View
216
Download
2
Category
Tags:
Preview:
Citation preview
An Introduction to Intellectual An Introduction to Intellectual PropertyPropertyMedical School, Newcastle UniversityMedical School, Newcastle University
Angela Roberts22ndnd December 2009 December 2009
What is IP?What is IP?What is IP?What is IP?
Examples of IP in IndustryExamples of IP in IndustryExamples of IP in IndustryExamples of IP in Industry
Case StudyCase StudyCase StudyCase Study
Talk OutlineTalk Outline
Commercialising your IPCommercialising your IPCommercialising your IPCommercialising your IP
PatentsPatentsPatentsPatents
Trade MarksTrade MarksTrade MarksTrade Marks
DesignsDesignsDesignsDesigns
CopyrightCopyrightCopyrightCopyright
Confidential InformationConfidential InformationConfidential InformationConfidential Information
Intellectual PropertyIntellectual Property
I.P. RightsI.P. RightsI.P. RightsI.P. Rights
Very important in competitive Very important in competitive marketplacemarketplaceVery important in competitive Very important in competitive marketplacemarketplace
Reward research and development and Reward research and development and prevent unauthorised exploitation of your rightsprevent unauthorised exploitation of your rightsReward research and development and Reward research and development and prevent unauthorised exploitation of your rightsprevent unauthorised exploitation of your rights
Is the road clear? - Even if you do not Is the road clear? - Even if you do not want to assert your own rights, you want to assert your own rights, you can still be in danger of infringing can still be in danger of infringing somebody else'ssomebody else's
Is the road clear? - Even if you do not Is the road clear? - Even if you do not want to assert your own rights, you want to assert your own rights, you can still be in danger of infringing can still be in danger of infringing somebody else'ssomebody else's
Best return for expenditureBest return for expenditureBest return for expenditureBest return for expenditure
Monopoly in marketplaceMonopoly in marketplaceMonopoly in marketplaceMonopoly in marketplace
Barriers to entry for competitionBarriers to entry for competitionBarriers to entry for competitionBarriers to entry for competition
Why Secure IP Why Secure IP RightsRightsWhy Secure IP Why Secure IP RightsRights
PatentsPatentsPatentsPatents
Trade MarksTrade MarksTrade MarksTrade Marks
DesignsDesignsDesignsDesigns
CopyrightCopyrightCopyrightCopyright
Confidential InformationConfidential InformationConfidential InformationConfidential Information
Intellectual PropertyIntellectual PropertyIntellectual PropertyIntellectual Property
Patents - GeneralPatents - GeneralPatents - GeneralPatents - General
A state granted monopoly - lasts up to 20 yearsA state granted monopoly - lasts up to 20 yearsA state granted monopoly - lasts up to 20 yearsA state granted monopoly - lasts up to 20 years
Prevents unauthorised exploitation of Prevents unauthorised exploitation of ideas or inventionsideas or inventionsPrevents unauthorised exploitation of Prevents unauthorised exploitation of ideas or inventionsideas or inventions
Rewards and encourages research and innovationRewards and encourages research and innovationRewards and encourages research and innovationRewards and encourages research and innovation
Patents granted for ideas and Patents granted for ideas and inventionsinventionsPatents granted for ideas and Patents granted for ideas and inventionsinventions
Not an obvious solution to the Not an obvious solution to the problem the invention problem the invention overcomesovercomes
Not an obvious solution to the Not an obvious solution to the problem the invention problem the invention overcomesovercomes
Strict RequirementsStrict RequirementsStrict RequirementsStrict Requirements
Absolute Novelty - No prior Absolute Novelty - No prior public disclosurepublic disclosureAbsolute Novelty - No prior Absolute Novelty - No prior public disclosurepublic disclosure
Application is examined by the Patent Application is examined by the Patent OfficeOfficeApplication is examined by the Patent Application is examined by the Patent OfficeOffice
Patents are not granted merely by Patents are not granted merely by filing an Applicationfiling an ApplicationPatents are not granted merely by Patents are not granted merely by filing an Applicationfiling an Application
Patents - GeneralPatents - GeneralPatents - GeneralPatents - General
Granted patent - defines Granted patent - defines scope of enforceable scope of enforceable protectionprotection
Granted patent - defines Granted patent - defines scope of enforceable scope of enforceable protectionprotection
ClaimsClaimsClaimsClaims
Application stage - sets out Application stage - sets out scope of protection soughtscope of protection soughtApplication stage - sets out Application stage - sets out scope of protection soughtscope of protection sought
SpecificationSpecificationSpecificationSpecification
Application ContainsApplication ContainsApplication ContainsApplication Contains
Describes the invention Describes the invention sufficiently to enable the sufficiently to enable the invention to be practised by a invention to be practised by a person skilled in the artperson skilled in the art
Describes the invention Describes the invention sufficiently to enable the sufficiently to enable the invention to be practised by a invention to be practised by a person skilled in the artperson skilled in the art
Action Required by AgentsDraft description of theinvention and file at thePatent Office
Add Abstracts, Claims and FormalDrawings to the Application (or file anew complete application claimingpriority from original application).Pay the search fee and completeother formalities.Advise on the significance of anyPrior Art cited in the Search Report
Pay SubstantiveExamination Fee
Analyse Examination Reportand attempt to overcome anyobjections by argumentand/or amendment of theapplication.Deal with any furtherofficial objections.
