Technology transfer: protection of intellectual property

1. At the start of a research project (particularly but not exclusively in application oriented research), it is advisable to regard the future results as objects deserving legal protection (hereinafter referred to as “Protection”) and follow-up commercialization.
2. Prior to any disclosure of results of a research project (publication, conferences, conference proceedings, popularization, negotiation with partners) it must be assessed whether the result should not first be protected; in case of negotiations with partners before and also after the start of protection it must also be assessed what the terms and conditions of the non-disclosure agreement will be (see also point 7). The Technology Transfer Office (TTO) can offer help in this process.
3. In case students participate in a given project as part of their theses and the results included in their theses are to become objects of legal protection or they have other commercial potential (and/or an agreement with a partner/provider will stipulate the need for confidentiality), it is necessary to apply for nondisclosure of the thesis in good time (see Directive A/S/961/6/2018 Defence and Storage of Theses with Deferred Publishing). When finalizing the thesis, the author must bear in mind the future publication of the abstract of the thesis, which is published also in case of undisclosed theses.
4. In case of students involved in a project it is commonly assumed that they have concluded an appropriate employment relationship with UCT Prague; by doing so they comply with the conditions stipulated for an “invention belonging to an enterprise” as set forth in the Act on Inventions[1]. If intellectual property is created in the course of an employment relationship that will be protected under the above mentioned Act, the student is obliged to comply with legal provisions also after the termination of this relationship or after the termination of their studies. Otherwise the student will act as co-owner/co-applicant in the application for invention/utility model; subsequently, co-ownership relationships must be regulated by an agreement.
5. Immediately after the creation of a result with application potential (i.e. creation in the course of the fulfilment of tasks arising from an employment relationship with UCT Prague) that could be legally protected, the employee at UCT Prague is legally obliged to duly disclose the result in accordance with the Directive on the Protection and Application of Intellectual Property Rights (Directive).
   1. The disclosure is carried out by completing an entry form in the vscht.cz database; the automatically generated Oznámení o vytvoření předmětu průmyslového vlastnictví (Invention Disclosure of an Object of Industrial Property Protection), signed by the representative of the inventors and the head of the department, will subsequently be delivered to TTO before any actions are taken to seek potential protection of the result.
   2. The disclosure shall be submitted before an application for invention/utility model is lodged also in case the protection of the result is initiated by another institution or company and the UCT employee is a co-inventor.
   3. The Vice-Rector for Research and Development has up to 3 months to decide whether UCT will claim rights to the result. If the protection of the result is coordinated by another institution, this deadline must be taken into account and actions must be taken sufficiently in advance.
6. In case an existing patent is maintained in force for a period of 5 years without any evident commercial use or without commercial potential in the upcoming 6 months, the Vice-Rector for Research and Development is entitled, based on an opinion of the Committee for the Use of Industrial Property Rights (hereinafter referred to as the Committee), to decide to terminate protection.
7. Any information that is subject to trade secret must not be disclosed to third persons (we should not forget that on the part of UCT this includes also, among other things, own know-how [pre-existing knowledge; know-how behind a legally protected result, etc.] used in the framework of cooperation). Prior to the start of cooperation with partners or prior to the start of negotiations on a joint project, it is advisable to conclude a non-disclosure agreement (NDA), the signing of which is arranged by TTO, which also has model NDAs available.
8. In the application of results of research in practice, employees can apply for support from TTO within the framework of commercialization projects. The decision on the provision of support to these projects from the Commercialization Fund shall be taken by the Rector or the Vice-Rector for Research and Development based on an opinion of the Committee.
9. In case of application of the result, inventors are entitled to remuneration from commercialization, which is paid out in the form of a share of net income from commercialization according to the Directive. It can also be paid out directly by a partner under contractual terms.
10. Employee works (e-learning courses, course books, electronic learning applications, databases or software) are subject to registration. Authors are obliged to register such employee works in the OBD database (regular modification of an employee work does not constitute reason for creating a new entry). Within the scope of their authority, heads of the relevant departments shall decide about registration of other employee works. UCT Prague exercises property rights to the employee work, while the author shall retain personal rights to the work.

In any case, contractual terms agreed with partners or providers of support must always be observed.

[1] Section 9 of Act No. 527/1990 Coll., Act on Inventions, Industrial Designs and Rationalisation Proposals