The Patenting Dilemma in Mexican Public Universities: the Case of ICAT-UNAM

Technologies and academic inventions are developed in the daily work of the faculties, centers and research institutes of public universities. Since not all of them have commercial potential we propose that they not necessarily must be subject to patenting, because they can be protected with other intellectual property figures. Although, in many cases the inventions have technical relevance and comply with the legal requirements, they do not have a market focus, therefore they are not susceptible to commercial exploitation, or even they are not oriented to the solution of a specific social problem. This work deals with the dilemma of which academic inventions must be subject to patent in a deep austerity environment. Patenting requires considerable time, financial and human resources and in a context that all type of resources in Mexican public universities are scarce and eventually are further reduced in times of deep austerity, special care must be taken with what is patented. Using the Case Study of an R&D public institute, in this article we develop a quick method for evaluating whether or not university academic inventions should be patented, using scientific, technological, commercial and financial relevance criteria once the invention complies with legal criteria.

Inventorship, Ownership, and Compensation

This chapter considers the law governing inventorship, ownership, and compensation. It first discusses inventorship in the UK, the US, and the European Patent Office. It then looks at the issue of ownership of the rights in an invention, covering common law provisions, contracts of employment, statute law in the UK, statute law in Germany, and academic inventions. This is followed by a discussion of compensation for employee-inventors in the UK, Germany, and other countries. The remainder of the chapter explains the right to apply for a patent and to be granted a patent, co-ownership of patents, disputes over the correct ownership of an invention, and the recordal and transfer of ownership.