RMI4AC Regional Workshop, 11 th to 13 th October, Gaborone AN INTRODUCTION TO IP & IP MANAGEMENT Alphonsus Neba
OBJECTIVES To give participants a better understanding of Intellectual Property, its Protection and Management
What is Intellectual Property(IP)? Intellectual Property (IP) comprises * Inventions and their protection; e.g. patents * Works and their protection; e.g. copyright *Trade names, trademarks, service marks, *Secrets and their protection * Know-how
Copyrights 2002 Database Corporation P 2002 Columbia Records Forms of Intellectual Property Protections Trademarks SM Registered U.S. Patent and Trademark Office Reg. U.S. Pat. & TM Off Trade Secrets ABC Corp. CONFIDENTIAL COPY : Use Pursuant to ABC Trade Secret Policy Maskworks M IBM Patents Patent Pending; Patent 6,900,001; Clarke, 2006
Patents Protection for Inventors A Patent is a Negative Right A patent is a government issued deed which confers upon the patentee(s) (i.e. the inventor who has been granted a patent) the right to exclude others from the invention
Patents A PATENT is a legal right to exclude others from making, using, selling, or offering to sell a patented invention A patent is not a grant of an affirmative right to make, use, or sell the invention Three types of patents: Design Patents Utility patents (includes provisional patents) Plant patents
Design Patents For a new, original, and ornamental design for an article of manufacture, in other words, for its appearance Term: 14 years Protects only the ornamental appearance of the article and not its structure or function Appearance is not ornamental if dictated by function Infringement test is whether an accused design is confusingly similar to the patented design
Plant Patents Protects new and distinct plant varieties of asexually reproducing plants Term: 14 years from effective filing date Uses photographs of plant to identify and protect the invention Distinctiveness determined by characteristics such as habitat, color, flavor, odor
Utility Patents The most common type of patent Protects utilitarian structure, function, method, or composition Term: 20 years from effective filing date Utility Patents: are issued for... any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. Also referred to as low level patents
Why Should I even apply for a Patent?
Benefits of Patents
Factors to Consider Before Pursuing a Patent
First Step in a Protection Strategy: The Invention Disclosure Filed with institutional intellectual property office e.g. ORD at UB Evidence for date of invention or creation and names of inventors or creators Identifies funding source Provides information for choosing a protection approach (or whether to protect) A disclosure assumes that intellectual property exists, and has value (in fact, these assumptions are often unwarranted)
Publication Vs. Patent Protection In a global economy, world - wide patent rights can be essential for commercial success. World-wide patent rights will be lost due to public disclosure of an invention before the patent APPLICATION is filed. What constitutes public disclosure? ***Publication of a research paper ***A speech or a talk at a public or open meeting ***A poster presentation ***Collaborative research after a discovery ***Description of invention in published trade journal, magazine, internet website, etc. *** Correspondence describing the invention to vendors without an obligation of confidentiality from a Non-Disclosure Agreement If you think you have a patentable invention - THINK! Delay public disclosure. Let your institutional intellectual property or technology transfer coordinator evaluate. If possible, remove disclosing material before a public disclosure.
Disclosing and Protecting WORST BETTER BEST 1. Invent 2. Publish or talk 3. File invention disclosure 4. File for patent or otherwise protect 1. Invent 2. File invention disclosure 3. Publish or talk 4. File for patent or otherwise protect 1. Invent 2. File invention disclosure 3. File for patent or otherwise protect 4. Publish or talk Day et al., 2002
Obtaining Patents SPECIFIC CRITERIA DEFINED BY LAW Novelty, Non-obviousness, Utility BURDEN OF PROOF ON THE APPLICANT Applicant must prove in the examination that the invention meets the criteria CAREFUL EXAMINATION Technically qualified examiners Review of the prior art May take two to five years EVERY COUNTRY HAS A DIFFERENT SYSTEM Patents are granted by national offices One invention may differ in coverage from country to country Patent cooperation Treaty and the European Patent Office
Criteria for Patentability NEW or NOVELTY no prior art - a novel invention has not been publicly disclosed has not been made or sold in commerce A person is not entitled to a patent if before his invention of it, the invention was known or used by others or patented or described in a printed publication anywhere
Criteria for Patentability Non Obvious Not Obvious to a person skilled the art No Prior art which would suggest the invention Obviousness A patent may not be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains Prior art comprises information publicly available prior to the filing date of your patent application. Examples: patents, publications, presentations, working example used in commerce, and public demonstrations.
