Intellectual Properties

16/03/2010

1

INTRODUCTION TO

INTELLECTUAL PROPERTYJAMALUDIN ABU BAKAR

SENIOR MANAGER

MARDITECH CORPORATION SDN BHD

© JAMALUDIN ABU BAKAR (2010)

OBJECTIVES

� To present the overall picture of IP in

comparative manner and in relation to the

governing statutes

� To share the experience in technology

commercialization


2

16/03/2010

2

OUTLINE

� PART 1: IP

� What is IP

� IP international regimes

� IP local regimes

� PART 2: COMMERCIALIZATION

� Mode of commercialization

� Case Study


3

PART 1: INTELLECTUAL

PROPERTY


4

16/03/2010

3

� What is Intellectual Property?

� IPR – Intellectual Property Rights

� IP Protection

� IP exploitation

� IP commercialization


5

� Are there IPs in these examples?

� What type of IPs?

1. 2. 3.

4. 5.


6

16/03/2010

4

DEFINITION OF IP

� Black’s Law Dictionary: “A commercially valuable product of the human intellect, in a concrete or abstract form”.

� Colston, C in Principles of IP Law: “IP is the results of human creativity” – new ideas applied to as many ways - as human man can conceive – embodied in familiar things (books, designs etc).

� WIPO: “The term intellectual property refers broadly to the creations of the human mind. Intellectual property rights protect the interests of creators by giving them property rights over their creations.

� TRIPS Agreement: IP refers “to rights in creations of the human mind which arise under the laws of patents, copyrights, trademarks, trade secrets, unfair competition and related laws.”


7

According to WIPO:

� Intellectual property relates to items of

information or knowledge, which can be

incorporated in tangible objects at the same time

in an unlimited number of copies at different

locations anywhere in the world.

� The property is not in those copies but in the

information or knowledge reflected in them.

� Intellectual property rights are also

characterized by certain limitations, such as

limited duration in the case of copyright and

patents.


8

16/03/2010

5

� IP Rights means EXCLUSIVITY & MONOPOLY

� relates to exclusive & monopolistic rights given to the

owner or rights’ holder by the government (the law)

and exclude others from doing the same

� IP documents are public domain except for

Confidential Information/ Trade secret

� However, IP Rights are territorial, except for

Copyright & Confidential Information/ Trade

Secret


9

TYPES OF INTELLECTUAL PROPERTY

IP

1. PATENT

S2.

TRADE MARKS

3. COPYRIG

HTS

4. INDUSTR

IAL DESIGNS5.

INTEGRATED

CIRCUIT

6. GEOGRAPHI

CAL INDICATION

S

7. NEW PLANT VARIETI

ES

8. TRADE SECRET

S


10

16/03/2010

6

REGULATORY FRAMEWORKInternational level:

Ips International

conventions

1 Patent Paris Convention &

TRIPs Agreement

(Trade Related

Aspects of

Intellectual

Properties)

2 Industrial

Design

3 Integrated

Circuit

4 Trade Marks

5 Copyright Berne’s Convention


11

REGULATORY FRAMEWORKNational level:

IP Statutes

1 Patent Patent Act 1983

2 Industrial Designs Industrial Design Act 1996

3 Integrated Circuit Integrated Circuit Act 2000

4 Trade Marks Trade Marks Act 1986;

Passing-off; Trade Description

Act 1972

5 Copyright Copyright Act 1987

6 Geographical

Indications

Geographical Indications Act

2000

7 New plant varieties New Plant Varieties Act 2004

8 Trade secret Common law


12

16/03/2010

7

SUBJECT MATTER OF PROTECTION

IP Subject matter

1 Patent An idea of an inventor which permits in practice

the solution to specific problems in the field of

technology; may relate to process or product or

both

2 Industrial Designs Features of shape, configuration, pattern &

ornament that appeal to the eye

3 Integrated Circuit 3-dimensional disposition of an integrated circuit

4 Trade Marks Device, brand, heading, label, ticket, name,

signature, word, letter, numeral, or any

combination

5 Copyright Literary , musical & artistic works; films; sound

recordings; broadcast– irrespective of quality

6 Geographical

Indications

An indication which identifies goods in a

territory whereby the quality or characteristics

attributable to place of origin

7 New plant varieties

8 Trade secret Confidential information, trade secrets© JAMALUDIN ABU BAKAR (2010)

13

CONDITIONS OF REGISTRATION/ PROTECTION

IP Conditions

1 Patent i. New/ novel to the world; ii. involves inventive

steps; iii. industrial application; if does not involve

inventive steps: utility innovations/ petty patent

2 Industrial

Designs

New in Malaysia

3 Integrated

Circuit

Original, even if it is identical to others; fixed on

material form or incorporated into integrated circuit

4 Trade Marks ‘New’ in Malaysia, not identical or similar to well-

known marks

5 Copyright Original to the world; reduced to material form; no

registration


14

16/03/2010

8

DURATION OF PROTECTION

IP YEARS

1 Patent 20 , from date of filing

2 Industrial Designs 5+5+5

3 Integrated Circuit 10 years

4 Trade Marks 10 years, renewable (almost forever)

5 Copyright (a) Content of literary, musical & artistic

works: author’s life + 50;

