An Introduction to Intellectual Property Medical School, Newcastle University Angela Roberts 2 nd December 2009

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






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







Some Well Known Trade MarksSome Well Known Trade MarksSome Well Known Trade MarksSome Well Known Trade 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


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







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








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







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






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






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





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

[email protected]

Documents

An Introduction to Intellectual Property Medical School, Newcastle University Angela Roberts 2 nd December 2009