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Ip on a coffe break... be inventive... be creative... be free

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Milana VItas, RT-RK Computer Based Systems, Zaštita autroskih prava i upravljanje intelektualnom svojinom …

Milana VItas, RT-RK Computer Based Systems, Zaštita autroskih prava i upravljanje intelektualnom svojinom
CRINSS 2013 Creative Industries Conference, Novi Sad, Serbia
Konferencija kreativnih industrija

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  • 1. IPR protection - submission of patent applications at University PCT Group
  • 2. Be creative...
  • 3. 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
  • 4. IP at a glanceUniversity Patents Trade-marks Copyrights Industrial Designs
  • 5. 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!!!
  • 6. 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
  • 7. 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
  • 8. 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
  • 9. 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 elements Article of manufacture—anything which has been manufactured Composition of matter—a new chemical, a new formulation of elements, a genetic construct Ideas, formulas, and “principles of nature” are not patentable.
  • 10. “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.
  • 11. 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.
  • 12. 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
  • 13. Patents New 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.
  • 14. 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
  • 15. Did you know? 90% of patents are for improvements to existing patented inventions
  • 16. 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
  • 17. Copyrights Rights derived from any original literary, dramatic, musical or artistic work can be registered from the moment this work is created.
  • 18. copyrights Copyright 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
  • 19. 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.
  • 20. Features • Design must be original • Can be two- or three-dimensional that appeal to the eye
  • 21. Designs Designs, such as those featured in these products, are known for their visual appeal.
  • 22. 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 filing 12 months National filing 1 National 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 filing 12 months National filing 1 National filing 2 National filing 3 . . . 30/31 months
  • 23. 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
  • 24. 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
  • 25. 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
  • 26. 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)
  • 27. 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 university PCT Group of
  • 28. PCT Services Overview I. Patent and Intellectual Property Management  Patent general/technical valuation  Patent claim chart generation  Patent portfolio evaluation I. Market and Company Analysis II. IP Support Activities PCT Group of
  • 29. 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
  • 30. 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
  • 31. 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
  • 32. Patent Portfolio Management and Monetization- Reverse Engineering PCT Group of
  • 33. 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_autocom
  • 34. 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 %
  • 35. 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)
  • 36. Illustration: MPEG-2 Essential Patents Landscaping: Technology focus / LG and Toshiba 36
  • 37. Examples Scotland, Slovenia.... Where are we?
  • 38. 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
  • 39. 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
  • 40. 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
  • 41. 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.
  • 42. 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
  • 43. 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
  • 44. 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
  • 45. 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.”
  • 46. Contact us For 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
  • 47. Be inventive... Be free...

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