Building Intellectual Property Rights

Research Methodology

Prof. Jebran Khan

• Intellectual Property (IP) is the terminology attributed to intangible assets having commercial value, and arising from human intelligence, creativity, and imagination, but typically lacking physical form.
• The major types of IP are
• Trademarks:
• A trademark is a sign that suitably differentiates the owner’s goods or services from those of others.
• Copyright:
• Copyright is the right bestowed on the owner or creator in relation to publication, and distribution of a piece of writing, music, picture or related works.
• Copyright also applies to technical contents such as software, datasheets, and related documents.
• Industrial Designs:
• An industrial design protection is related to certain specific ornamental shapes associated with products whose duplication the owner may wish to prevent.

Intellectual Property (IP)

• Patents:
• A patent is a legal record.
• It bestows the holder the exclusive right over an invention as per the claims
• It gives the right to the holder in a limited geographical domain and for a limited duration
• It prevents the possible interested parties from any form of manufacture, use or sale of the product or outcome of the invention.
• In theory, applicant (or inventor) can draft a patent application but given the technical and procedural complexity, in practice, patent lawyers and researchers collaboratively write such applications.

Intellectual Property (IP)

Copyrights generally do not need registration with a government body.

The rest of the Intellectual Property Rights must be sanctioned by, and registered with, a government office for recognition and enforcement.

Example of IPs: Trademarks

Example of IPs: Industrial Design

Example of IPs: Copyright

Example of IPs: Patents

• A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights.
• How can I protect my Trademarks? : At the national/regional level, trademark protection can be obtained through registration, by filing an application for registration with the national/regional trademark office and paying the required fees. At the international level, you have two options: either you can file a trademark application with the trademark office of each country in which you are seeking protection, or you can use WIPO’s Madrid System (where we need to file a single application and pay one set of fees to apply for protection in up to 127 countries).
• What rights does a trademark registration provide? : a trademark registration will confer an exclusive right to the use of the registered trademark. This implies that the trademark can be exclusively used by its owner, or licensed to another party for use in return for payment. Registration provides legal certainty and reinforces the position of the right holder, for example, in case of litigation.
• How long does trademark registration last? : The term of trademark registration can vary, but is usually ten years. It can be renewed indefinitely on payment of additional fees.

Trademarks

• Copyright (or author’s right) is a legal term used to describe the rights that creators have over their literary and artistic works.
• What can be protected using copyright? : 1. literary works such as novels, poems, plays, reference works, newspaper articles; 2. computer programs, databases; 3. films, musical compositions, and choreography; 4. artistic works such as paintings, drawings, photographs, and sculpture; 5. architecture; and 6. advertisements, maps, and technical drawings.
• Copyright protection extends only to expressions, and not to ideas, procedures, methods of operation or mathematical concepts
• There are two types of rights under copyright:
• Economic rights, which allow the rights owner to derive financial reward from the use of their works by others; and
• Moral rights, which protect the non-economic interests of the author.
• If you break copyright law – even by accident – it is possible that you can face large fines and even imprisonment.

Copyright

• In a legal sense, an industrial design constitutes the ornamental aspect of an article. An industrial design may consist of three dimensional features, such as the shape of an article, or two dimensional features, such as patterns, lines or color.
• What kind of products can benefit from industrial design protection? : Industrial designs are applied to a wide variety of products of industry and handicraft items: from packages and containers to furnishing and household goods, from lighting equipment to jewelry, and from electronic devices to textiles. Industrial designs may also be relevant to graphic symbols, graphical user interfaces (GUI), and logos.
• What kind of protection does an industrial design right offer? : In principle, the owner of a registered industrial design or of a design patent has the right to prevent third parties from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.

Industrial Design

• How are industrial designs protected? :
• In most countries, an industrial design needs to be registered in order to be protected under industrial design law as a “registered design”. In some countries, industrial designs are protected under patent law as “design patents ”.
• Industrial design laws in some countries grant – without registration – time- and scope limited protection to so-called “unregistered industrial designs”.
• Depending on the particular national law and the kind of design, industrial designs may also be protected as works of art under copyright law.

Industrial Design

• A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application.
• What kind of protection does a patent offer? : In principle, the patent owner has the exclusive right to prevent or stop others from commercially exploiting the patented invention. In other words, patent protection means that the invention cannot be commercially made, used, distributed, imported or sold by others without the patent owner's consent.
• Is a patent valid in every country? : Patents are territorial rights. In general, the exclusive rights are only applicable in the country or region in which a patent has been filed and granted, in accordance with the law of that country or region.
• How long does a patent last? : The protection is granted for a limited period, generally 20 years from the filing date of the application.

