PATENTS and other INTELLECTUAL PROPERTY

A Guide to IP Protection at McGill University Katya Marc, M.Eng., MBA

Industry Liaison Manager

Faculty of Engineering October 29, 2014

WHAT IS TECHNOLOGY TRANSFER?

Formally transferring discoveries / inventions resulting from research at the University / Hospital to the commercial sector

Why care about inventions? •Attract industry, VCs

•Capturing research and license dollars

•Personal income

•Stimulate and encourage innovation

Broad definition includes Tech Transfer via student movement, contractual research and licensing

Intellectual property is any product of the human intellect that is unique, novel and unobvious (and has some value in the marketplace)

Intellectual property (IP) is valuable • Often, value cannot be predicted at the start of a project

• Agree with non-University partner BEFORE starting to collaborate

• Agree IN WRITING [rights to IP, publication rights, etc]

WHAT IS INTELLECTUAL PROPERTY?

PROTECTING INTELLECTUAL PROPERTY

P A T E N T S

INDUSTRIAL DESIGNS

TRADEMARKS

TRADE SECRETS

COPYRIGHTS

INTEGRATED CIRCUITS

Definition: A bargain with the state wherein you, the inventor, give the

state, and eventually the public, a full and complete

disclosure of what your invention is, how it works, the best

way to put it into practice …..

In return you are granted a right to exclude others, for a limited period of time, during which you can stop others from making, using, distributing or selling, or importing your invention without your permission

WHAT IS A PATENT?

WHY PATENT?

•Protection •Scope: Limited both geographically (ex. Canada) and

by subject matter (claims)

•License third parties to use the invention for commercial purposes •Public interest when inventions become innovations/products/processes used by public •Can encourage publication of new scientific work •Others can experiment and improve •New inventions of their own

WHAT CAN BE PATENTED?

Section 27(8) of the Canadian Patent Act

•NOT something purely artistic or decorative

•NOT abstract theorems, principals

•NOT higher life forms

•Mechanical devices and machines

•Electrical and electronic apparatus and circuits

•Chemical processes and products/composition of matter

•Articles of manufacture (e.g. hockey sticks)

PATENTABILITY CRITERIA

1. PATENTABLE SUBJECT MATTER

2. NEW - not known in prior art

3. INVENTIVE/UNOBVIOUS – not obvious

to a person of ordinary skill in the art

4. USEFUL – industrial application or

utility

INVENTIVE/UNOBVIOUS?

Scrotal support garment

US20090216171

NOT INVENTIVE DUE TO PRIOR ART

It would have been obvious

to someone of ordinary skill

in the art at the time the

invention was made to have

modified the scrotal support

garment of exhibit figure B.

USEFUL SITES FOR PATENT SEARCHES

www.cipo.gc.ca Canadian Intellectual Property

Office

www.uspto.gov US Government Patent and

Trademark Office

http://ep.espacenet.com European Patent Office

Derwent Innovations Index, McGill library database

Trade Secrets

Chemical manufacturing -

infringement is difficult to detect

Market is small

T0 PATENT OR NOT TO PATENT?

All that is Patentable

is NOT necessarily

Commercializable !

NOTEWORTHY

United States, Canada and the rest of the world Patent goes to applicant who was first to file an application (US switched to first to file as of March 1, 2013)

Canada, US & Mexico Grace period of one year before filing after public disclosure

Term of a Patent - 20 years from filing the application

Absolute novelty – most of the rest of the world

PATENTING AROUND THE WORLD

PATENTING AROUND THE WORLD

Patent Cooperation Treaty (PCT)

Possibility to designate 125 states/countries, including

European and OAPI (most African countries) through a

single application

COMMENTS ON THE PATENTING PROCESS

Complicated & Expensive

Important

Involves Many People

Documentation

Time Consuming

Full and complete description:

What the invention is

How it works

Drawings

Definitions

Claims

THE PATENT APPLICATION

THE PATENT APPLICATION

CLAIMS

In words, you stake out the novel, inventive subject matter,

which others may not use.

THE PATENT APPLICATION

Types of Claims

•Product

•Method of Manufacture

•Method of Using a Product

•Apparatus for Making a Product

•Food, Drugs & Chemical Processes

•Method of Testing

•Software (algorithm)

A few things to remember…

Invention B

Invention A

Not Necessarily Freedom to Operate

Patents Provide an Exclusive Right but…

A few things to remember…

DISCLOSURE

Premature disclosure destroys novelty!

United States, Canada – one year grace period

following disclosure to file application

Many other countries (ex. Europe) – application

must be filed before ANY public disclosure

McGill’s IP POLICY

•Must report to OSR those inventions that they wish to develop

for commercial purposes, before they are publicly disclosed

•Applies to all McGill-affiliated entities, such as Hospitals

•If a student is sole inventor, no obligation to go to OSR

•An invention is disclosed via a Report of Invention

•Joint ownership (by McGill and Inventors) of rights to the IP

•If University leads commercialization, formal Assignment of

the IP rights to McGill is required.