File anycorresponding
foreignapplications
12 Months
4 Months
2 Months
6 Months
2 yrs 6 mths to 4 yrs
18 Months
12 Months
10 Months
Grant Formalities
Further OfficialActionsIssued
First OfficialActionIssued
RequestSubstantiveExamination
Applicationpublished
byPatent Office
Receive SearchReport fromPatent Office
Continuationof UK
Application
File UKApplication
Typical Timescale for a National UK Patent Application
Typical Timescale for a National UK Patent Application
International Patent Application International Patent Application ProcedureProcedure
International Patent Application International Patent Application ProcedureProcedure
GrantedEuropean
Patent
Granted National Applications
12 Months 12 Months
File IndividualOverseas Applications
File IndividualOverseas Application
File EuropeanApplication
File InternationalPCT Application
File EuropeanApplication
File UKApplication
PatentsPatentsPatentsPatents
Trade MarksTrade MarksTrade MarksTrade Marks
DesignsDesignsDesignsDesigns
CopyrightCopyrightCopyrightCopyright
Confidential InformationConfidential InformationConfidential InformationConfidential Information
Intellectual PropertyIntellectual PropertyIntellectual PropertyIntellectual Property
Some Well Known Trade MarksSome Well Known Trade MarksSome Well Known Trade MarksSome Well Known Trade Marks
Trade MarksTrade MarksTrade MarksTrade Marks
Trade Marks are used to distinguish Trade Marks are used to distinguish products and servicesproducts and servicesTrade Marks are used to distinguish Trade Marks are used to distinguish products and servicesproducts and services
Trade Mark can be:Trade Mark can be:Trade Mark can be:Trade Mark can be:WordWordWordWord
LogoLogoLogoLogo
Any sign which is capable of Any sign which is capable of distinguishing the goods and services distinguishing the goods and services of one trader from those of anotherof one trader from those of another
Any sign which is capable of Any sign which is capable of distinguishing the goods and services distinguishing the goods and services of one trader from those of anotherof one trader from those of another
SoundSoundSoundSound
SmellSmellSmellSmell
Trade MarksTrade MarksTrade MarksTrade Marks
Adds value to a company - GuinnessAdds value to a company - GuinnessAdds value to a company - GuinnessAdds value to a company - Guinness
A good Trade Mark will be:A good Trade Mark will be:A good Trade Mark will be:A good Trade Mark will be:
DistinctiveDistinctiveDistinctiveDistinctive
Not Descriptive of ProductNot Descriptive of ProductNot Descriptive of ProductNot Descriptive of Product
Serves to establish goodwill and Serves to establish goodwill and reputation in a product or servicereputation in a product or serviceServes to establish goodwill and Serves to establish goodwill and reputation in a product or servicereputation in a product or service
PatentsPatentsPatentsPatents
Trade MarksTrade MarksTrade MarksTrade Marks
DesignsDesignsDesignsDesigns
CopyrightCopyrightCopyrightCopyright
Confidential InformationConfidential InformationConfidential InformationConfidential Information
Intellectual PropertyIntellectual PropertyIntellectual PropertyIntellectual Property
DesignsDesigns
Registered DesignsRegistered DesignsRegistered DesignsRegistered Designs
Protects aesthetic appearance Protects aesthetic appearance of product - not the idea of product - not the idea behind itbehind it
Protects aesthetic appearance Protects aesthetic appearance of product - not the idea of product - not the idea behind itbehind it
© 2002 Bodum© 2002 Bodum
No protection for function of the No protection for function of the articlearticleNo protection for function of the No protection for function of the articlearticle
PatentsPatentsPatentsPatents
Trade MarksTrade MarksTrade MarksTrade Marks
DesignsDesignsDesignsDesigns
CopyrightCopyrightCopyrightCopyright
Confidential InformationConfidential InformationConfidential InformationConfidential Information