(b) Published works: 50

(c) Sound recordings, broadcast, films; works

of government: 50

6 Geographical

Indications

10 years from date of filing, renewable

7 New plant

varieties

25 years from date of filing for registration; 15

years fro traditional and farmers’ varieties

8 Trade secret Forever if it remains as trade secret


15

PATENTS

� Nationally governed by Patents Act 1983

� At international level by TRIPs (Trade Related

� Relates to INVENTION

� Definition of INVENTION (s12)

� (1) means an idea of an inventor which permits in

practice the solution to a specific problem in the field

of technology

� (2) may be relate to a product or process [or both]


16

16/03/2010

9

� Patentable inventions (s 11):

� An invention is patentable if

� It is new,

� Involves an inventive step and

� Is industrially applicable

� New means novel to the world, not anticipated by

prior arts (s14)


17

� Non-patentable invention (s13)

� Discoveries, scientific theories and mathematical

methods;

� Plant or animal varieties…………………… other than

man-made living micro-organisms, micro-biological

processes and the products of such micro-organism

processes;

� Schemes, rules or method for doing business,

performing purely mental acts or playing games;


18

16/03/2010

10

� Grace period/ priority period

19

GRACE PERIOD PRIORITY PERIOD

12 MONTHS

WHERE PUBLIC

DISCLOSURE IS ALLOWED

12 MONTHS

FILING TO OTHER

COUNTRIES WITH

SAME FILING DATE

FILING DATE


� PATENT

APPLICATION &

GRANTING

PRODEDURE

20


16/03/2010

11

PART 2:

TECHNOLOGY COMMERCIALIZATION21

ROUTES OF COMMERCIALIZATION

B

A

D

C

1. Making & selling end products

2. Service provider

3. Leasing equipment & components

4. Joint-venture

5. Makings & selling with license to use

6. Licensing rights to make, use and sell

7. Franchising technology-based services

11. Publication

10. Multiple non-exclusive

licenses

8. Value-added reseller relationship

9. Exclusive distributorship

HIGH THE EXTENT OF CONTROL OVER

TECHNOLOGY UTILIZATION

LOW

COMPLETE

NONE

TH

E E

XT

EN

T O

F

TE

CH

NO

LO

GY

SH

AR

ING

B


16/03/2010

12

Intellectual Capital Management: Composite View

23


CASE STUDY: OMEGA-3 EGGSOmega-3 Formula Designer Eggs

24


16/03/2010

13

A kind of Essential Fatty Acids. It is polyunsaturated

- Widely researched by scientist all over the worldsince

20-30 years ago (Eskimo and Japanese)

- In 1982 Nobel Prize was awarded to threescientists, Sune, K. Bergstrom, Bengt. I.Samuelsson and John R Vane on the physiomechanism of unsaturated fatty acids informingprostagladins.

CASE STUDY: OMEGA-3 EGGSWhat is Omega-3?

25


- Found mostly in cold water fish (such as salmon, tuna, cod)

mackerel ,etc.) and some plants (walnut, flaxseed, soya bean,

green leafy vegetables etc.)

- Helps to reduce risks of heart attack, stroke, hypertension,

rheumatoid arthritis, triglyceride and some cancers

- Vital to the development of cells in our eyes and brain

especially children at the stage of development.

- Mother milk contains Omega-3 but not cow’s milk

CASE STUDY: OMEGA-3 EGGSWhat is Omega-3?

26


16/03/2010

14

The technology commercialization partner to produce and markettheir latest product - Omega 3 eggs after 5 years of research

MARDI needsA ready production facility, marketing strength andchannel of distribution.

MARDI has i) Years for research in agro-science

ii) Pool of scientists

iii) Reputable organization in agriculture sector

The technology commercialization exercise was represented byMARDI through Marditech Corporation Sdn Bhd

CASE STUDY: OMEGA-3 EGGSOmega-3 Project Development

27


200-400 mg Omega 3 (5 x more)

2.5-3.0 mg Vitamin E (4 x more)

20-25 mcg Selenium (2 x more)

Natural caretenoids

(No synthetic colouring in the yolk)

CASE STUDY: OMEGA-3 EGGSLTK Omega Plus Eggs

28


16/03/2010

15

- Before 1998 there wasn’t any branded and value added eggs

- Highly fragmented, big farms such as LTK, Huat Lai, Leong Hup,Confarm, Lay Hong, TPC does not command more than 5-6% then.

