Intellectual Property _ Knowledge Management

Document Sample
Intellectual Property _ Knowledge Management Powered By Docstoc
Entrepreneurship for Engineers
   Session 8: Intellectual Property
     Knowledge Management
• Intellectual property is one of the most valuable
  assets of an organisation
• Direct impact on:
  – Product positioning
  – Revenue Generation
  – Shareholder / Company Value
• Strategic importance in maintaining and growing
  market position
• Good IP portfolio management is essential
• IP Generation is a Rigorous but Creative
  What is Intellectual Property?
• Patents
   – Used to protect inventions that are to be used in a new product
     or process
• Copyright
   – Used to protect software code, literary and artistic works
• Registered Designs
   – Used to protect shape, contours, ornamentation, etc
• Trade Marks
   – Used to protect distinctive names, marks, or features of a
     product or business that makes a connection between the
     promotion of goods or services and the supplier, e.g. product
     names, logos, etc
• Know – How & Trade Secrets
   – Proprietary information, experience, skills
 Intellectual Property Rights

               Legal Rights to Protect IP

Intellectual                                Intellectual
Property              Jurisdiction          Property
                      Cost                  Rights
            Is it Patentable?
• Novelty
  – Not in the public domain

• Inventive Step
  – Not obvious to a skilled person in the domain

• Useful
  – Can be incorporated into a product or
    industrial process
• IP Protection is NOT universal
  – Applying for protection in home jurisdiction does not
    automatically provide world-wide protection
  – Rights need to be registered individually in countries
    where IP protection is required
  – Some international systems exist which enables an
    international patent to be filed designating a number
    of states.
  – E.g. Patent Cooperation Treaty (PCT) - 120 countries
  – European patents
                 Priority Filing
• If a patent application is filed in Ireland, The European
  Patent Office, or a member of the Paris Convention for
  the Protection of Intellectual Property – this date is
  known as the Priority Date
• The applicant has 12 months before filing is required in
  other jurisdictions
• Counts as the date from which prior art is assessed
• Gives time to better assess market potential and efficacy
  of technology

• Priority for Trademarks and Designs typically 6 months
                 Types of Patents
• Full-Term Patent
   – Protection for up to 20 years
   – Proof of novelty necessary

• Short-Term Patent
   –   Designed for less complex & short market life inventions
   –   Protection for up to 10 years
   –   Proof of Novelty not required
   –   Reduces cost of length of time required

• Renewal fees typically every 3 years
• Disclosure in the public domain prior to
  filing renders the patent invalid
• Disclosure includes all forms of written,
  verbal or generally viewed communication
• Sale (or offer of sale) invalidates in the US
• Use Non Disclosure Agreement and/or
  Material Transfer Agreement
• IP infringement can be costly
• Products thought to be infringing IP can be
  withheld at customs
• You can be sued for damages dating back
  to priority filing date

• Enforcing IPR can be expensive
              Patent Format
• The Title
  – Brief
  – Clearly indicate matter to which invention
• The Description
  – Explanation of Invention
  – Background
  – Particular problems the invention solves
  – What it does
               Patent Format
• The Claims
  – Define scope of the invention and the legal protection
    conferred by the invention when granted
  – Independent claim defines an embodiment of an
    invention – all its technical features
  – Dependent claim defines further embodiments
    characterised by desirable but non-essential features
    of an invention
• The Drawings
  – Clear and legible
  – Must be referenced from text of description
                           Overview of Process
Adapted from                               Inventor
‘Intellectual Property Management’,
A Guide for Exporters
Irish Exporters Association 2004          Patent Attorney
                                      (Prepares Specification)

                                        Irish Patents Office               Search
                                          First Application               (Optional)
12 months

                                                                        Irish Patent

              Other Countries           International (PCT)         European Patent
                                            Application                  Office
            Search and Substantive       International Search
                 Examination                                      Search and Substantive
                                      International Preliminary
                                            Examination           Grant of European Patent

              National Patent                                     Takes Effect in Designated
                                                                       EPC Countries
• HRB Jan – Feb 2000, Rivette & Kline,
  Discovering New Value in Intellectual
• Ivey Business Journal, Thomas J Colson,
  Leveraging the Power and Value of
  Intellectual Property, July / August 2001

Shared By: