This document provides an overview of intellectual property concepts, the patent filing process, and strategies for intellectual property protection. It discusses what intellectual property is, the importance of protecting inventions through patents or other means, and how patents are obtained based on criteria of novelty, inventiveness, and industrial applicability. Key parts of the patent filing timeline and invention disclosure form are outlined. The presentation emphasizes strategizing protection approaches using an OODA framework by observing industry trends, orienting one's research within the field, deciding on protection steps, and taking action such as filing a patent application before publishing research.

1. Intellectual Property concepts
and filing process
Dr Rendy Tan
24 Feb 2014

2. Agenda
• Basic Intellectual Property concepts
• What/how to protect
• Timeline
• Invention disclosure form

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.

19. Thank You