IP week 1

What is Intellectual Property (IP)

creations of the mind that can have commercial value

Why is IP important

• prevents competitors from copying protected inventions

• helps companies recover R&D costs

• allows companies to earn money through licensing or selling IP

• attract investors

Patent

Protects a new product, process, compound or use

EG. new drug compound

Design

protects appearance of the product

Copyright

Protects the way information or creative work is expressed

Not general facts or ideas

EG. the written product information leaflet

Trade mark

Protects brand, commercial source of goods or services

EG. brand name

Plant Breeder’s Rights (PBR)

Protects eligible new plant varieties

Circuit layout rights

Protects original layouts of integrated circuits

Trade secret

Protects valuable confidential information

while remain it as a secret it is protected

Registered rights

• needs to apply and register

• EG. patents, registered designs, registered trade marks and PBRs

• usually need formal examination or other legal requirments

Automatic rights

• generally arise through creation

• use or keeping information confidential

• EG. copyrights, confidential information and trade secrets

• do not generally require formal registration

Can one product hace multiple layers or IP protection?

Yes

Trade Secret

• valuable information kept secret

• losing secrecy can destroy its value

• EG. Coca-cola recipe

Confidential information

• broader category of private or restricted business information

• can include even not commercially valuable enough information

• EG. internal meeting notes, experimental data, clinical trial results

Trade Secret vs CI similar in

both protected through confidential agreement and laws against breach of confidence

Pros of trade secret

• usually cheaper than patents

• can last indefinitely while secrecy is maintained

• useful when a process is difficult to reverse-engineer

Cons of Trade Secrets

• Protection can be lost if information becomes public

• competitors may independently discover the same information

• difficult to maintain secrecy over time

Registered trade marks last for how many years in general?

10 and can be renewed indefinitely

Patent

a legal right that allows its owner to exclude others from exploiting a claimed invention for a limited time

Patent duration

20 yrs from filing date

Invention + limited monopoly + public disclosure

4 main patent requirements

1. subject matter

2. novelty

3. inventive

4. utility

Subject matter

• is the invention eligible for patent protection

• generally needs to involve a technical invention

Novelty

• must be new

• not already been disclosed in relevant prior art

Inventive step

• invention must not be an obvious solution to a person skilled in that technical field

Utility

• useful

• must have specfic, substantial and credible use

• appropriate to the applicable legal requirements

What may be patentable?

• New compounds and products.

• New formulations and combinations.

• New manufacturing methods.

• Some new uses of known substances.

• Certain devices and technical improvements

Patent rules in different countries

is different

• one thing is patentable in one country but may not be in others

Disclosure requirement is needed as an exchange of

Patent protection

What should be done before filing a patent

• do not publicly disclose your invention before filing

• use strict confidentiality

• seek patent advice early

Patentability search is to

• Looks for existing disclosures of similar inventions.

• Assesses whether your invention may be new and inventive.

• Helps identify relevant prior art.

• Supports decisions about your own IP.

Freedom to Operate (FTO) search

• Looks for relevant third-party patent rights.

• Focuses on the countries where you plan to manufacture, use or sell.

• Assesses whether your proposed activities may infringe enforceable patent claims.

• Helps identify risks before commercialisation.

FDA orange book

US drug products and associated patent/exclusivity information.

FDA purple book

US licensed biological products and related information.

WIPO Patentscope

International patent applications and patent information

ATMOSS

Australian trade mark search system

Can a company own a patent but still lack FTO

Yes, another’s party’s patent may cover the proposed produce and activity

Inventor

• contributes to creating the invention

• determined by contribution to the inventive concept

• can be different from the owner

Owner

• holds the legal rights to the invention or patent

• determined by legal entitlement, employment agreements or assignment

• may be a company, university or individual

Joint inventorship

when multiple people contribute to an invention

Each joint inventor must

• make a real, non-insignificant contribution to the conception of the invention

• contribute to the invention that is actually claimed

• have the required collaboration or communication with the other inventors, depending on the applicable legal test

Who owns an invention

• employees: was employed specifically to invent or design things

• uni researchers and students: specifically to conduct research may have their inventions owned by the university, depending on their employment terms and agreements

Assignment of patent rights

• a legal transfer of IP ownership from one party to another

• buyer/assignee becomes the owner

• may involve payment

Licence

• grants permission to use the IP

• original owner generally retains ownership

• may involve royalties or other payments

What counts as public disclosure

• Published journal articles.

• Conference abstracts and posters.

• Research presentations and seminars.

• Websites, social media posts and videos.

• Preprint servers and publicly accessible research repositories.

• Public demonstrations or disclosures of an invention.

Why is public disclosure dangerous?

Public information may be used as prior art when assessing whether an invention is novel or inventive.

How can researchers protect their inventions?

• File a patent application before publishing.

• Keep inventive details confidential until filing.

• Use a confidentiality agreement or non-disclosure agreement (NDA) when appropriate.

• Check whether a planned presentation or publication reveals the invention.

• Seek advice from a patent attorney early.

obligation of confidence

a person is required not to disclose or misuse confidential information.

General IP registration Process

1. Market research and business plan

2. file the application

3. publication

4. examination

5. acceptance and grant

Priority application

the 1st filing that can provide an early priority date for adequately disclosed subject matter

Standard/complete application

contain the full specification and claims for examination and possible grant

PCT application

an international filing route

able to simplifies and delays the decision about which countries to pursue

Usually claims priority from an earlier application filed within the applicable 12-month period.

How to read a patent specification

Read description = explains the invention

& Claims = defines the legal protection

Patent infringement

Unauthorised activity covered by a granted patent claim.

Examination

Patent office assess the application

Prosecution

Responding to objections and progressing the application

Research exemption

certain experimental activities may be exempt