This document provides an introduction to intellectual property rights and different types of intellectual property. It discusses patents, copyrights, trademarks, trade secrets and other forms of IP. For patents specifically, it describes what can be patented, the claims process, prior art, and types of patents including utility patents and industrial designs. It also includes sections on documenting inventions, conducting patent searches, case studies of companies leveraging IP, and dos and don'ts of IP.
2. Contents
1. Types of Intellectual Property
2. Patents
3. Q & A’s
4. Case Studies
5. How to Document your Invention
6. How to do a quick IP Assessment
7. Do’s and Don’ts
6. Patents
A patent is an intellectual property right
Public Limited that is granted by a government
Disclosure Monopoly applies within the territories and
possessions of the government
expires twenty years from the filing date
Best Territorial
A patent gives its owner the right to
Mode Right exclude others from making, using,
offering to sell, or selling the invention
covered by the patent or from importing
Exclude the invention covered by the patent
20 Years
Others
A patent does not give the owner the
affirmative right to practice the
invention claimed in the patent
7. What Can Be Patented
Process or Method
Novel
Machine or Apparatus
Non- Obvious
Article of Manufacture
Utility
Composition of Matter
Chemical Compounds
Physical Mixtures
Improvements of Any of the Above
8. Patents
Improvement or new invention in any technology area
Utility Patents including genetically modified organisms. Has a life of 20
years from the date of filing
Industrial Design Ornamental aspects of invention. Life of 14 years from
grant in US.
Plant Breeders New varieties of plants made by combining two or more
Rights
different types of plants.
9. Patent Claims
The “Claims” of a
patent define the
scope of the
invention. The claim
language defines the
“edge” of the
property right.
10. Prior art limits the scope of
patent claims
The requirement
for novelty means
that a patent
claim cannot
include what is
already in the
prior art.
14. Case Study
Gillette Mach 3 is protected by a
strong portfolio of more than 35
patents (including patents on the
manufacturing process), which
deters competitors from entering
the “triple blade razor market”.
15. Case Study
“FIT Biotech Plc acquired assets of Xenerate Ab and starts the
development of novel gene technology based vascular devices
FIT Biotech Plc announced today that it starts a development of new
biocompatible cardiovascular devices, applying its proprietary Gene
Transport Unit (GTU®) technology. FIT Biotech acquired the intellectual
property rights and other assets of Xenerate AB, a company combining
medical devices and gene therapy. Together, FIT Biotech's knowledge in
DNA plasmids and gene therapy, and Xenerate's background in
cardiovascular device technology, will create a unique platform for the
development of medical devices for the treatment of cardiovascular
diseases.”
Source: http://www.fitbiotech.com/en_012303_1.html
16. Case Study
“Exelixis Acquired Key Plant Technology, Intellectual
Property And Plant Biology Capabilities Through Acquisition
of Agritope
The acquisition of Agritope provides Exelixis with key intellectual
property, substantial additional technology including expertise in
additional model systems, and extensive experience in plant biology.
Combined with Exelixis' existing expertise in bioinformatics, genomics,
and complementary plant model systems, this program gives Exelixis
a superior plant genomics program.”
Source: http://ir.exelixis.com/phoenix.zhtml?c=120923&p=irol-newsArticle&ID=779040&highlight=
17. Case Studies
Transmeta VocalTech Communications
IP on Low power semiconductor with Israeli based NASDAQ listed company
focus on reducing power in VOIP domain wanted to raise
consumption on electronic money from the market. Holds 22
devices(140+ patents) patents.
11 patents were sold for $12.5 Karo Millennium
Got Acquired by Novafora for $255.6 million
JP LLC, shares jumped 11 percent on NASDAQ
after this transaction
Telcorida Irvine Sensors
A telecommunication R&D firm with A California based company engaged
800+ patents in creating products in the electro-
optical cameras, image processors,
Got funding from an Invention and private equity and stacked chip assemblies
investor firm for a "long term commitment”, the
new investor will license 500 of their inventions IP licensing to Aprolase Development Co.
worldwide for $9.5 million
20. Documenting Inventions
Write down your experiments! (especially the
ones showing structure of the invention and
how to make the invention) = “reduction to
practice”
Also write down significant ideas! (ditto!) =
“conception”
21. Documenting Inventions
Periodically show your notebook to someone
else in the lab who is not an inventor (but
who has an obligation of confidentiality and
can understand what you are telling them).
Have that witness sign and date the pages and
indicate that they have “read and
understood "the content.
22. Conduct a quick due diligence for patentability
PATENT SEARCHES
23. A Few Patent Search Resources
Google Patents
USPTO
WIPO
Espacenet
Free Patents Online
25. Do’s and Don’ts
1. Public Disclosure without NDA
2. Non Dated Documents for invention disclosure
3. Communicating to third party
4. Communication protocols
• Comparing with others’ invention
• Stating opinions about prior art
• Using words like “infringe” or “copied”