(current scenario has changed as some farms have expandedgreatly through leverage and acquisition, and one big farm ceasedoperation)

- Rather saturated, but developed in terms of technology for bigfarms

-Smaller farms (daily production of below 50,000 eggs) facedmodernization and successor problem.

CASE STUDY: OMEGA-3 EGGSCharacteristics of the Egg Industry

29


LTKM Berhad was listed on KLSE Second Board 28th Mac 2000

Wholly owned subsidiaries,

1) LTK (Melaka) Sdn BHd

- Fully integrated layer farm atDurian Tunggal, Malacca

- 448 acres of land

- Established in1984

- Current daily production slightlyless than 1 million eggs a day.

2) LTK Bio-Fer Sdn Bhd

Turning chicken manure into fullyfermented organic ferliser

YE 31 Mac 05, group revenue ofRM76 million, PAT RM4.57m.

CASE STUDY: OMEGA-3 EGGSThe Commercializer

30


16/03/2010

16

� Daily output - 18.8 million eggs(est year 2004)

of which about 2.2 million isexported to Singapore daily

� Annual market value estimateRM1.4 billion

� Matured and very low growth(2%-3%)

� Up to 1998,it was a totalcommodity product

( no brand and pricedifferentiation)

CASE STUDY: OMEGA-3 EGGSBackground of the Egg Industry

31


- Eggs are just basically a commodity. One price One product

- 1998 - Two medium size farms launched ‘low’ cholesterol eggscaught the attention of the authorities (Ministry of Health)

- One was told to stop and the other survived with the change to ‘Lower Cholesterol eggs’.

- LTK began to explore the possibility of added value eggs todiversify the product range.

CASE STUDY: OMEGA-3 EGGSCharacteristics of the Egg Industry

32


16/03/2010

17

LTK’s Predicament

�Lack of technical know-how in nutritionalresearch

�Needs credibility for product claims

�Time is running out

CASE STUDY: OMEGA-3 EGGSBusiness Opportunity

33


Asset available

� A farm ready for production

� Experienced management in layer hen farming

� Established marketing channels


Farm Wholesalers Retailers Consumers

34


16/03/2010

18

As a Results,

After 6 months of discussion, mutual visits and negotiation

A licensing agreement was signed on 1st August 28.

LTK Omega Plus

was launched on14 July 1999


35


PROJECT SCHEDULE

36


16/03/2010

19

SALE OF LTK OMEGA PLUS EGGS

37


ROYALTY

38


16/03/2010

20

� LTK has to ensure that.

• Separate feed for separate flock of hens

• Omega-3 eggs are separated from the regular ones

• Omega-3 eggs are ‘stamped’ and marked separately

• Omega-3 eggs are packed separately

• Consumers know what they are paying for

• The products benefits have to be communicated to the consumers

through PR exercise promotion and advertisement.

CASE STUDY: OMEGA-3 EGGSHow was it Done?


•MARDI /Marditech has to ensure that

• the nutritional value in the eggs are consistent with years of

research (with special feed formulation - flaxseed added in

additional to corn, soybean and palm oil)

•LTK Omega Plus is a trustworthy / products

CASE STUDY: OMEGA-3 EGGSHow was it Done?


16/03/2010

21

• For LTK

• The first branded eggs for the company - Market leadership

• the first widely published eggs - market leadership

• it more predictable margin per egg - profitability

• attract new wholesaler/customers - market share

• maintain wholesalers’ loyalty - market share

• creating new market share - revenue

CASE STUDY: OMEGA-3 EGGSAchieving a Win-Win Situation


• For MARDI/Marditech

• The research could be put into commercial use.

• Generate revenue for the organisation for future

research etc.

• The research results could actually benefit the

consumers

• Further recognition from the public through the

promotion and

advertisement that LTK carried out.

CASE STUDY: OMEGA-3 EGGSAchieving a Win-Win Situation


16/03/2010

22

• It has created a new segment in the egg market and at the

same time provides additional value to the consumers

• The launch of LTK Omega Plus eggs has brought

excitement

to the egg industry

• Other than additional revenue to LTK and MARDITECH

it has attracted other farms to have the ‘me-too’ products.

• It has helped to spur the supporting industries in the

economy

such as advertising and packaging.

CASE STUDY: OMEGA-3 EGGSLTK-Marditech - > 11 years Technology Partnership


• Intellectual Property drives innovation and national

economy

• IP Rights protection is in place through various acts and

statutes

• IP registration is important for success of

commercialization, although it does not ensure success

• Various routes of commercialization can be considered by

IP owner

• To ensure success, IP owner need to undertake three

important assets:

•Intellectual Capital

• Structural Capital

• Business assets

SUMMARY


16/03/2010

23

45

Documents

Intellectual Properties