Intellectual Property from Research - Not Just Copyright!

Slides from a talk given to Exploit Technologies Pte Ltd in October 2013.

Abstract:

"Intellectual Property (IP) has become increasingly important within the research environment.

In this talk, patent attorney Dr Khoo Chong-Yee will provide an introduction to different IPs arising from research, including patents, trademarks, copyright and designs.

He will explore common themes and critical distinctions between these IPs, and will discuss the patenting of inventions arising from research in detail.”

Copyright 2008-2013 Chong-Yee Khoo. All rights reserved.

Transcript

1. Intellectual Property from Research:
   Not Just Copyright! Dr Khoo Chong Yee Cantab LLP (@CantabIP) ! Chartered and European Patent Attorney Registered Singapore Patent Agent European Trade Mark and Design Attorney Exploit Technologies Pte Ltd 23 October 2013
2. Contents • Introduction to IP • Principal IP Rights • Patents in Detail • Patentability: Novelty and Inventive Step • Strategies for Broad and Strong Patents • Priority Strategies
3. Introduction to Intellectual Property
4. What is Intellectual Property? • Scope of IP rights • Exclusion of rights
5. Intellectual Property • Prevents • copying • working • using a confusing sign • Transactions in rights
6. Features of IP Rights • Encourages innovation • Intellectual endeavour • Automatic rights vs formal registration
7. Principal IP Rights
8. © • Prevent copying • Expression of ideas • Subsistence on expression • No requirement for registration • Enforcement not straightforward Copyright
9. Registered Designs • 3D features • Application • Qualifications
10.  Trade Marks • Source of goods • Types of trade marks • Scope of registered rights • Requirements for registration
11. Patents • Protect inventions • Property right • Scope of rights • Registered vs unregistered rights • Enforcement
12. Patents in Detail
13. Patents as Business Tools
14. Knowledge Economy Industrial Labour Economy
15. Intangible Assets Tangible Assets S&P 500 Market Value Source: Brookings Institute, Ocean Tomo
16. C B D A Should I patent my invention? 1
17. C B D A Yes, it’ll look good on my CV Should I patent my invention? 1 Yes, but only if it makes money I can do it myself! No, it’s too expensive
18. C B D A Yes, it’ll look good on my CV Should I patent my invention? 1 Yes, but only if it makes money I can do it myself! No, it’s too expensive
19. Patentability
20. Patent Process File Patent Application Search and Examination Application published Patent Granted Patentable invention?
21. Patentability - Singapore • Section 13 Singapore Patents Act • “...a patentable invention is one that satisfies the following conditions: • (a) the invention is new; • (b) it involves an inventive step; and • (c) it is capable of industrial application”
22. Novelty
23. Novelty • New vs novel vs known • Disclosure • Types of novelty destroying disclosure
24. Confidentiality and Disclosures • Non-confidential disclosures • Disclosures under confidence • Tests for confidentiality
25. • “Enabling character” • Ability of skilled person • Example: sale of chemical Enablement and Disclosures
26. Cantab IP Novelty Jargon Buster *
27. Cantab IP Novelty Jargon Buster * * Trademark, copyright and everything else
28. known public domain prior art citation sufficiency priority date disclosure enablement secret confidential NDA available to the public sale demonstration abstract novel non-enabling disclosure disclosed new published not novel invention
29. Inventive Step
30. Inventive Step • “patentable invention...involves an inventive step” • No definition of “inventive step” in Act and Rules • Are differences between invention and prior art obvious? • No definition of “obvious”!
31. Windsurfer • United Kingdom • identify the inventive concept • identify what differences exist between the relevant prior art and the invention • decide, without knowledge of the invention, whether the differences constitute steps which would have been obvious to the skilled person
32. Obviousness Indicators • “mere collocation of integers”? • Logical step • Motivation in the art • Obvious to try vs reasonable expectation of success • Expectation of scucess
33. Inventive Step Indicators • Technical prejudice • Long felt need • Combination • Obvious solution
34. Other Issues
35. Other Issues • Excluded subject matter • Industrial applicability / utility • Written description • Sufficiency and enablement • Best mode • Added subject matter
36. Strategies for Obtaining Broad and Strong Patents
37. Patenting Timeline Patent legally effective: can sue infringers Provisional protection: damages claimable to here Legal Effects Priority date established 0M Actions 18M Application filed Application published Exam reports Responses Am endm ents Patent granted Published 3-5 years? Search report?
38. Typical Patent Specification • Field of the Invention • Technical Background (Problem) • Summary of the Invention • Brief Description of the Drawings • Detailed Description • Examples • Claims • Drawings
39. Drafting the Patent • Patent attorneys, a.k.a., patent agents • Scientists and engineers who have specialised in IP law • Legally and scientifically qualified • Rigorous examinations • Able to understand the invention, how it works and what distinguishes it from the prior art (broad claims)
40. Choosing a Patent Attorney • Choose your patent attorney carefully • Questions to ask: • Are they technically and scientifically qualified? Have they done scientific research? • Are they legally qualified in a relevant jurisdiction? Are they qualified by examination? • Have they drafted or prosecuted patents in the technology? How many? • Find out who is actually drafting the patent specification and meet them!
41. C B D A Who should I get to draft my patent specification? 2
42. C B D A A patent attorney Who should I get to draft my patent specification? 2 Someone on the Internet I can do it myself! A lawyer
43. C B D A A patent attorney Who should I get to draft my patent specification? 2 Someone on the Internet I can do it myself! A lawyer
44. Remember • A patent is an investment that lasts up to 20 years • In order for it to be worth anything, it should be drafted with care, skill and experience
45. Priority Strategies
46. Using Priority • Priority • Over competitors • Over prior art • “Stake a claim” • Secrecy • Advantages
47. Priority in Practice
48. 23 Oct 2013 P1 Priority in Practice
49. 23 Oct 2013 23 Oct 2012 Not novel P1 P2 Priority in Practice
50. 23 Oct 2013 23 Oct 2012 Not novel P1 P2 Priority in Practice Priority
51. 23 Oct 2013 23 Oct 2012 Not novel P1 P2 Priority in Practice Priority
52. Priority in Practice • First filing • Disclosure of application • “Cover page provisionals” • Identity of invention • Identity of owner • Abandonment
53. Summary • Patents are important business tools and add value to the company • They are crucial in biomedical research and development • The best enforcement strategy is to have a broad and strong patent
54. Summary • Priority and PCT applications allow costs to be deferred • Continually monitor patent progress and make sure the patenting strategy is aligned with commercial objectives • Abandon applications and patents if justified • Adopt a filing strategy that is consistent with your needs
55. Summary • Patents are crucial in research and development • The best enforcement strategy is to have a broad and strong patent • Treat patents as business tools • Choose a strategy that fits your business aims, the market and the nature of the invention
56. Questions? Cantab LLP VBox 881846 Singapore 919191 ! mail@cantab-ip.com www.cantab-ip.com ! Copyright 2008-2013 Khoo C-Y