PATENTS and other INTELLECTUAL PROPERTY · Intellectual property is any product of the human...
Transcript of PATENTS and other INTELLECTUAL PROPERTY · Intellectual property is any product of the human...
PATENTS and other INTELLECTUAL PROPERTY
A Guide to IP Protection at McGill University Katya Marc, M.Eng., MBA
Industry Liaison Manager
Faculty of Engineering October 29, 2014
WHAT IS TECHNOLOGY TRANSFER?
Formally transferring discoveries / inventions resulting from research at the University / Hospital to the commercial sector
Why care about inventions? •Attract industry, VCs
•Capturing research and license dollars
•Personal income
•Stimulate and encourage innovation
Broad definition includes Tech Transfer via student movement, contractual research and licensing
Intellectual property is any product of the human intellect that is unique, novel and unobvious (and has some value in the marketplace)
Intellectual property (IP) is valuable • Often, value cannot be predicted at the start of a project
• Agree with non-University partner BEFORE starting to collaborate
• Agree IN WRITING [rights to IP, publication rights, etc]
WHAT IS INTELLECTUAL PROPERTY?
PROTECTING INTELLECTUAL PROPERTY
P A T E N T S
INDUSTRIAL DESIGNS
TRADEMARKS
TRADE SECRETS
COPYRIGHTS
INTEGRATED CIRCUITS
Definition: A bargain with the state wherein you, the inventor, give the
state, and eventually the public, a full and complete
disclosure of what your invention is, how it works, the best
way to put it into practice …..
In return you are granted a right to exclude others, for a limited period of time, during which you can stop others from making, using, distributing or selling, or importing your invention without your permission
WHAT IS A PATENT?
WHY PATENT?
•Protection •Scope: Limited both geographically (ex. Canada) and
by subject matter (claims)
•License third parties to use the invention for commercial purposes •Public interest when inventions become innovations/products/processes used by public •Can encourage publication of new scientific work •Others can experiment and improve •New inventions of their own
WHAT CAN BE PATENTED?
Section 27(8) of the Canadian Patent Act
•NOT something purely artistic or decorative
•NOT abstract theorems, principals
•NOT higher life forms
•Mechanical devices and machines
•Electrical and electronic apparatus and circuits
•Chemical processes and products/composition of matter
•Articles of manufacture (e.g. hockey sticks)
PATENTABILITY CRITERIA
1. PATENTABLE SUBJECT MATTER
2. NEW - not known in prior art
3. INVENTIVE/UNOBVIOUS – not obvious
to a person of ordinary skill in the art
4. USEFUL – industrial application or
utility
INVENTIVE/UNOBVIOUS?
Scrotal support garment
US20090216171
NOT INVENTIVE DUE TO PRIOR ART
It would have been obvious
to someone of ordinary skill
in the art at the time the
invention was made to have
modified the scrotal support
garment of exhibit figure B.
USEFUL SITES FOR PATENT SEARCHES
www.cipo.gc.ca Canadian Intellectual Property
Office
www.uspto.gov US Government Patent and
Trademark Office
http://ep.espacenet.com European Patent Office
Derwent Innovations Index, McGill library database
Trade Secrets
Chemical manufacturing -
infringement is difficult to detect
Market is small
T0 PATENT OR NOT TO PATENT?
All that is Patentable
is NOT necessarily
Commercializable !
NOTEWORTHY
United States, Canada and the rest of the world Patent goes to applicant who was first to file an application (US switched to first to file as of March 1, 2013)
Canada, US & Mexico Grace period of one year before filing after public disclosure
Term of a Patent - 20 years from filing the application
Absolute novelty – most of the rest of the world
PATENTING AROUND THE WORLD
PATENTING AROUND THE WORLD
Patent Cooperation Treaty (PCT)
Possibility to designate 125 states/countries, including
European and OAPI (most African countries) through a
single application
COMMENTS ON THE PATENTING PROCESS
Complicated & Expensive
Important
Involves Many People
Documentation
Time Consuming
Full and complete description:
What the invention is
How it works
Drawings
Definitions
Claims
THE PATENT APPLICATION
THE PATENT APPLICATION
CLAIMS
In words, you stake out the novel, inventive subject matter,
which others may not use.
THE PATENT APPLICATION
Types of Claims
•Product
•Method of Manufacture
•Method of Using a Product
•Apparatus for Making a Product
•Food, Drugs & Chemical Processes
•Method of Testing
•Software (algorithm)
A few things to remember…
Invention B
Invention A
Not Necessarily Freedom to Operate
Patents Provide an Exclusive Right but…
A few things to remember…
DISCLOSURE
Premature disclosure destroys novelty!
United States, Canada – one year grace period
following disclosure to file application
Many other countries (ex. Europe) – application
must be filed before ANY public disclosure
McGill’s IP POLICY
•Must report to OSR those inventions that they wish to develop
for commercial purposes, before they are publicly disclosed
•Applies to all McGill-affiliated entities, such as Hospitals
•If a student is sole inventor, no obligation to go to OSR
•An invention is disclosed via a Report of Invention
•Joint ownership (by McGill and Inventors) of rights to the IP
•If University leads commercialization, formal Assignment of
the IP rights to McGill is required.
