ip on a coffe break... be inventive... be creative... be free
DESCRIPTION
Milana VItas, RT-RK Computer Based Systems, Zaštita autroskih prava i upravljanje intelektualnom svojinom CRINSS 2013 Creative Industries Conference, Novi Sad, Serbia Konferencija kreativnih industrijaTRANSCRIPT
IPR protection - submission of patent applications at University
PCT Group of
Be creative...
we begin…
You will learn about the four main types of
intellectual property rights (IPRs) administered by the IP
Center at University of Novi Sad. This IP Center plays a key
role in supporting University’s innovation and productivity
by delivering and granting quality and timely IP rights.
Before
IP at a glanceUniversityPatents
Trade-marks
Copyrights
Industrial Designs
What is a prior art?•Any information available to the public, which may be identical to your invention or so similar that the publicly available information could be easily modified to develop your invention.
•Published book, periodic journal, newspaper, conferences, trade fairs, exhibitions, etc.
•Any found info source can be cited as Prior Art.
•Check if there is any prior art (including search using commercial and/or public (EPO, WIPO, USPTO) web sites
•File a patent application before publicly disclosing the details of the invention!!!
Patents SPECIFIC CRITERIA DEFINED BY LAW
Novelty, Non-obviousness, Utility
BURDEN OF PROOF ON THE APPLICANT
Applicant must prove in the examination that the invention meets the criteria
CAREFUL EXAMINATION
Technically qualified examiners
Review of the “prior art”
May take two to five years
EVERY COUNTRY HAS A DIFFERENT SYSTEM
Patents are granted by national offices
One invention may differ in coverage from country to country
Patent cooperation Treaty and the European Patent Office
Patents TERM OF PATENTS
20 years from date of application
Most countries have similar terms (harmonization)
COST OF A PATENT
Expensive to apply - legal costs and fees
Expensive to maintain - maintenance fees
“FIRST-TO-FILE” vs. “FIRST-TO-INVENT”
U.S. is sole major “first -to-invent” country
May mean an invention in Europe will not get a U.S. patent
Criteria for Patentability• NEW- no “prior art” - a novel invention has not been
publicly disclosed has not been made or sold in commerce
• NOT OBVIOUS- not obvious to a person “skilled in the art no “prior art” which would suggest the invention
• USEFUL- has a purpose
What is Patentable?May include anything “under the sun” made by man...Process—a method of doing something (e.g., manufacturing steel, surgical or medical procedures)Machine—combination of mechanical elementsArticle of manufacture—anything which has been manufacturedComposition of matter—a new chemical, a new formulation of elements, a genetic construct
Ideas, formulas, and “principles of nature” are not patentable.
“8 Golden Rules” for Patenting
1. Avoid early public disclosure. File first, then disclose.
2. Do not publish interim results or speculate on broader applications of a discovery.
3. Do research on the commercial market and technical novelty of an invention before filing a patent application.
4. Consider the possibilities to license or develop an invention before filing.
5. If you cannot protect the patent from infringement, don’t file.
6. File locally first. Drop international applications if there is no interest in development in a reasonable time.
7. If you cannot prove the concept of a new invention in a reasonable time, drop the application.
8. Periodically clean out your patent portfolio if you are a research institute. Do not pay for non-productive patents.
Why Software is Problematic?
Software as intellectual property fits into one of two difficult categories:» Software as a “writing”— traditionally copyright-
protected» Software as part of a “machine”— traditionally
patent-protected
Since software tends to be a mixture, it causes problems for the legal system
PatentsNew inventions or any new and useful improvement of
an existing invention
• Novel: must be new, first in the world
• Useful: functional and operative
• Inventive: must show ingenuity and must not be obvious to someone of average skill in the field of invention
The first patent
ever registered in Serbia
was a boiler for brandy (schnapps)
preparation
(December 14, 1909). Inventor
was Mr Milan Jovanovic from Novi
Sad.
document structure
• Front Page: including ‘bibliographic’ information
• Specification/Disclosure/Description: drawings and figures, the technological background to the invention, and explaining how to put the invention into effect;
• The Claim or Claims: defining the legal scope of the invention
Patent
Did you know?
