Intellectual Property concepts
and filing process
Dr Rendy Tan
24 Feb 2014
Agenda
• Basic Intellectual Property concepts
• What/how to protect
• Timeline
• Invention disclosure form
What is Intellectual Property
(IP) and its importance?
• Creation of the mind
• Why do we want to protect?
– Right to excl...
How are patents obtained?
• Novel
• Inventive
• Industrially Applicable
Industry vs Academia
• Industry
– Is there any IP?
– Cost

• Academia
– Publishable
research
– Performance

– Safety

– Sa...
Types of patents (cont’d)
• Electronics
– Modules of a system
– Features of the system
– Functions of the system
• Materia...
Types of patents
Product
• Think about features of the
invention that is different.
• The difference must confer a
technic...
Types of patent (cont’d)
Method of production
• Steps of producing a
product, material etc.
• The steps must produce a
tec...
Some questions
• What does it take for the industry to adopt my
technology?
• Is my material safe?
• Performance under ext...
Invention Disclosure Form
• Different parts:
- Field of invention :
• Generalize what your invention is about.
• Is it a p...
Invention Disclosure Form
(cont’d)
• Different parts:
- Detailed Description:
- What is the invention – step by step in fu...
Invention Disclosure Form (cont’d)
• Different parts:
- What problems does the invention solve and what
are the advantages...
Patenting Timeline
File non-Prov.
Or PCT
File Prov.

12 months

Phase
I

3 months

Enter Natl.
Phase
18 months

Phase II

...
Information for NUS inventions
• http://ilo.nus.edu.sg/
• http://ilo.nus.edu.sg/forresearchers/disclosing-an-invention/
• ...
Strategy
• OODA framework for IP strategy
• Observe – Know the landscape
– Think: How does your invention fit in a bigger ...
Strategy (cont’d)
• OODA framework for IP strategy
• Decide – Make decisions (to further develop or
to protect now; how/wh...
Concluding remarks
• Do not publish until a patent application has
been filed ……
Can be novelty destroying!
• Once patent ...
Key takeaways
• Filing of patents create a win-win situation for
both academia and industry
• Patent filed then publish!
•...
Thank You
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Intellectual Property Concepts and Filing Process at the National University of Singapore

  1. 1. Intellectual Property concepts and filing process Dr Rendy Tan 24 Feb 2014
  2. 2. Agenda • Basic Intellectual Property concepts • What/how to protect • Timeline • Invention disclosure form
  3. 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. 4. How are patents obtained? • Novel • Inventive • Industrially Applicable
  5. 5. Industry vs Academia • Industry – Is there any IP? – Cost • Academia – Publishable research – Performance – Safety – Safety – Performance – Cost
  6. 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. 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. 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. 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. 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. 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. 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. 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. 14. Information for NUS inventions • http://ilo.nus.edu.sg/ • http://ilo.nus.edu.sg/forresearchers/disclosing-an-invention/ • ilobox3@nus.edu.sg
  15. 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. 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. 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. 18. Key takeaways • Filing of patents create a win-win situation for both academia and industry • Patent filed then publish! • Strategize! OODA framework.
  19. 19. Thank You

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