THE PROCESS AT McGill
Step 1: ROI filed with Commercialization Unit of the Office of
Sponsored Research (OSR)
Step 2: Confirmation of Receipt and Officer Assigned (2 weeks)
Step 3: Commercialization Plan and Decision from OSR within
90 days
FILING A REPORT OF INVENTION (ROI)
Report of Invention (ROI) is available on OSR Web Page
•Completed in full
•Signed and dated
•Co-inventors (%), collaborators
Impact on Royalties
INVENTORSHIP
Guidelines on inventorship determination.
It is a legal notion that may change from country to country.
An inventor is generally the individual(s) present, and first to demonstrate, the fundamental novelty or invention.
Co-inventor: in a direct way contributed to the creative value-added of the invention.
Ultimate test: creative contribution to any or all of the claims in the patent.
Suggesting an idea of a result to be accomplished, rather than the means of accomplishment is not co-inventing.
IMPORTANT
AUTHORSHIP
DOES NOT EQUAL
INVENTORSHIP !
IMPORTANT
EFFORT
DOES NOT EQUAL
INVENTORSHIP
POSSIBLE COURSES OF ACTION
PROCEED
File Provisional or Full Application
OR
REJECT or RE-ASSIGN
No Protection by McGill
OR
TOO EARLY
Return for More Development/Research
FILING A PATENT APPLICATION
US Provisional Application
• Establishes a filing date
• $3,000-10,000 CAN
• 12 months period to explore commercial potential
Patent Cooperation Treaty (PCT)
• Single application designating a number of countries
• Individual national applications can be deferred for up to
30 months
• $5,000-10,000 CAN
•Filing for Patent at the National Offices (National Entry)
COMPANY vs. UNIVERSITY
COMPANY
Work for hire
Recognized on patents
Trade secrets –
publication on
permission
They hired you.
You work for them.
They own everything!
UNIVERSITY
Jointly owned IP
Recognized on patents
Right to publish
Share in revenues
(60% to inventors)
Compatible environment
to provide for
teaching, research and
publications
Now that the IP is protected…
…the process of commercialization
is only just beginning.
Time to Success
Costs of Commecialization
We need partners along the way
Further technology development
Expend both financial and human resources
to produce, market and sell technology
Defend IP against unscrupulous companies
etc.
There must be a reward
commensurate with the risk
INDUSTRIAL DESIGNS
Features of shape, configuration, pattern or ornament and any
combination of those features that in a finished article appeal
to and are judged solely by the eye
V I S U A L Who can apply for registration? Only the proprietor (owner) of a design may apply for and receive registration for
an industrial design.
Proprietor = creator, unless
- hired under contract to develop a design for someone else
- employee of a company and develop a design as part of your
employment
When compared to a patent…. •10 years of protection
•Protects only the appearance of the article
•Cost is an order of magnitude lower
•Proper mark is a capital "D" inside a circle and the name, or abbreviation, of the
design's owner on the article, its label or packaging
TRADEMARKS
A mark that distinguishes wears or services manufactured,
sold, leased, hired or performed.
DISTINCTIVENESS
USE
When compared to a patent...
•Registered ® vs. unregistered ™ •Protection in perpetuity
•Protection is immediate
•Cost is much less
•Designs registered in 6 months
TRADE SECRETS
1. It must actually be a secret.
2. Efforts must be made to keep it a secret.
Not feasible in University setting.
Important for Industry.
Recipes
Proprietary processes
Chemical formulae
Customer lists
Business methods
Reverse engineering and independent creation are good and complete defenses.
COPYRIGHTS
Protection of expressive original works of authorship such
as:
• Literary
• Musical
• Dramatic
• Artistic
•Computer programs/Software
When compared to a patent...
•Automatic protection © •Prevents unauthorized copying, distribution or taking and
using
•Protection is lifetime + 50 years
•Economic and moral rights to the work
•Original work, tangible, residence/citizen
COMPUTER PROGRAMS/SOFTWARE
Canada’s Copyright Act
• Source (human readable) code
• Machine readable code in a ROM chip (firmware)
• Application programs
• Operating system programs
Unresolved Issues:
• Scope of protection
• Reverse engineering
• Microcode in the CPU
INTEGRATED CIRCUIT (IC) LAYOUT DESIGNS
Canada’s Integrated Circuit Topography Act
(ICTA), May 1993
When compared to a patent...
•Protection against exact reproduction,
manufacture, importation/commercial
exploitation
•Does allow reverse engineering
•Requirements for registration less onerous
•10 years of protection
Innovations Catalyst in Engineering (ICE)
Katya Marc, 514-398-3355
Industry Liaison Manager
Office of Sponsored Research (OSR) Commercialization Officers:
Derrick Wong, 514-398-5858
Mark Weber, 514-398-8949
Web Sites: http://www.mcgill.ca/engineering/research/ice
http://www.mcgill.ca/research/researchers/ip
SOURCES OF INFORMATION