What is Obviousness Prior art elements are combined or substituted according to known methods to yield predictable results Known techniques are used to improve similar devices, methods, or products in the same way or which yields predictable results The claimed invention was obvious to try, as by choosing from a finite number of identified, predictable solutions with a reasonable expectation of success Some teaching, suggestion, or motivation in the prior art would have led one of ordinary skill in the art to modify a prior art reference or combine prior art reference teachings
Criteria for Patentability Usefulness (Utility) Has purpose The invention must have utility, that is, it must have a practical application. Without utility, there would be no contribution to society, a foundational requirement of the patent system
The Invention and Patenting the Invention Invention requires two elements - conception and reduction to practice Who is an Inventor? Who is Owner? The Importance of the Date of Invention The Patenting Process The Patent Application After Filing the Patent Application Duty of Disclosure Foreign Patents Enforcement of the Patent
Who is an Inventor? An invention is conceived when it is sufficiently formed in the mind of the inventor so that he or she can describe, to those skilled in the art, how to make and use the invention If two or more each shared in the ideas forming the invention, they are joint inventors and the patent issues to them jointly An invention is completed when it is reduced to practice by either making a working model or filing a patent application
Who is the Owner? The owner is the inventor unless the inventor is obligated to assign his/her rights in the patent to his employer or client Joint inventorship will result in co-ownership unless all the inventors have an obligation to assign his/her ownership rights to the same employer or client If the terms of employment are within a joint venture or joint development agreement, more than one institution may co-own the patent with undivided interests Advanced planning for collaborative inventions is critical!
What is Patentable? May include anything under the sun made by man... Process a method of doing something (e.g., manufacturing steel, surgical or medical procedures) Machine combination of mechanical elements Article of manufacture anything which has been manufactured Composition of matter a new chemical, a new formulation of elements, a genetic construct Or any new and useful improvement thereof.
What is NOT Patentable? A mere idea (e.g. law of nature or principle) without application Pure mathematical algorithms (e.g., E = MC2) An inoperable device (e.g., perpetual motion machine) An obvious improvement of an old device Natural plants Anything not USEFUL, NOVEL and NON-OBVIOUS (e.g. perpetual motion machine) Ideas, formulas, and principles of nature are not patentable.
Some Patentability Issues What is patentable matter differs from country to country. for example: Methods of treat- U.S. Europe ment or therapy Patentable Not Patentable Inventions from collaborative research Not Patentable Patentable [sometimes] What is patentable matter changes from time to time Lesson: You have to work with your TTO.
Computer Programs Computer Programs Computer programs applied to producing useful results may be patentable. Business Methods May be patentable, If useful, novel, and non-obvious
Patenting Process Invention Disclosure Prior Art Search and Analysis Draft and File Application No legal protection is afforded until the patent actually issues patent pending Office Action(s) (i.e., Examination Reports) Amendment(s) and Response(s) by Applicant Allowance and Issuance Maintenance Fees
Provisional Patent Application Allows inventor to obtain early filing date with few formalities and low filing fee Is not examined and cannot mature into a patent Automatically abandoned one year after filing A non-provisional patent application can rely on the provisional application for priority if filed within one year of the provisional application filing Does not affect the 20-year term of a patent issuing from a related non-provisional application
Parts of a Patent Application Background of the Invention - Known Problems Summary of the Invention - Solution to the Problems Brief Description of the Drawings Detailed Description of the Invention - written description of an invention and of the manner of making and using it Claims - patent protection is given only to that which is claimed; defines scope of the patent Abstract Drawings
Enforcement of the Patent Detection of infringement Strength of the patent (Is its validity questionable?) Scope of the patent (Strength of the infringement case? Can a competitor easily design around the patent?) Willingness of the patent owner to enforce and pay litigation costs
Copyrights The exclusive right granted by the government to the owner of an original work of authorship to reproduce, distribute, perform, prepare derivative works, and/or display the copyright work Term for individual is life plus 50 years; for organizations, publication plus 75 years (or creation plus 100 years) Covers the expression of an idea in tangible form but not the idea itself Traditionally the vehicle for mass market software protection, print material, and recorded materials (tapes, records, film) Acquisition upon creation; registration relatively easy Automatically protected in many foreign countries Issue: work for hire versus original creation
Protects Expression of Idea, Not the Underlying Idea, Method or System Copyright Protection Exists From the Time the Work is Created in a FIXED FORM Copyright can Protect Scientific Articles, Books, Software Code, Manuals, Web Pages, Graphic Artwork, Multi-Media Works, Compilation of Facts (Databases), Online Works, etc Legislation: Various National Legislations in different countries e.g. *Industrial Property Act of 1996 (Botswana) *Copyright and Neigbouring Rights act of 2005 International Treaties/Conventions (e.g., Berne Convention) Provide Some International Rights
Copyrights Registration Not Required for Copyright Protection, but is Required to Sue for Infringement Both Civil and Criminal Infringement Possible Remedies Include: **Statutory Damages **Actual Damages and Other Infringer s Profits **Attorney s Fees
Copyrights Author of Work Immediately Owns the Copyright Upon Creation (Fixation) **EXCEPTION: Work Made for Hire Owned by Employer if: Works by an Employee within Scope of Employment; or Work in Specific Enumerated Categories and Specially Commissioned and Expressly Agreed to in Writing that Work is Work Made for Hire Additional Explicit Language may be required in Agreement for Software Copyright Ownership to Fall Within Work Made for Hire Exception Most Copyright laws will spell out exceptions
Trademarks A name or logo which is affixed to goods or services placed in commerce and indicates the source or origin and quality of the goods or services Term is indefinite (while still in use) Easily protected via registration, and easily obtained indefinitely May be worth more than the invention or creation (e.g. Gatorade) Trademarks can be registered within a state, or nationally. Must be registered nation by nation.