Intellectual PropertyIntellectual PropertyIntellectual PropertyIntellectual Property
CopyrightCopyrightCopyrightCopyright
CopyrightCopyright
Automatically exists in original Automatically exists in original literary worksliterary worksAutomatically exists in original Automatically exists in original literary worksliterary works
Copyright can exist in:Copyright can exist in:Copyright can exist in:Copyright can exist in:
Sound RecordingsSound Recordings 50 50 yearsyearsSound RecordingsSound Recordings 50 50 yearsyears
Literary WorksLiterary Works life + 70 life + 70 yearsyearsLiterary WorksLiterary Works life + 70 life + 70 yearsyearsMusical NotationMusical Notation life + 70 life + 70 yearsyearsMusical NotationMusical Notation life + 70 life + 70 yearsyearsGraphic WorksGraphic Works life + 70 life + 70 yearsyearsGraphic WorksGraphic Works life + 70 life + 70 yearsyears
PhotographsPhotographs life + life + 70 years70 yearsPhotographsPhotographs life + life + 70 years70 years
PatentsPatentsPatentsPatents
Trade MarksTrade MarksTrade MarksTrade Marks
DesignsDesignsDesignsDesigns
CopyrightCopyrightCopyrightCopyright
Confidential InformationConfidential InformationConfidential InformationConfidential Information
Intellectual PropertyIntellectual PropertyIntellectual PropertyIntellectual Property
An alternative to Patenting?An alternative to Patenting?An alternative to Patenting?An alternative to Patenting?
ConfidentialityConfidentialityConfidentialityConfidentiality
No public disclosure of idea requiredNo public disclosure of idea requiredNo public disclosure of idea requiredNo public disclosure of idea required
BUT!! - No protection of idea over BUT!! - No protection of idea over independent creation by third partiesindependent creation by third partiesBUT!! - No protection of idea over BUT!! - No protection of idea over independent creation by third partiesindependent creation by third parties
Protects a company’s “know how”Protects a company’s “know how”Protects a company’s “know how”Protects a company’s “know how”
Ability to retain “secret step”Ability to retain “secret step”Ability to retain “secret step”Ability to retain “secret step”
Importance of NDAsImportance of NDAsImportance of NDAsImportance of NDAs
What is IP?What is IP?What is IP?What is IP?
Examples of IP in IndustryExamples of IP in IndustryExamples of IP in IndustryExamples of IP in Industry
Case StudyCase StudyCase StudyCase Study
Talk OutlineTalk Outline
Commercialising your IPCommercialising your IPCommercialising your IPCommercialising your IP
Confidentiality - Success Stories
Confidentiality - Success Stories
© The Coca-Cola Company© The Drambuie Liqueur Company
Trade Trade MarkMark
I.P. in ActionI.P. in ActionI.P. in ActionI.P. in Action
© Apple © Apple ComputersComputers
Designs - Shape of productDesigns - Shape of product
Patent protection Patent protection
Copyright - Software Copyright - Software
I.P. in Action: ZOVIRAX
I.P. in Action: ZOVIRAX
Antiviral Treatment for cold sores launched in 1981Antiviral Treatment for cold sores launched in 1981Antiviral Treatment for cold sores launched in 1981Antiviral Treatment for cold sores launched in 1981
Launched as an over-the-counter brandLaunched as an over-the-counter brandLaunched as an over-the-counter brandLaunched as an over-the-counter brand
Now market leader in EuropeNow market leader in EuropeNow market leader in EuropeNow market leader in Europe
Patent protection - Acyclovir - Expired 1997Patent protection - Acyclovir - Expired 1997Patent protection - Acyclovir - Expired 1997Patent protection - Acyclovir - Expired 1997
Trade Mark - ZoviraxTrade Mark - ZoviraxTrade Mark - ZoviraxTrade Mark - Zovirax
Designs - Shape of containerDesigns - Shape of containerDesigns - Shape of containerDesigns - Shape of container
Generics entered marketGenerics entered marketGenerics entered marketGenerics entered market
What is IP?What is IP?What is IP?What is IP?