90%of patents are for
improvements
to existing patented inventions
Trade-marks A word (or words), a design, or a combination
of these used to distinguish the goods and services of one person or organization from
those of others in the marketplace
Trade-marks can be used to uniquely identify a
brand
CopyrightsRights derived from any
original literary, dramatic,
musical or artistic work can be
registered from the moment this
work is created.
copyrightsCopyright is automatic upon creation.
However, it’s a good idea to:
• Have your original work witnessed and dated
• Register your copyright• Use proper marking for
your copyright ©• Document details of any
collaboration in respect of the work
The world of
© Script© Movie scenes© Actor
interpretation© Cover© Movie editing© Pictures
Industrial designs
The visual features of shape,
configuration, pattern or ornament
(or any combination of these features)
applied to a finished article made by
hand, tool or machine.
Features• Design must
be original
• Can be two- or
three-dimensional
that appeal to the eye
DesignsDesigns, such as those
featured
in these products, are known
for their visual appeal.
The IPRs protection strategy
Patenting strategy starting with
a national patent application
Patenting strategy starting with
PCT patent application
Patenting strategy starting with
a European patent application
Filing at the
national IP office
PCT filing12 months National
filing 1National filing 2
National filing 3
. . .
30/31 months
PCT filing
National filing 1
National filing 2
National filing 3
. . .
18/19 months
European Patent filing
PCT filing12 months National
filing 1National filing 2
National filing 3
. . .
30/31 months
Benefits• Identify trends and new developments
• Generate new ideas
• Gain competitive intelligence
• License new products
• Solve technical problems
• Identify manufacturing partners
of doing IP searches
Support of innovation activities resulted from R&D projects
• identification and evaluation of inventions in the R&D results;
• research of the prior art;
• drafting of claims and preparation of patent application;
• submitting and managing of patent application on national and
international – PCT level
• assistance in commercialization process
• URL: http://www.ipcentar.uns.ac.rs/indexe.html
THE MAIN OBJECTIVES OF UNS/FTS IP CENTRE
The goals• Increase of competitiveness & attractiveness of the university
• Creating IP culture at the university
• Facilitating the establishment of spin-off companies
• Encourage the innovative approach and entrepreneurship at the university
• IP assets management (defining, packaging, controlling)
• Increase of :
• number of patent applications related to R&D, diffuse of technical information
• ranking (institutional, personal)
• value of product/company based on invention
• technology transfer through spin-off companies and/or licensing
Decision Factors for the University Nature of the market.
Nature of the technology.
What does the commercialization entity (to be selected) need to do well?
What does the inventor want to do? VERY IMPORTANT.
Does the commercialization path enhance other mission goals? (e.g., research
development, quality teaching, regional economic development)
PCT High-quality and cost-effective services to a clients in industry and academia
Areas of expertise include:
video and audio coding, TV/STB technology, mobile phones, electronics, ICs,
advanced algorithms and data processing, contemporary network and
communication technology, general physics and mathematics
Organization:
Core team (8 engineers)
Experts from the industry and universityPCT Group of
PCT Services OverviewI. Patent and Intellectual Property Management
Patent general/technical valuation
Patent claim chart generation
Patent portfolio evaluation
II. Market and Company Analysis
III. IP Support Activities
PCT Group of
Patent portfolio management and monetization
Patents Evaluation: Technological
- Expert analysis of patent applicability, broadness etc.
