3. What is Intellectual Property
(IP) and its importance?
• Creation of the mind
• Why do we want to protect?
– Right to exclude others from practicing your
invention
– Freedom to operate (in case of future
commercialization activities)
– For research collaborations etc.
4. How are patents obtained?
• Novel
• Inventive
• Industrially Applicable
5. Industry vs Academia
• Industry
– Is there any IP?
– Cost
• Academia
– Publishable
research
– Performance
– Safety
– Safety
– Performance
– Cost
6. Types of patents (cont’d)
• Electronics
– Modules of a system
– Features of the system
– Functions of the system
• Material science
– Composition of matter
– Thickness of each layer
– Morphology
– Technical effects
7. Types of patents
Product
• Think about features of the
invention that is different.
• The difference must confer a
technical advantage; have a
functional purpose.
• *Lifetime increase from
200 µS to 1 mS.
8. Types of patent (cont’d)
Method of production
• Steps of producing a
product, material etc.
• The steps must produce a
technical effect.
• Eg. New method of
producing a material –
protecting a method.
Material is known but new
method: Product by process –
protecting the product.
9. Some questions
• What does it take for the industry to adopt my
technology?
• Is my material safe?
• Performance under extreme temperatures?
• Is my process scalable?
• Does my product/process provide any cost
advantage?
10. Invention Disclosure Form
• Different parts:
- Field of invention :
• Generalize what your invention is about.
• Is it a product or a process or both.
- Summary of the invention :
- Highlight the problems in this field.
- What has been done before and their outcomes.
- Briefly state what your invention is and how it can solve
the problems differently.
- Advantages of your invention.
- Brief description of the drawings:
• What do the diagrams mean?
11. Invention Disclosure Form
(cont’d)
• Different parts:
- Detailed Description:
- What is the invention – step by step in full details.
- How is your invention different from the prior art.
- Alternative embodiments: think broadly –
- Product – What other groups can I have on the
molecule?
- Process – Can I use a different solvent? Can I replace a
step with another? If so, what are the consequences?
12. Invention Disclosure Form (cont’d)
• Different parts:
- What problems does the invention solve and what
are the advantages over existing products and/or
method:
- What problem does your invention address?
- Cost, performance advantages
- By how what magnitude
- Industrial applications:
- Can your invention be used in other areas?
- Limitations and competing ways to solve the same
problems:
- Disadvantages of your invention.
13. Patenting Timeline
File non-Prov.
Or PCT
File Prov.
12 months
Phase
I
3 months
Enter Natl.
Phase
18 months
Phase II
3 months 6 months
9 months
Initial Public
Disclosure
I.D. submission
Tech. Assessment
Patent
Review
Patent & Market Eval.
Phase IV
Phase III
8 months
Patent
Publication
Rarely gets here
unless licensed
Patent
Review
Funding considerations
14. Information for NUS inventions
• http://ilo.nus.edu.sg/
• http://ilo.nus.edu.sg/forresearchers/disclosing-an-invention/
• ilobox3@nus.edu.sg
15. Strategy
• OODA framework for IP strategy
• Observe – Know the landscape
– Think: How does your invention fit in a bigger system,
module? Where is the industry heading? Does your
invention really solve a problem?
• Orientate – Know your research (where it
stands in the industry)
– Think: What are the steps required to put your
invention to work? Can your invention be applied
elsewhere?
16. Strategy (cont’d)
• OODA framework for IP strategy
• Decide – Make decisions (to further develop or
to protect now; how/what to protect)
– Think: How much more time do I need to get more
results? What are my future research plans? Should I
publish now?
• Act – Take the necessary actions
– Talk to us!
17. Concluding remarks
• Do not publish until a patent application has
been filed ……
Can be novelty destroying!
• Once patent application filed, the invention is
patent pending BUT …….
Do establish a non-disclosure agreement
when discussing with external parties!
18. Key takeaways
• Filing of patents create a win-win situation for
both academia and industry
• Patent filed then publish!
• Strategize! OODA framework.