Examples of IP in IndustryExamples of IP in IndustryExamples of IP in IndustryExamples of IP in Industry
Case StudyCase StudyCase StudyCase Study
Talk OutlineTalk Outline
Commercialising your IPCommercialising your IPCommercialising your IPCommercialising your IP
Exploiting Your IPExploiting Your IPExploiting Your IPExploiting Your IP
Keep idea confidential - a Patent Application can only be filed if the invention is new and has not been publicly disclosed
Keep idea confidential - a Patent Application can only be filed if the invention is new and has not been publicly disclosed
Consult with Research & Innovation service within University for commercialisation advice
Consult with Research & Innovation service within University for commercialisation advice
Spin Out Companies
Spin Out Companies
I.P. initially owned by UniversityI.P. initially owned by University
Agreements very important in this situationAgreements very important in this situation
Commercialisation of technology by a separate companyCommercialisation of technology by a separate company
Often ownership of I.P. may or may not be assigned to spin outOften ownership of I.P. may or may not be assigned to spin out
What is IP?What is IP?What is IP?What is IP?
Examples of IP in IndustryExamples of IP in IndustryExamples of IP in IndustryExamples of IP in Industry
Case StudyCase StudyCase StudyCase Study
Commercialising your IPCommercialising your IPCommercialising your IPCommercialising your IP
Case Study
Medivate a new university spin Medivate a new university spin out company has identified out company has identified and produced a new medical and produced a new medical device useful in diagnosing TBdevice useful in diagnosing TB
Currently only a prototype device is up Currently only a prototype device is up and running, the company needs to and running, the company needs to obtaining further external funding to obtaining further external funding to bring their product to marketbring their product to market
Currently only a prototype device is up Currently only a prototype device is up and running, the company needs to and running, the company needs to obtaining further external funding to obtaining further external funding to bring their product to marketbring their product to market
Medivate have been advised that the Medivate have been advised that the first step in obtaining further funding is first step in obtaining further funding is to identify and secure its IP position to identify and secure its IP position
Medivate have been advised that the Medivate have been advised that the first step in obtaining further funding is first step in obtaining further funding is to identify and secure its IP position to identify and secure its IP position
A new small TB diagnosis product for A new small TB diagnosis product for use in GP surgeriesuse in GP surgeriesA new small TB diagnosis product for A new small TB diagnosis product for use in GP surgeriesuse in GP surgeries
The ProductThe Product
The “NuVu” scannerThe “NuVu” scannerThe “NuVu” scannerThe “NuVu” scanner
The ProductThe Product
The NuVu scanner utilises a The NuVu scanner utilises a piezoelectric crystal containing wand piezoelectric crystal containing wand to detect a low level frequency to detect a low level frequency vibration emitted from a metal plate vibration emitted from a metal plate positioned under a patient;positioned under a patient;
The NuVu scanner utilises a The NuVu scanner utilises a piezoelectric crystal containing wand piezoelectric crystal containing wand to detect a low level frequency to detect a low level frequency vibration emitted from a metal plate vibration emitted from a metal plate positioned under a patient;positioned under a patient;
where a patient is infected by TB causing where a patient is infected by TB causing bacteria the low level vibrations are bacteria the low level vibrations are absorbed by the tubercule lesions in the absorbed by the tubercule lesions in the lungslungs
the piezoelectric crystal does not produce electrons - the piezoelectric crystal does not produce electrons - the presence of TB is detected by the negative the presence of TB is detected by the negative responseresponse
Company StaffCompany Staff
The 2 founding members of staff were researching the utility of naturally occurring quartz piezoelectric crystals as post-doc researchers at their University, where the crystal used in the nuvu scanner was identified
The 2 founding members of staff were researching the utility of naturally occurring quartz piezoelectric crystals as post-doc researchers at their University, where the crystal used in the nuvu scanner was identifiedA senior member of the university lecturer staff is involved as a consultant and sounding board
A senior member of the university lecturer staff is involved as a consultant and sounding board
An MSc student designed the computer software involved in transferring the electronic energy received into a simple image displayed on a PC
An MSc student designed the computer software involved in transferring the electronic energy received into a simple image displayed on a PC
The regions where TB is most prevalent The regions where TB is most prevalent include Africa and South East Asia and the include Africa and South East Asia and the Asia Pacific RingAsia Pacific Ring
The regions where TB is most prevalent The regions where TB is most prevalent include Africa and South East Asia and the include Africa and South East Asia and the Asia Pacific RingAsia Pacific Ring
TB was identified by the WHO as a global TB was identified by the WHO as a global problem back in 1994, and reached its highest problem back in 1994, and reached its highest infection level in recent times in the last infection level in recent times in the last official statistics for 2005.official statistics for 2005.