Trademarks Types of Marks 1. Fanciful or Arbitrary Xerox Copiers, Apple Computers 2. Suggestive Coppertone (suntan oil), Whirlpool (washers), Rollerblade (in-line skates), white-out (correction fluid) 3. Descriptive Fish Fri (fried fish) - mark must have secondary meaning 4. Generic lose right when this occurs, e.g., aspirin
Trade Secrets Derives economic value from not being known to persons who can obtain economic value from its disclosure or use Need explicit efforts to maintain secrecy, internal and external Incompatible long-term approach for universities, because of publishing norms (possible exception is know-how ) Trade secrets can be commercialized, via license or other approaches Used when other protection approach can lead to inventing around
Trade Secrets No time limit on protection provided it stays secret Simple to Implement People with access informed and sign trade secret agreement Mark Trade Secret information as Trade Secret Implement procedures to safeguard Trade Secret information Accidental and/or Illegal Disclosure Can End Trade Secret Protection Independent (legal) Development of Trade Secret by Third Party is Permitted Major Difference From Patents
Trade Secrets Illegal Disclosures can be Civilly and Criminally Prosecuted Types of Trade Secrets: **Technical, Non-technical or Financial Data **Formula **Technique **Process **Method Examples: Coca Cola Formula Software Code Client Lists
Why Software is Problematic Software as intellectual property fits into one of two difficult categories: Software as a writing traditionally copyright-protected Software as part of a machine traditionally patentprotected Since software tends to be a mixture, it causes problems for the legal system
Summary Grifith & King, 2004
Intellectual Property Management Recognizing IP as an Institutional Asset & Developing a Strategy or Plan to manage the asset: Acquire & leverage the most value from existing & also for potential IP Assets Define value as assessed in context of business goals Drafting, filing, prosecution and maintenance costs associated with acquiring and managing IP Return on Investment for any money spent on IP by the institution Consider all types of IP An IP Audit - a good start! Multiple types of IP, which are all different legal tools designed for different purposes Important Questions to Ask Is protection as patent, trademark, copyright, trade secret, industrial design appropriate?
Intellectual Property Management What will chosen type of protection help me accomplish? What am I trying to accomplish and will IP help me do this? Policies on Acquisition, Exploitation, Monitoring, Enforcement of IP Need to develop policies to address following issues: Acquisition: Need to manage chain of title to institution-developed IP; Employee & independent contractor agreements should clearly spell out IP ownership issues Take stock and create an inventory list of all institution s existing and potential IP Exploiting IP is Maximizing the acquired IP s value Protecting Institution s IP in the form of brands technologies, secrets Licensing (in and out licensing, co-licensing), complete sell off May involve other commercialization or monetization routes
Intellectual Property Management Monitoring Internal/External Use of Institution s IP Applies to all IP Need to systematically monitor all types of IP in your IP portfolio Enforcement Steps must be taken to enforce all IP rights once acquired If not, then there is no consequence to a potential infringer Unfortunately enforcing through litigation is a costly affair and outcomes usually uncertain Negotiations may be viable alternatives Keeping Abreast of Developments in the field Make use of IP databases, e.g. WIPO, USPTO for research May extract competitive information or intelligence from these databases Read reviews associated with trademarks and other IP associated with other companies and institutions Examine state of the art in specific fields by conducting patent database searches
Intellectual Property Management Market Value of Sharing Information or Open Collaboration Information or processes developed by institution that does not fit into a category of IP and cannot be monetized through any traditional means or strategy may be willfully shared or made public Sharing through social media or a whitepaper may demonstrate expertise in a particular area and contribute towards building goodwill in a brand May also have advertising and marketing value However, there is need to carefully analyze the implications of any disclosure before releasing such information
ACKNOWLEDGEMENTS JOHN FRASER, Director of the FLORIDA STATE UNIVERSITY TECHNOLOGY TRANSFER OFFICE for granting permission to use material from FSU Tech Transfer Resources in this presentation HENRY ESTEREZ of Allen Dyer Doppelt Milbrath & Gilchrist, PA Orlando, Melbourne, Jacksonville DENNIS CLARKE of Miles & Stockbridge P.C, USA.