J-Barnett-World-IP-Day-2017

Understanding
Intellectual
Property
J Barnett
[email protected]
Acknowledgements
 Slides drawn from material I developed for other
courses e.g. SARIMA Basics of Technology
Transfer Office Management and NIPMO’s IP
Wise™ course.
 SARIMA
• Southern African Research and Innovation
Management Association
 NIPMO
• National Intellectual Property
Management Office
Outline
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Commercialisation examples
Introduction to Intellectual Property
IP Ownership
Patents
• Patenting process
 Copyrights
 Commercialisation
Commercialisation examples
Commercialised:
Longlife roses and foliage (Chemistry)
 Chemical preservation of flowers
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Flowers and foliage last one year
Patented
 Commercialisation
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Entrepreneur worked “at risk” for 2 years
NMMU assigned patents to company in exchange for
shares in the company
Early stage technology – many issues
 Venture Capital funding from Industrial
Development Corporation
 Status
•
•
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Factory in Johannesburg; employs 30
staff, mostly previously unskilled
Sales good – potentially more than $2M
per year from export orders
Supply issues – moving bulk of production
to Kenya
Commercialised:
Zinc oxide replacer (Chemistry)
 Replacement of zinc oxide in rubber
•
•
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Three inventions by student during Doctoral
studies
National phase patents granted after PCT
Fourth patent application filed
 Commercialisation
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Student started company and sold shares
to raise money
Started too early!
NMMU assigned patents to company in
exchange for shares in the company
 Seed funding provided by university
 Current status
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In NMMU incubator
NMMU staff helping get company running
again
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Governance issues
Selling product in EU, China
Commercialised:
MaXhosa by Laduma™ (Fashion)
 Textile design student needed assistance
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Knitwear based on Xhosa designs using wool and
mohair
Had won international awards and had publicity in all
major magazines
 NMMU provided seed funding for machines,
wool, etc.
•
•
Provided mentorship, space
Protected by design registrations
 Challenges
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Toll manufacturing
Supply chain
 Status
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Knitwear sold in London and Cape
Town and via web
Major successes at shows
About to be commercialised:
Weldcore (Mechanical engineering)
 Process for in situ material analysis
and repair
• Tool for removing sample
• Machine for repair using friction welding
• Patents (2 SA, 1 US, 1 EU)
 Have used successfully at Eskom,
Sasol
 Have passed US regulatory hurdles
 R30M spent to date on development
over 12 years
 Have created spin off company to
commercialise
Introduction to IP
What is Intellectual Property?
 IP encompasses
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Expertise / Know-how
Trade secrets
Registrable inventions (patents)
Designs
Trade marks
Copyrights
Plant Breeders’ Rights
Protected by law
 Which have come about through the mental
efforts, insight, imagination, expertise and
creativity of humans
Intellectual property is an asset
 IP is an intangible asset that can be treated as if it
were fixed property (e.g. a house)
•
•
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It can be owned (≈ title deed owner)
Someone can buy it (≈ offer to purchase)
It can be leased (license agreement ≈ rent)
It can be inherited
 IP rights protect the interests of creators by giving
them property rights over their creations
Types of IP
Registerable property
Patents (registerable inventions)
Registered designs
Non-registerable
(does not mean not protectable)
Films
Music
Trade marks
Plant breeders’ rights
Paintings and
sculptures
Written works
Copyrightable
Works
Computer
programs
Sound recordings
Trade
secrets
Know
how
Confidential
Information
Registration of IP
Registerable property
Non-registerable
(does not mean not protectable)
• Registration of rights required at
National/regional administrative
offices
• No registration of rights required
• SA complies with international IP
Conventions
• SA complies with international IP
Conventions
• Protection arises automatically
Products often include a combination of both IP forms
Overview: IP protected by law
 Patents protect the technical principle of an
invention that is new, inventive and has utility
 Copyright protects work reduced to material form
from being copied
 A design protects the shape of an article
 A trade mark protects a trading name or logo
 Plant breeders’ rights protect the right to
produce, propagate, sell, import and export a new
plant variety
IP ownership
Who owns IP?