Commercial
- Assessment how it fits to specific market / target company / specific products
Legal quality of the patents
- Infringement analysis of the patent
- Analysis of the validity of patents (advice level
PCT Group of
Patent portfolio management and monetization
Drafting of claim charts search & matching of a product(s) with features covered
by the patent claims
Managing IP portfolio The strength and weaknesses of the patent portfolio Matching potential customers to related patents Search for licensing opportunity Comparative analysis of IP portfolios of the companies Landscaping of the IP portfolios
PCT Group of
Patent portfolio management and monetization
Market Analysis
Company analysis (existing products, market share, future technologies/products)
Litigation issues Valuation of a company's IP portfolio Patents vs. Market Analysis
Products infringing patents from our portfolio (making claim charts)
Patents covering main product areas of the Company Offensive patents (against competitors) in any area of competitors
business Protecting patents – related to ongoing litigation R&D patents (future technology)
PCT Group of
Patent Portfolio Management and Monetization-Reverse Engineering
PCT Group of
50 ohm input
50 ohm cable 50 ohm
Board Under Test
LVDS out
clk_n clk_p
Spectrum analyzer
Appendix: SW tool Android patents grouped by technologies/companies
http://odin/patent_explorer_new/charts/ljuba_highcharts_autocomplete_newlook_v5.3.php?idTable=29
http://odin/patent_explorer_new/charts/ljuba_highcharts_autocomplete_newlook_v5.3.php?idTable=28
Illustration: MPEG-2 Essential Patents FW: Main players (Forward Citation of 157 MPEG-2 Essential Patents)
34
Microsoft Corporation (Redmond, WA) 23.90%
Sony Corporation (Tokyo, JP) 5.21%
Intel Corporation (Santa Clara, CA) 3.30 %
Illustration: MPEG-2 Essential Patents IPCs: Strongest technology directions (FW Citations)
35
H04Q - ELECTRIC COMMUNICATION TECHNIQUE SELECTING
G06K - RECOGNITION OF DATA; PRESENTATION OF DATA; RECORD CARRIERS; HANDLING RECORD CARRIERS
H04S - STEREOPHONIC SYSTEMS
H04L - TRANSMISSION OF DIGITAL INFORMATION, TELEGRAPHIC COMMUNICATION
H04J - MULTIPLEX COMMUNICATION
H03M - CODING, DECODING OR CODE CONVERSION, IN GENERAL
G10L - SPEECH ANALYSIS OR SYNTHESIS; SPEECH RECOGNITION; AUDIO ANALYSIS
G11B - STATIC STORES
H04H - BROADCAST COMMUNICATION
H04B - TRANSMISSION
G06T - IMAGE DATA PROCESSING OR GENERATION, IN GENERAL
H04N - PICTORIAL COMMUNICATION, E.G. TELEVISION
• G09G - ARRANGEMENTS OR CIRCUITS FOR CONTROL OF INDICATING DEVICES USING STATIC MEANS TO PRESENT VARIABLE INFORMATION
• H04M - CODING, DECODING OR CODE CONVERSION, IN GENERAL
• H04K - SECRET COMMUNICATION; JAMMING OF COMMUNICATION
• H04R - LOUDSPEAKERS, MICROPHONES, GRAMOPHONE PICK-UPS OR LIKE ACOUSTIC ELECTROMECHANICAL TRANSDUCERS; DEAF-AID SETS; PUBLIC ADDRESS SYSTEMS
• G06F - ELECTRIC DIGITAL DATA PROCESSING
IPCs: new technologies (new IPC of FW citing patents)
Illustration: MPEG-2 Essential Patents Landscaping: Technology focus / LG and Toshiba
36
ExamplesScotland, Slovenia....
Where are we?
The Scottish Government
Strategic Research 2011-2016
The Scottish Government's Rural and Environment Science and Analytical Services Division (RESAS) is funding a portfolio of Strategic Research over 2011-16 that aims to build a platform of knowledge that strengthens policy and contributes to the delivery of national outcomes and the Scottish Government's single purpose.