THE PROCESS AT McGill

Step 1: ROI filed with Commercialization Unit of the Office of

Sponsored Research (OSR)

Step 2: Confirmation of Receipt and Officer Assigned (2 weeks)

Step 3: Commercialization Plan and Decision from OSR within

90 days

FILING A REPORT OF INVENTION (ROI)

Report of Invention (ROI) is available on OSR Web Page

•Completed in full

•Signed and dated

•Co-inventors (%), collaborators

Impact on Royalties

INVENTORSHIP

Guidelines on inventorship determination.

It is a legal notion that may change from country to country.

An inventor is generally the individual(s) present, and first to demonstrate, the fundamental novelty or invention.

Co-inventor: in a direct way contributed to the creative value-added of the invention.

Ultimate test: creative contribution to any or all of the claims in the patent.

Suggesting an idea of a result to be accomplished, rather than the means of accomplishment is not co-inventing.

IMPORTANT

AUTHORSHIP

DOES NOT EQUAL

INVENTORSHIP !

IMPORTANT

EFFORT

DOES NOT EQUAL

INVENTORSHIP

POSSIBLE COURSES OF ACTION

PROCEED

File Provisional or Full Application

OR

REJECT or RE-ASSIGN

No Protection by McGill

OR

TOO EARLY

Return for More Development/Research

FILING A PATENT APPLICATION

US Provisional Application

• Establishes a filing date

• $3,000-10,000 CAN

• 12 months period to explore commercial potential

Patent Cooperation Treaty (PCT)

• Single application designating a number of countries

• Individual national applications can be deferred for up to

30 months

• $5,000-10,000 CAN

•Filing for Patent at the National Offices (National Entry)

COMPANY vs. UNIVERSITY

COMPANY

Work for hire

Recognized on patents

Trade secrets –

publication on

permission

They hired you.

You work for them.

They own everything!

UNIVERSITY

Jointly owned IP

Recognized on patents

Right to publish

Share in revenues

(60% to inventors)

Compatible environment

to provide for

teaching, research and

publications

Now that the IP is protected…

…the process of commercialization

is only just beginning.

Time to Success

Costs of Commecialization

We need partners along the way

Further technology development

Expend both financial and human resources

to produce, market and sell technology

Defend IP against unscrupulous companies

etc.

There must be a reward

commensurate with the risk

INDUSTRIAL DESIGNS

Features of shape, configuration, pattern or ornament and any

combination of those features that in a finished article appeal

to and are judged solely by the eye

V I S U A L Who can apply for registration? Only the proprietor (owner) of a design may apply for and receive registration for

an industrial design.

Proprietor = creator, unless

- hired under contract to develop a design for someone else

- employee of a company and develop a design as part of your

employment

When compared to a patent…. •10 years of protection

•Protects only the appearance of the article

•Cost is an order of magnitude lower

•Proper mark is a capital "D" inside a circle and the name, or abbreviation, of the

design's owner on the article, its label or packaging

TRADEMARKS

A mark that distinguishes wears or services manufactured,

sold, leased, hired or performed.

DISTINCTIVENESS

USE

When compared to a patent...

•Registered ® vs. unregistered ™ •Protection in perpetuity

•Protection is immediate

•Cost is much less

•Designs registered in 6 months

TRADE SECRETS

1. It must actually be a secret.

2. Efforts must be made to keep it a secret.

Not feasible in University setting.

Important for Industry.

Recipes

Proprietary processes

Chemical formulae

Customer lists

Business methods

Reverse engineering and independent creation are good and complete defenses.

COPYRIGHTS

Protection of expressive original works of authorship such

as:

• Literary

• Musical

• Dramatic

• Artistic

•Computer programs/Software

When compared to a patent...

•Automatic protection © •Prevents unauthorized copying, distribution or taking and

using

•Protection is lifetime + 50 years

•Economic and moral rights to the work

•Original work, tangible, residence/citizen

COMPUTER PROGRAMS/SOFTWARE

Canada’s Copyright Act

• Source (human readable) code

• Machine readable code in a ROM chip (firmware)

• Application programs

• Operating system programs

Unresolved Issues:

• Scope of protection

• Reverse engineering

• Microcode in the CPU

INTEGRATED CIRCUIT (IC) LAYOUT DESIGNS

Canada’s Integrated Circuit Topography Act

(ICTA), May 1993

When compared to a patent...

•Protection against exact reproduction,

manufacture, importation/commercial

exploitation

•Does allow reverse engineering

•Requirements for registration less onerous

•10 years of protection

Innovations Catalyst in Engineering (ICE)

Katya Marc, 514-398-3355

Industry Liaison Manager

Office of Sponsored Research (OSR) Commercialization Officers:

Derrick Wong, 514-398-5858

Mark Weber, 514-398-8949

Web Sites: http://www.mcgill.ca/engineering/research/ice

http://www.mcgill.ca/research/researchers/ip

SOURCES OF INFORMATION