Introduction to Intellectual Property and Technology Transfer
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1 Introduction to Intellectual Property and Technology Transfer Michelle Mulder President, SARIMA Manager: IP & Business Development, MRC ANDI Centre of Excellence for IP Management in Health TT Workshop, Mauritius, July 2012
2 Knowledge Management & Technology Transfer
3 What is Knowledge Management? Knowledge management (KM) is the collection of processes that govern the creation, dissemination, and utilization of knowledge.
4 What is Technology Transfer? Technology Transfer is a subset of knowledge management In the research institution context Technology Transfer is the process of transferring research results / intellectual property for implementation in industry and society
5 Why Do Technology Transfer? Consider this for example Mission of the Medical Research Council: To improve the nation's health and quality of life through promoting and conducting relevant and responsive health research Is our research really having any significant societal and economic impact?
6 The New Research Era We have entered a new era in publicly funded research. For example, in South Africa there is: New IP legislation and a drive towards innovation by government Economic need for SA to become an innovative, developing country Social need for SA to solve its problems Greater accountability for spending of public funds Greater emphasis on transferring research results to industry and society....in line with international norms
7 Why Commercialise Research? Optimization of research value - who benefits from publications alone? Contribution to social and economic development - accountability for funds spent and return on investment Potential financial benefits to inventors and their institutions Increase the local and international profile of the research, researcher, and institution Potential for access to new technologies and capabilities, additional research grants etc. Exciting challenge!
8 What is Intellectual Property? Intellectual Property is a type of property that results from the creations of the human mind (intellect) Property - can be owned, bought, sold, or licensed Tangible: biological organisms, plant varieties, computer software, engineering drawings Intangible: patents, copyrights, ideas, tacit knowledge
9 Importance of IP in Tech Transfer Intellectual Property Rights are fundamental to technology transfer whether protected or not, tangible or intangible. IP is what is transferred / traded Protected IP has value and is usually a prerequisite for industry partners IP Management is therefore a vital aspect of tech transfer
10 Importance of IP in Tech Transfer Intellectual Property Management and Technology Transfer are sometimes divided into separate functions / departments; however, they are strongly inter-related The IP Management Strategy - whether, what, how and where to protect the IP must be informed by the commercial feasibility and commercialisation plan
11 Basic Introduction to Intellectual Property 1
12 Outline Intellectual Property; Patents; Industrial Designs; Trade Marks; Copyright; Plant Breeders Rights; Trade secrets; and Anti-counterfeiting. 2
13 Outline Intellectual Property; Patents; Industrial Designs; Trade Marks; Copyright; Plant Breeders Rights; Trade secrets; and Anti-counterfeiting. 3
14 Intellectual Property and the associated rights Any creation of the mind ; For example an invention, a new plant variety, an industrial or aesthetic design or a literary work; Statutory rights which enforce the creation are the intellectual property rights; For example an invention will find protection in the form of a patent. 4
15 Outline Intellectual Property; Patents; Industrial Designs; Trade Marks; Copyright; Plant Breeders Rights; Trade secrets; and Anti-counterfeiting. 5
16 Patents What: Protects an invention; How: Specification includes claims; Claims define the scope of protection; How long: Monopoly for 20 years once granted; and Rights conferred: Jurisdictional right to control the: Make, use and exercise the invention; Grant rights to third parties to do the same. 6
17 Patents Invention requirements for registration: New; Inventive; and Capable of being applied in trade, industry or agriculture. Consider: a new pharmaceutical. 7
18 Patenting process: National Phase Application for example USA Granted Patent- USA Patents Validate German Provisional Patent Application PCT Application National Phase Application for example EPO National Phase Application for example Japan Granted Patent- EPO Granted Patent- Japan Validate Italy Validate - Spain Complete Application Granted Patent Priority date 12 Months Paris Convention Priority 18 Months Dependent on examination, typically 3 to 7 years Validate within 3 months of EPO grant 8
19 Outline Intellectual Property; Patents; Industrial Designs; Trade Marks; Copyright; Plant Breeders Rights; Trade secrets; and Anti-counterfeiting. 9
20 Industrial designs What: Protects the outward appearance of an object i.e. the ornamental or aesthetic appearance; How: Statements define the scope of protection shape and/or ornamentation and/or pattern and/or configuration; How long: Variable; and Rights conferred: Jurisdictional right to control the: Manner of use; Grant rights to third parties to do the same. 10
21 Industrial designs Design requirements for registration: New (6 month release period). Value dependent on product. 11
22 Outline Intellectual Property; Patents; Industrial Designs; Trade Marks; Copyright; Plant Breeders Rights; Trade secrets; and Anti-counterfeiting. 12
23 Trade Marks What: Words or marks that distinguish goods and services How: Words, letters or numerals - Drawings, symbols, 3-D shapes, audible signs or oral distinguishing features; How long: Upon renewal indefinitely; and Rights conferred: Jurisdictional exclusive right use the mark to identify goods and services and stop others in respect of the same or similar mark. 13
24 Trade Marks Trade mark requirements for registration: Capable of distinguishing intrinsically or by reason of prior use. 14
25 Outline Intellectual Property; Patents; Industrial Designs; Trade Marks; Copyright; Plant Breeders Rights; Trade secrets; and Anti-counterfeiting. 15
26 Copyright What: Rights to creators for literary and artistic works including novels, poems, computer programs; How: Typically subsists automatically some forms may qualify for registration (typically cinematograph films); How long: Upon renewal indefinitely; and Rights conferred: Jurisdictional exclusive right use the work or authorise others to use the work. 16
27 Copyright Work requirements for protection: Original; Material form (created and fixed). 17
28 Outline Intellectual Property; Patents; Industrial Designs; Trade Marks; Copyright; Plant Breeders Rights; Trade secrets; and Anti-counterfeiting. 18
29 Plant Breeders Rights What: New plant varieties; How: Application form plus completed technical questionnaire and plant material; and How long: 25 years for vines and trees and 20 years in all other cases; Rights conferred: Jurisdictional exclusive right to control who else can use the propagating material (exception for example subsistence farming). 19
30 Plant Breeders Rights Plant Breeders Rights requirements for protection: New; Uniform; Distinct; and Stable. 20
31 Outline Intellectual Property; Patents; Industrial Designs; Trade Marks; Copyright; Plant Breeders Rights; Trade secrets; and Anti-counterfeiting. 21
32 Trade secrets What: Confidential data, information or compilations; How: Secrecy must be retained to secure value; How long: Indefinitely unless disclosed; Rights conferred: Not capable of registration but confers a competitive advantage thus is protected through confidentiality agreements. 22
33 Outline Intellectual Property; Patents; Industrial Designs; Trade Marks; Copyright; Plant Breeders Rights; Trade secrets; and Anti-counterfeiting. 23
34 Anti-counterfeiting What: Imitations of the real article; How: Manufactured locally or imported Protection: Trade mark infringement; Copyright infringement 24
35 25 Conclusion
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