are based on a scale from 1 to 9 with 9 being the most mature technology. The use of TRLs enables consistent, uniform discussions of technical maturity across different types of technology.

Eligibility

Who can apply?

Eligible applicants for the TTF Program are public academic R&D organizations (i.e. public faculties and institutes).

Who is responsible for project evaluation?

Project evaluation is conducted by TTF team and external Commercialization Experts which are engaged to provide a better understanding of the proposed technology’s usability and market potential. For all projects that that are considered eligible for financial support Commercialization Experts will be involved to review the proposed project. Besides being engaged in evaluation process, the Commercialization Experts will also be engaged in supporting commercialization activities.

The Application

When is the submission deadline?

The call for submission of Applications is continuously open. Normally, Applicants will receive the decision on acceptability of their proposals within 30-45 days following the acceptance by the TTF of submitted Application documentation via the TTF Portal.

Will the TTF help me in preparation of my Application?

The TTF might offer advice regarding the technical preparation of the Application documentation, especially the Invention Disclosure Form (IDF). The TTF team will help all interested parties get a better understanding of the importance of writing a quality Invention Disclosure, and what its key elements are. In case you need any help in this matter, we also recommend that you contact your University TTO (Technology Transfer Office).

Please keep in mind that the TTF team does not provide any services regarding drafting or creating of any content of the Application.

Can I use the Invention Disclosure Form (IDF) already created for other purposes?

The TTF will consider any Application where there is firm evidence of locked intellectual property rights and market potential for the proposed technology/invention. However, the Applicants are obliged to use the Application templates created by TTF, which are shaped to fit the specific purposes of this Program. These template documents can be found at the TTF Portal and Innovation Fund website http://www.inovacionifond.rs/program-ttf/.

Is there anything I can do to help the commercialization process?

Yes, and this is actually one of the crucial points of the process. Successful commercialization of an invention is rarely possible without the direct involvement of the Inventor. At the beginning, the Inventor of the proposed technology will be responsible for filling out the necessary Application documentation. In the later stages, the Inventor will be responsible for actively implementing the commercialization strategy with the TTF team and will also work with the TTF in order to assess and reach possible commercialization partners from the Inventor’s own social and business circles.

How long does it take to complete a transaction and successfully commercialize intellectual property?

There is no single right answer, since different innovations can have radically different paths to the market. If the Inventor is knowledgeable and the proposed technology is of high quality, the market potential is present and there are readily interested clients, the entire process could be finished within a few months.

Usually it takes between 6-24 months to adequately prepare a project to be commercially ready and presented to potential clients on the market.

What happens with my invention in case a transaction cannot be made?

In case the intellectual property of an Application which was accepted by the TTF hasn’t been commercialized during the duration of the TTF program, the Applicant and the Inventor can freely proceed with commercialization activities using their own capacities. There are no follow-up obligations of any kind to the TTF.

What is the cost of the TTF service?

All TTF services related to commercialization of intellectual property which are provided to public sector R&D organizations are free of charge. However, in case a project becomes successfully commercialized and generates more than EUR 25.000 of revenue, the TTF may claim back costs related to IP protection, which the TTF had previously paid in favour of the Applicant.

Is it possible to submit more than one project by the same Applicant?

Yes, it is possible to submit more projects by one Applicant.

How can I determine the Technology Readiness Level (TRL) of my project?

TRL is a fairly common scale used to determine the stage of a technology’s development. Before you can submit a project, you will be required to conduct a TRL self-assessment on the TTF Portal and determine the estimated current level of development of your proposed technology. The TTF has provided explanation on the values of the TRL scale, which can be found on the TTF Portal in the section “Application documents”.

In case you have any doubts or questions regarding the TRL self-assessment, feel free to contact the TTF team or your University’s TTO.

Is it possible to provide the necessary documentation in hard copy, or in person?

No. All documents regarding your Application must be submitted in electronic form through the TTF Portal.

Can an already uploaded document on the Portal be changed, i.e. can new/improved versions of an already uploaded document be subsequently provided?