 It depends:
• If employed, depends on contract of employment
•
inventions “in course and scope of employment” generally
owned by employer
• If contracted, depends on contract
•
copyright generally owned by person commissioning work
• If a student, owned by university
 But in a publicly funded institution determined by
• Intellectual Property Rights from Publicly Financed
Research and Development Act in first instance,
• Then IP Policy
NMMU’s IP Policy
 IP Policy based on IPR Act
• Intellectual Property Rights from Publicly Financed
Research and Development Act, 2008
•
“The object of the Act is to make provision that IP emanating
from publicly financed research and development is identified,
protected, utilised and commercialised for the benefit of the
people of the Republic”
 NMMU has to own IP arising from research using
public funds
Ownership and benefit-sharing
 The University claims all IP devised, made or
created
• By staff members of the University in the course and
scope of their employment (contract and permanent)
• By student members in the course of or incidentally to
their studies
•
Undergraduate “waiver”
 Contracts with external parties must specify who
owns the IP
 Inventors and creators can benefit from IP
• Inventors and creators get share of income if
commercialised
Patents
What is a patent?
 It is a right granted by a State
• to an inventor; or
• to the owner to whom the inventor has assigned his
invention.
 It gives the owner a monopoly which excludes others
from making, using or selling their invention without
the owner's permission
•
It is a negative right
 In exchange for this protection, the rights holder must
fully disclose the invention
• Purpose was to advance knowledge and make sure it was
not kept secret by inventors
 The monopoly is 20 years from the priority date
Key words to know
 Priority date
• Date of first filing
• Usually the date of filing a provisional patent application
 Inventor
• The person or people who came up with the inventive steps
• Must be a person and not institution / company
• Determining inventorship is a legal requirement - a patent
can be invalidated if an inventor has been omitted or if
somebody who is not an inventor is listed
 Applicant
• Owner / person or institution / company that is applying for
patent
• Can be the inventor
• Can be an employer if inventor assigns invention
What is patentable?
 A product, process or service that is:
• New
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Absolute novelty is a requirement
Must not have been disclosed to the public anywhere in the
world in writing or verbally
Must not exist anywhere in the world prior to priority date
• Inventive
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Not deemed to be obvious in the light of the prior art
Someone with similar skill and experience should not have
deemed the innovation to be obvious next step
• Has utility
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Invention must have industrial use
Exclusions
 Not everything is patentable!
• Presentation of information
• Business methods or games
• Software in many instances e.g.
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Software code is protected via copyright
A “technical effect” is patentable i.e. the effect of the code. The
code is protected by copyright only
• Medical procedures
• Animals, plants and living organisms except for
products of a microbiological process
• Discoveries
• Mathematical & scientific formulas
Worldwide patent?
 There is no such thing as a World Wide patent!
• Applications need to be filed in individual countries
• Protection is in individual countries
 Decision based on:
• Markets where competitors and/or growth opportunities
are
• Markets where there is a strategic advantage to file
• Territories where the invention will be manufactured
Patent searching
 Do not assume your invention is new - do a patent
search
• USPTO http://patft.uspto.gov/
• WIPO http://www.wipo.int/pctdb/en/
• EPO http://ep.espacenet.com/
 Good introduction on www.mypatent.co.za
Should I patent or not?
 Patent ≠ Making money
• Think about the costs vs. benefit of patenting – can you
just keep it a secret?
• Patent strategically – do you need it for a potential
licensor?
• Can you afford to take infringers to court?
