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

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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

dragan.kukolj@rt-rk.com

Milana Vitas

milana.vitas@rt-rk.com

Be inventive...

Be free...