A document that has already been uploaded can be freely changed as many times as required before a project has been officially submitted. When the Applicant has uploaded the final version of all the required Application documents, it is necessary to click the “Submit” button in order for the Application to be sent and be valid. Once an Application has been submitted, no changes to the documentation can be made, unless TTF formally allows it.

Financing

Can I apply for and receive direct financial support for my research?

No. The TTF does not finance research. Applicants can apply for Commercialization Support service, which is the primary service of the TTF. If a project has been approved for Commercialization Support service, financial support may be also granted by the TTF and only in cases where it has been assessed by the TTF and the Commercialization Experts that the proposed project could benefit from “last mile R&D” or IP protection in order to improve its commercialization potential.

Can I ask for financial support for patenting my invention?

Patenting and patent-related costs are an eligible expense category for projects which have been approved to receive Commercialization Support within the TTF Program and have been subsequently assessed to also be eligible for receiving financial support. The TTF works with the IP law firm that will provide IP-related services to the Awardees of the TTF.

In case I receive financial support, do I need to comply with public procurement rules and procedures?

No. The Awardees are obliged to use procurement procedures described in the TTF Guidelines for Applicants, which are based on commercial practice procedures of the World Bank.

Intellectual Property (IP)

What is Intellectual Property?

Intellectual Property comprises literary, artistic and scientific works; performances of performing artists, phonograms and broadcasts; inventions in all fields of human endeavor; scientific discoveries; industrial designs; trademarks, service marks and commercial names and designations; protection against unfair competition; and “all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.

What are Intellectual Property Rights (IPR)?

Intellectual property rights refers to creations of the intellect for which a monopoly is assigned to designated owners by law. IPRs are the protections granted to the creators of IP, and include trademarks, copyright, patents, industrial design rights, and in some jurisdictions trade secrets. Artistic works including music and literature, as well as discoveries, inventions, words, phrases, symbols, and designs can all be protected as intellectual property.

What is Prior Art or State of the Art

Prior Art or the State of the Art comprises everything that is made available to the public by means of written or oral description, by use, or in any other way, before the date of filing a patent application.

Are Inventors able to publish the results of their research and still protect the commercial value of the intellectual property (IP)?

No. If the research results are published and the invention is disclosed to the public it becomes part of the “Prior Art”. To be protected by a patent an invention must be novel at the date of filing patent application. If the invention is already part of the prior art, it will not satisfy the novelty criteria for patent protection. After filing a patent application the inventor is free to publish his/her research results without endangering the novelty of the invention.

Will the Inventor be able to share materials, research tools or IP with others to further their research?

Yes. However, it is imperative to document all items that are to be shared with others and specify the conditions of use. It may also be necessary to have a Non-Disclosure Agreement or Material Transfer Agreement in place in order to protect the research results or IP rights. A specific service line at the TTF, such as materials testing, will be used to accommodate for this in addition to standard commercialization services.

Does the TTF own any IP of the invention?

No. At no point will the Innovation Fund or the TTF own or claim any future ownership of IP coming from Applicants.

In Serbia, state-funded research results and the IP thereof are the property of the employer (e.g. faculty, institute, university) and the employer thus has the right to protect said IP. An exception from this rule are the creative works that fall under the umbrella of copyrights and related rights. For those creative works, the employer holds the economic rights for the first 5 years from the day of creation. After 5 years, all economic and moral rights are held by the creator. However, when software is in question all economic rights belong to the employer.

What is the value/revenue distribution in case of successful commercialization of an invention?

Commercialization of IP through the TTF Program will be carried out by involving all parties that have economic interest in the matter. Normally, the employer of the Inventor/researcher is the university/faculty/institute which holds the economic rights (assignee), while the Inventor holds moral rights (i.e. is listed as the inventor in the patent). In addition to the moral rights, the Inventor has the right to at least 50% of the profits from the commercialization financial proceeds in case when the research that led to the invention was funded by state funds.

IP owners may transfer their IP to a third party by licensing and assignment, and this is one of the processes which the TTF will facilitate within the scope of this program.