Intellectual Property concepts

and filing process

Dr Rendy Tan

24 Feb 2014

Agenda

• Basic Intellectual Property concepts

• What/how to protect

• Timeline

• Invention disclosure form

What is Intellectual Property

(IP) and its importance?

• Creation of the mind

• Why do we want to protect?

– Right to exclude others from practicing your

invention

– Freedom to operate (in case of future

commercialization activities)

– For research collaborations etc.

How are patents obtained?

• Novel

• Inventive

• Industrially Applicable

Industry vs Academia

• Industry

– Is there any IP?

– Cost

– Safety

– Performance

• Academia

– Publishable

research

– Performance

– Safety

– Cost

Types of patents (cont’d)

• Electronics

– Modules of a system

– Features of the system

– Functions of the system

• Material science

– Composition of matter

– Thickness of each layer

– Morphology

– Technical effects

Types of patents

Product

• Think about features of the invention that is different.

• The difference must confer a technical advantage; have a functional purpose.

• *Lifetime increase from

200 µµµµS to 1 mS.

Types of patent (cont’d)

Method of production

• Steps of producing a

product, material etc.

• The steps must produce a

technical effect.

• Eg. New method of

producing a material –

protecting a method. Material is known but new

method: Product by process –

protecting the product.

Some questions

• What does it take for the industry to adopt my

technology?

• Is my material safe?

• Performance under extreme temperatures?

• Is my process scalable?

• Does my product/process provide any cost

advantage?

Invention Disclosure Form • Different parts:

- Field of invention :

• Generalize what your invention is about.

• Is it a product or a process or both.

- Summary of the invention :

- Highlight the problems in this field.

- What has been done before and their outcomes.

- Briefly state what your invention is and how it can solve

the problems differently.

- Advantages of your invention.

- Brief description of the drawings:

• What do the diagrams mean?

Invention Disclosure Form

(cont’d) • Different parts:

- Detailed Description:

- What is the invention – step by step in full details.

- How is your invention different from the prior art.

- Alternative embodiments: think broadly –

- Product – What other groups can I have on the

molecule?

- Process – Can I use a different solvent? Can I replace a

step with another? If so, what are the consequences?

Invention Disclosure Form (cont’d)

• Different parts:

- What problems does the invention solve and what

are the advantages over existing products and/or

method:

- What problem does your invention address?

- Cost, performance advantages

- By how what magnitude

- Industrial applications:

- Can your invention be used in other areas?

- Limitations and competing ways to solve the same

problems:

- Disadvantages of your invention.

Patenting Timeline

I.D. submission

Tech. Assessment

3 months

File Prov.

Initial Public

Disclosure

9 months

Patent

Review

3 months

File non-Prov.

Or PCT

12 months

Enter Natl.

Phase

Patent

Review

8 months Rarely gets here

unless licensed

Patent & Market Eval.

18 months

Funding considerations

6 months

Patent

Publication

Phase

I Phase II Phase III Phase IV

Information for NUS inventions

• http://ilo.nus.edu.sg/

• http://ilo.nus.edu.sg/for-

researchers/disclosing-an-invention/

• ilobox3@nus.edu.sg

Strategy

• OODA framework for IP strategy

• Observe – Know the landscape

– Think: How does your invention fit in a bigger system,

module? Where is the industry heading? Does your

invention really solve a problem?

• Orientate – Know your research (where it

stands in the industry)

– Think: What are the steps required to put your

invention to work? Can your invention be applied

elsewhere?

Strategy (cont’d)

• OODA framework for IP strategy

• Decide – Make decisions (to further develop or

to protect now; how/what to protect)

– Think: How much more time do I need to get more

results? What are my future research plans? Should I

publish now?

• Act – Take the necessary actions

– Talk to us!

Concluding remarks

• Do not publish until a patent application has

been filed ……

Can be novelty destroying!

• Once patent application filed, the invention is

patent pending BUT …….

Do establish a non-disclosure agreement

when discussing with external parties!

Key takeaways

• Filing of patents create a win-win situation for

both academia and industry

• Patent filed then publish!

• Strategize! OODA framework.

Thank You