Knowledge exchange - getting the research findings to people who can use them - is an essential part of the research commissioned and an area where the Main Research Providers (MRPs) have widely acknowledged strengths. Knowledge exchange activities have an outward facing, wealth creation focus, stimulating innovation,
exploiting intellectual property rights and engaging with industry. MRPs use a collaborative initiative, knowledge Scotland, to help deliver key outputs from the scientific community to policymakers in Scotland and beyond.
Impacts - The impacts of the research are expected to contribute particularly to the Wealthier, Healthier and Greener strategic objectives of the Scottish Government and thus to help deliver sustainable economic growth.
University of Edinburgh, Edinburgh Research and Innovation, Edinburgh Technopole, Scottish Institute for Enterprise, Edinburgh Pre-Incubation Programme ,Edinburgh City Council
Government
Initiative
Government
Initiative
Edinburgh Technology Transfer Centre
The Edinburgh Technology Transfer Centre opened its first incubation facility on the University of Edinburgh’s King’s Buildings campus in 1987.
For companies moving through ETTC’s two to three year incubation programme, the package of services is tailored to meet their diverse and sophisticated needs. As well as bespoke service delivery and provisions such as Strategic Clinics and Development Workshops, ETTC provides access to a wide network of business professionals, potential non-executive directors, business angels, venture capitalists and science and technology parks.
The Edinburgh Technology Transfer Centre provides specialist laboratories and high-spec office accommodation to spin-out and start-up companies and project teams involved in research and development programmes.
University of Edinburgh, Edinburgh Research and Innovation, Edinburgh Technopole, Scottish Institute for Enterprise, Edinburgh Pre-Incubation Programme ,Edinburgh City Council
University Initiative
University Initiative
University of Edinburgh Research and Innovation Technology Licensing The University of Edinburgh has demonstrated the international
stature of its intellectual property over many years, with major scientific advances, inventions and innovation, and is commercializing these world-changing discoveries through company spin-outs and technology licensing with industry around the world.
Current Licensing Opportunities * ALL technology licensing opportunities o Drug Discovery, Medical Devices,Reagents & Antibodies,
Therapeutics, Communications, Energy & Environment,IT & Software, Materials, Engineering & Electronics
http://www.research-innovation.ed.ac.uk/licensing/
University Initiative
University Initiative
Technology Park-Ljubljana Technology Park Ljubljana since
1996 provides favorable conditions for development and growth of innovative and knowledge-based entrepreneurship. It provides physical infrastructure and specialized business advisory services and symbolizes freedom of imagination, innovation and creativity.
Technology Park-Ljubljana Regular and associate members: 2E d.o.o. Energy 3.R TIM d.o.o. Information technologies 3K IT d.o.o. Information technologies 4G NEURON d.o.o. Information technologies ABELIUM d.o.o. Information technologies ABMSS d.o.o. Business consultancy ABSTRATUM d.o.o. Information technologies ….. IN TOTAL: 246 members – companies from
various technology fields
http://www.tp-lj.si/en/index.php?sv_path=667
Strategy for Universities
Develop IP centers within University
Educate students and staff in importance of IP
Provide framework within University whereby the ideas developed within projects
will lead to IP and commercialization – Knowledge Transfer Centers
Initial state investment which should lead to self-finance
Definition of Technology Transfer
Technology transfer [and commercialization] is defined as the transfer of results of basic and
applied research to the design, development, production, and commercialization of new and
improved products, services or processes. That which is transferred is often not really technology
but rather a particular kind of knowledge that is a precursor of technology.
The transfer process emphasizes the value and protection of the intellectual product of the
researchers.
Gary Matkin, Technology Transfer and the University, 1991
Technology Transfer is a Process
It has stages, phases, and typical behaviour.
It operates and can be understood at different levels (e.g.,
technology policy, individual scientists).
It involves different “stakeholder” perspectives (e.g.,
developers and users).
It is therefore a “communication process.”
Contact usFor more information:
Faculty of Technical Sciences, Univ. of Novi Sad
UNS IP Center
Prof. Dr Dragan Kukolj
Milana Vitas
Be inventive...
Be free...