Patent

Difference between Trademark and Copyright

Difference between Industrial Design and Patent

Difference between Copyright and Patent

• Patent Subject:
• The patent must generally be technical in nature and be meant for an invention that works.
• Patents contain solutions to technical problems, reveal the current state-of-the-art, and provide vital information for decision making on new research projects and business opportunities.
• Most applications nowadays are reviewed by a government-employed examiner who attempts to determine if the claimed invention sufficiently advances the prior art.
• A granted patent is presumed valid until a successful challenge, and can be invalidated by the existence of a prior art discovery or for other reasons.
• What will happen to a granted patent faced challenges?:
• A prior art search involves an organized review of content in such documents, and includes patentability searches done by an inventor (or representing lawyer) before filing; invalidity searches in litigation; and patent examination searches done by an examiner to determine to make a decision on the application.
• Such searches are conducted by lawyers and researchers using public databases of issued patents, and exhaustive databases.

Patents: Subject and Importance

• Importance of Prior art search:
• Prior art search is not a requirement of a patent application.
• However, performing a prior art patentability search helps broaden claim coverage.
• Prior art searches may help find references so as to assess patentability.
• It helps if the inventor has a good idea about the novelty in the present work based on the literature in the field.
• If a search reveals references that anticipates some of the claims, one may attempt to “avoid the prior art” by redrafting the claims, and if that is not worthwhile, the intention to file should be revisited.

Patents: Subject and Importance

• Novelty:
• Novelty is a critical requirement which is central to the patent system. In most countries, no public disclosure should have taken place before filing takes place.
• That is why researchers should be very careful that they do not make any presentation or communicate any manuscript containing the contents of the patent to any journal before the patent filed and published.
• In order for a single reference (a technical paper or an earlier patent) to anticipate an invention, all of the limitations must be in it.
• The examiner is not supposed to combine multiple sources to argue anticipation.
• However, several references may be combined to show obviousness and so non-patentability.

Requirements for Patentability

• Utility/Industrial Application:
• A proposed invention must be able to perform the specified functions and achieve certain beneficial results.
• A critical requirement for a patent to be granted, is that the invention should do what is claimed in the patent, such that the society benefits before granting an exclusive right to anyone.
• However, the invention need not be superior to existing products. In some countries, the invention must be legal, moral, and in line with public policy.

Requirements for Patentability

• Non-obviousness/Inventive Step:
• Non-obviousness or “inventive step” requires that the invention cannot be put together from different pieces of known information by a person with average skill in the art, thereby ensuring that a patent is granted only for significant improvement over the prior art.
• An invention may be obvious despite not being exactly disclosed in prior art.
• If the prior art discloses most of the intended claims, the obvious conclusion could be that the claims are “obvious” over that reference, especially if other references can combine with the first one to disclose the entire claimed invention.

Requirements for Patentability

• Patent application is a contract between the applicant and the patent office eventually resulting in a granted patent.
• The draft of a patent application is vastly different from writing a research paper despite both mandatorily containing novel technical content.
• The patent is evaluated over the years by patent examiners, judges, and prospective licensees, and therefore must be drafted with such audiences in mind.
• A patent application consists of the Background section, Summary, Detailed Description with Drawings, Claims, and Abstract.
• It is imperative to file patents in a timely manner. A third party might file an application at any time and prior art might become available that wouldn’t have gone against the applicant’s application if the filing had been done without delay.

Application Preparation and Filing

• Importance of LIVE meeting between patent lawyer and applicant:
• It is unlikely that a patent lawyer will have sufficient content to unambiguously understand the invention without a “live” meeting with the inventor.
• Similarly, the inventor cannot possibly understand the legal implications of the claims, in the absence of such a meeting.
• Ideally, the two parties sign the nondisclosure agreement and then the agent reviews the disclosure materials and notes any questions or need for additional disclosures.
• During the meeting, the agent tries to fully understand the invention, establishes that no additional disclosure is needed, and understands the commercially critical aspects of the invention.

Application Preparation and Filing

• Once a manuscript gets published it becomes part of prior art and thus obtaining a patent for the same is not possible.
• Most patents do not make money, but can serve the academic interests of young researchers and can be a stepping stone to bigger things.
• One important aspect of ensuring for a researcher is that the engineering research work being performed has industrial applications.
• An idea of design when patented can still be published in a journal later on and so the researcher should be aware and be able to make a decision if the work that has been performed in patentable or not.
• Basic research can spur innovation and therefore inflow of funds for this purpose needs to continue, therefore Universities need to seek actively for commercialization of their research outcomes.

Patents and Commercialization in Academia