Research Methodology - Ip.ppt 2j2e34

Understanding the Intellectual Property System

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Contents • Introduction to Intellectual Property (IP) Rights • Polytechnic – Industry Collaboration • Interesting case law

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Exclusive rights, apart from Government licenses, include • • • • • • •

Patents Trademarks Copyright Industrial Design Rights Geographical Indication Rights Layout Design of Integrated Circuits Trade Secrets

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• Patent • Industrial Design (Design Patent) • Trademark (VIAGRA) (including colour)

PATENTS Exclusive rights for an invention - provides a new way of doing something, or offers a new technical solution to a problem • Product • Improvement to existing products • Process, method of manufacture • Improvement, modification to a process or method

• New non-obvious use of known product (mainly chemical products)

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Examples Urea is produced through several reactions: N2 + 3 H2  2 NH3 2 NH3 + CO2  NH2COONH4 (ammonium carbamate) NH2COONH4  H2O + NH2CONH2 ONE-STEP (NCZ method) on urea synthesis:

N2 + (CO + 2H2) → NH2CONH2 One-Step Urea Synthesis System And Method For OneStep Urea Synthesis (PI 2011001512)

Theoretical Calculations CO2 + 3H2 + N2 → NH2CONH2 + H2O (∆H = -225.4 kJ/mol) CO + 2H2 + N2 → NH2CONH2 (∆H = -222.61 kJ/mol )

Substance

∆H

CO CO2

-110.5 -393.5

H2O NH2CONH2

-285.83 -333.11

Examples Reactive Low Molecular Weight Natural Rubber as A Toughening Agent in Epoxy Resins (PI20055057).

A Method of Synthesizing Natural Fibre Reinforced Polyester Composites from Recycled Polyethylene Terephthalate (PET) and the Product Synthesized Thereof (PI20070596)

TRADEMARKTM What constitutes as a TM? • Anything that can be graphically represented: word, numbers, signs, symbols, pictures, graphic designs, logos, caricatures etc

• Word mark • Device mark • Composite mark

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KODAK (Cameras)

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INDUSTRIAL DESIGN • Mainly consumer products • Shape, ornamentation, patterns that appeal to the eye • Not dictated by function or engineering requirements

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GEOGRAPHICAL INDICATIONS Darjeeling tea Persian carpets Scotch whiskey

Langkawi marble Champagne sparkling wine

Basmati rice

Kanjeepuram sarees 13

COPYRIGHT

Original works; including the right to copy, distribute and adapt the work 14

Comes into existence upon REGISTRATION

> Patents > Industrial Designs > Trademarks > Geographical Indications

NO REGISTRATION required

> Copyright > Layout Design of Integrated Circuits

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REGISTRABLE Intellectual Property Rights • are granted by the Government of each country • have a fixed period of duration • rights granted to foreigners must equal to rights granted to local businessman (no discrimination against foreigners) • require positive action by owners of IP rights (no registration no rights)

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Examples Paracetamol (US Patent) was synthesized in 1877 at John Hopkins University. First marketed in US in 1953.

Immitate Generic products: • Milidon • Panadol • Uphamol

Exclusive Rights Give the Owner Rights to... • • • • • • • •

manufacture the product use the technology use the industrial design on product use the trademark, geographical indication, copyright, layout design of I.C. on products grant IPR licenses to third parties derive income obtain cross-licenses get stronger negotiation position against third parties

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Without Protection Unless protected according to law, there are no rights to stop others using the invention, innovation or industrial design. Others can use your technology without your consent. Generally, other party will wait until you create the market, then they will introduce their product.

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Without Protection All risks and costs borne by you … years of research and development costs … initial market introduction costs … regulatory approval expenditure will be taken advantage of by other parties

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Why are IP rights important in business? •

Why should academics be interested in IP Rights? IP rights are insurance against destruction by competitors after your R&D product is successful in the market!

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R&D Results are published – isn’t Copyright good enough a weapon? R&D Results, if published, fall into the public domain – No property rights except Copyright

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Why are IP rights important in business? •

Isn’t recognition as author of peer-reviewed articles in reputed journals good enough? IP filed is also an insurance protection for investors. No investor would want to buy or license the technology. No exclusive rights.

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University – Industry Collaboration

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• Until the 1990s Universities saw teaching as a primary role; academic research was secondary and commercialization of useful results incidental • Since 1990s policies have changed but attitudes are shifting slowly

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• Incorrect assumption Once research results are published, any interested party can take steps to commercialize the teachings.

• Truth is… there will be no investors until he/she is guaranteed some sort of exclusivity and rights to the technology

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Now businesses or even universities are seeking IP rights for their research results 26

No.

Applicant’s Name

Total No. of Applications (2007)

Total No. of Applications (2008)

Total No. of Applications (2009)

1. 2.

UTM

58

132

251

UPM

25

53

71

3

UMP

0

4

46

4.

UM

17

18

42

5.

UKM

23

23

41

6.

UIA

9

12

31

7. 8.

USM

3

4

29

UiTM

16

11

27

9.

Uniten

0

4

10

10.

UTHM

0

6

7

# Source: Intellectual Property Corporation of Malaysia (MyIPO) 27

Issues confronting University – Industry Collaboration 1. University research results are not immediately ready for commercialization. Industry is not prepared to invest further. “Instant Noodle approach”

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(Cont’d)

2 (i) Industry not aware of Universities’ R&D Results (ii) No active promotion of Universities’ R&D Results

(iii) ive rather then proactive approach

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(Cont’d)

3(i) Universities do not seek out foreign partners (ii) Not all R&D Results are stand alone or “one product one patent” (iii) Need “bundling” of patents for a product

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University – Industry Collaboration • t R&D agreements • Licensing of patents • Participating in government-sponsored t research programmes • Informal networks • Universities must give a complete product package • Role of Technology Transfer office / Research Management Centre in commercialization 31

ICC / TLOs • Should actively identify potential licensees, collaborators, t Venture Partners and market the technology • Use of patent database to identify right person • Need for proactive university scientists willing to cooperate with industrial s for discovering market applications of their scientific findings 32

• Universities need to work to Industry’s work culture and timelines • Contrasting cultures • Universities “open” culture. Urgency to publish research results. • Industries work on secrecy – only publish if necessary • University deadlines are not critical • But industry deadlines to meet production / marketing targets are critical

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• Industries still totally not aware of services of Universities • Still considered by SMIs as mere teaching institutions • Perception? • Lack of publicity of Universities’ research achievement • Media relations need improvement?

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• Increased costs of research in private sector • Industries are looking to Universities for t research • Can Universities rise up to the opportunity?

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Case Study

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University of Western Australia vs. Dr. Gray History:  Dr. Gray invented a anti-cancer drug

 Left UWA and set up his own company  The drug became successful and UWA sued Dr. Gray for damages  UWA lost in High Court  The decision was appealed to Full Federal Court 37

University of Western Australia vs. Dr. Gray Held:  Dr Gray did not have a duty to invent  There was no effective express term in Dr Gray’s contract about IP ownership — the reference to the University’s Patent Regulations was not effective  There was no implied term in Dr Gray’s employment contract that UWA owned the IP  Dr Gray did not owe UWA a fiduciary duty

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University of Western Australia vs. Dr. Gray It means:  Universities may need to review their employment contracts on ownership clauses, and whether their IP regulations are valid and in practice, and  Companies dealing with universities or academics should consider ways to ensure ownership issues are clear and not contested.

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No questions?

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