• Time frame is important
 Get advice
• A bad patent is not worth the paper it is written on
Remember
 You must be first to file to be protected BUT do
not file too early
 Disclosures are a major problem! The information
must not be in the public domain before filing
 Your idea is not valuable: ideas have
value only when implemented
Patenting process
Typical patenting process
Step 1:
Step 2:
Step 3(a):
Step 3(b):
Step 4:
Provisional
patent
application
Provisional patent application
Decision point
PCT application
National phase applications (direct)
National phase applications (after PCT)
PCT
application
Decision point
National phase
applications
(direct)
National phase
applications
(after PCT)
Step 1: Provisional patent application
 File a provisional patent application
• In SA, file at Companies and Intellectual Property
Commission (CIPC)
• Can be filed by the applicant directly – no need for a patent
attorney
• Does not have to be in any particular format
• It is NOT a Provisional Patent – it is an application
 Gives you
• A priority date
• 1 year from priority date to decide if you want to start the full
patenting process
 Is not disclosed to the public* so you can keep it
secret
• *in SA
Timelines for Patenting process
National Phase
Application
(e.g. USA)
Granted Patent
-USA
Validate –
Germany
PCT Application
Provisional
Patent
Application
Regional
Application
(e.g. EPO)
Granted Patent
-EPO
Validate – Italy
Validate - Spain
Complete
Application - SA
Priority date
Source: NIPMO
12 Months
Granted Patent
- SA
30 Months
Dependent on
examination,
typically
3 to 7 years
Copyrights
What is copyright?
 The right given to creators / authors / owners of
literary and artistic works enabling them to control
the use, expression and distribution of creations
 If you own a copyright then you can prevent
others:
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Making copies or reproductions of the work
Making it available for the first time to the public
Performing it in public
Letting it or offering it for sale, without your consent
What is covered?
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Literary works including databases
Musical works
Right lasts 50 years
Artistic works
after death of author
Cinematograph films
Sound recordings
Broadcasts
Published editions
Computer programmes
Right lasts 50 years after
first public release
Scope of protection
 Protects the expression of a work, not the idea
• Work has to be reduced to material form
• Protects the manner in which an idea is expressed
• Must be original but does not have to be highly creative
 Cannot be used where works are intended to be
produced in a manufacturing process e.g. clothing
designs
 In software, copyright protects the actual code,
and not the application of the software
Registration of copyrights
 No registration necessary - it arises automatically
• Some forms may qualify for registration (e.g.
cinematograph films)
• In the US, copyrights can be registered
 Write the following
• © [insert year], [owner]. All rights reserved
Copyright ownership and infringement
 First person to render to physical form has right
• Don’t disclose!
• Keep proof of date/creation
 Owner may be person commissioning / employer
• Author / creator may retain moral rights – cannot be
modified without permission
 Infringement must prove work is substantially
similar
• Cannot infringe if you express the idea and not the
expression of the idea
Commercialisation…
Commercialisation
 Introducing a new product or method of producing a
product into the market
• Have to identify the applicable market
• Have to sell the invention to that market by positioning it
 It doesn’t necessarily need to have a monetary
return, but should be sustainable
 The commercialisation route chosen will depend on
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Financial investment required
Potential return on investment
Nature of the technology/product/process
The target market and how it can best be reached
The stage of market development
The availability of management
The aspirations of the inventor
How do I commercialise?
 Give a license for your IP to a third party
• Exclusive or non-exclusive
• Should have performance clauses
 Create a company
• Need more than one product
• 5% of something is worth more than 100% of nothing
Licensing
 A license gives someone rights to use IP that they
don’t own
 A licensing agreement is a contract between
• an intellectual property rights owner (licensor) and
• another who is authorised to use such rights (licensee)
• in exchange for an agreed payment.
 The licensor retains ownership of the intellectual
property rights
• A non-exclusive license is when you grant more than one
licence for a piece of IP
• An exclusive license is when you grant defined exclusive
rights to the IP to one licensee
•
Can be for different territories, applications, etc.
New company preferred if
 Invention is a platform technology that may have many
products
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Spin off company more likely to exploit all potential applications of
the technology, while an established company will more likely focus
on a single addition to its existing product line
 No existing industry making similar products
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Difficult for a new company to compete in an established market
unless the technology is overwhelmingly superior
 The market is large enough to justify the risk, particularly if
require substantial investment in development
 Strong IP protection exists in the country in which the spin
out exists and/or in the major markets to which it intends to
export
 At least one credible inventor will join the company
Our incubator: Propella
 Since November 2015
• 28 incubatees
• Workshops held, mentoring in progress
• Hackathons