TB was identified by the WHO as a global TB was identified by the WHO as a global problem back in 1994, and reached its highest problem back in 1994, and reached its highest infection level in recent times in the last infection level in recent times in the last official statistics for 2005.official statistics for 2005.
The spread of TB is a particular problem in The spread of TB is a particular problem in crowded, closed environments e.g. prisonscrowded, closed environments e.g. prisonsThe spread of TB is a particular problem in The spread of TB is a particular problem in crowded, closed environments e.g. prisonscrowded, closed environments e.g. prisons
Background InformationBackground Information
Product DesignProduct Design
Medivate intends to copy the external design of a well known ultrasound product
Medivate intends to copy the external design of a well known ultrasound product
Initial enquires have shown it’s most cost effective to have the finished product toll manufactured in China
Initial enquires have shown it’s most cost effective to have the finished product toll manufactured in China
Medivate would like to demonstrate a finished product an International medical device fair in March 2010
Medivate would like to demonstrate a finished product an International medical device fair in March 2010
Operating the NuVu
The alignment of the crystal detector and the metal vibration plate is very important to obtain accurate identification of a TB infection, to address this matter Medivate intend to;
The alignment of the crystal detector and the metal vibration plate is very important to obtain accurate identification of a TB infection, to address this matter Medivate intend to; commission a design company to commission a design company to
device an operating manual to device an operating manual to accompany each NuVu device soldaccompany each NuVu device sold
commission a design company to commission a design company to device an operating manual to device an operating manual to accompany each NuVu device soldaccompany each NuVu device sold
provide a service whereby they provide a service whereby they install the NuVu device in a surgery install the NuVu device in a surgery and train staff how to use the device and train staff how to use the device and interpret data results and interpret data results
provide a service whereby they provide a service whereby they install the NuVu device in a surgery install the NuVu device in a surgery and train staff how to use the device and train staff how to use the device and interpret data results and interpret data results
The company staff don’t know of any other medical The company staff don’t know of any other medical products with the name NuVu, however;products with the name NuVu, however;The company staff don’t know of any other medical The company staff don’t know of any other medical products with the name NuVu, however;products with the name NuVu, however;
The NameName
The “Nu-Vu” baking machine The “Nu-Vu” baking machine exists and is owned by a US exists and is owned by a US commercial catering companycommercial catering company
The “Nu-Vu” baking machine The “Nu-Vu” baking machine exists and is owned by a US exists and is owned by a US commercial catering companycommercial catering company
The “nuvu” projection screen The “nuvu” projection screen also exists, the company also exists, the company which marketed the product which marketed the product has now ceased tradinghas now ceased trading
The “nuvu” projection screen The “nuvu” projection screen also exists, the company also exists, the company which marketed the product which marketed the product has now ceased tradinghas now ceased trading
Case Study Task
Identify the IP assets that Medivate Identify the IP assets that Medivate currently own, consider;currently own, consider;Identify the IP assets that Medivate Identify the IP assets that Medivate currently own, consider;currently own, consider;
Which of these will need to be Which of these will need to be registered for protectionregistered for protectionWhich of these will need to be Which of these will need to be registered for protectionregistered for protection
IP areas of interestIP areas of interestIP areas of interestIP areas of interest
Any additional issues which Any additional issues which need to be consideredneed to be consideredAny additional issues which Any additional issues which need to be consideredneed to be considered
Angela RobertsAngela Roberts
Angela.roberts@murgitroyd.com
Recommended