Presentation on theme: "From Invention To Patent: Protecting New and Innovative Business Ideas: The Importance of Proper Management of Trade Secrets and Patents Guriqbal Singh."— Presentation transcript:
1 From Invention To Patent: Protecting New and Innovative Business Ideas: The Importance of Proper Management of Trade Secrets and PatentsGuriqbal Singh JaiyaDirector, SMEs DivisionWIPO (www.wipo.int/sme)
2 Short Guides on IP for Business PublishedMaking a Mark (Trademarks)Looking Good (Designs)Inventing the Future (Patents)Creative Expression (copyright)In the pipelineTrade SecretsFlash Version
4 Key MessageBy establishing a culture of identifying, cultivating and strategically using its IP assets, an enterprise can increase its revenue, have an edge over its competitors and position itself well in the market.Ignoring IP altogether is in itself an IP strategy that may prove costly to the enterprise in the long- term.
5 Dr. Horst Fischer, Corporate Vice President, Siemens AG “Any company wishing to prosper in the next millennium will also have to efficiently manage its IP portfolio”.“For this reason it has become essential that every manager in the enterprise - not just those working in the corporate legal department - appreciates and understands not only what IP is, but how it can be more effectively exploited."
6 What are IP Rights? Industrial Property Rights Patents and Utility Models (or “short-term patents”)TrademarksIndustrial DesignsGeographical IndicationsTrade secretsTopographies of integrated circuitsCopyright and Related RightsNew Varieties of PlantsNon-original databases
8 Actual Vs Legal Trade Secrets Actual secrets: Trespass or theftLegal trade secrecy is not actual or absolute secrecy.
9 Definition: Identify Trade Secrets Considerations in determining whether information is a trade secret:Whether known outside the companyWhether widely known by employees and others involved with the companyHave measures been taken to guard its secrecy/confidentiality
10 Identify Trade Secrets Contd... What is the value of the Information to your company?What is the potential value to your competitors?How much effort and/or money spent in collecting/developing it?How difficult would it be for others to acquire, collect or duplicate it?
11 DefinitionFormula, pattern, device or compilation of information, unknown to others, that gives competitive advantageCommon law or statuteUnlimited Duration / No registrationCost (of maintaining secrecy, security, ; surveillance, litigation)Reverse engineering; independent development
12 Examples Unpatented inventions Future product designs/models Valuable nonpublic company documents: Drawings, blueprints, laboratory notebooks, test data and training manualsMarketing, purchasing, planning and customer informationFinancial, accounting, recruiting and legal information
14 You may get a lot!In a single misappropriation act a biotechnological trade secret may be obtained which represents:(1) the blueprint (DNA);(2) the machinery (expression system used)(3) the factory itself (host cell contining the recombinant DNA under control of the expression system)
15 Stealing may be Easy!Micro-organisms: vast numbers, microscopic size and self replicating!Italian subsidiary of a US pharmaceutical house dipped handkerchief into fermentation vat at his own retirement party!
16 Integrated Security Environment Identify key corporate assets/ “crown jewels”Integrate and Balance security components in interlocking layers to protect against perceived risk profileCommunicate, train, and educate employees to distribute ownership of the security process throughout the employee (weakest Link)Monitor and Reassess to adapt to changing risk profile
18 Protection Strategies Contd... Restrict Public Access to FacilitiesDeal Cautiously with Third Parties; Confidentiality Agreements and Nondisclosure AgreementsBe Careful and Consistent with Unsolicited SubmissionsSecurity/Trade Secret Audit; internal / externalCoordination of integrated security enterprise-wide
19 Protection Policy Advantages of a Written Policy Transparency Clarity (how to identify and protect)How to reveal (in house or to outsiders)Demonstrates commitment to protection; important in litigation
20 Educate Employees Prevents inadvertent disclosure; employment contract Unscrupulous employees (personal gain)Terminated employees (revenge)Former employee (inadvertent loss, hired by competitor, or becomes competitor)Educate and train (on hiring give copy of policy, periodic training and audit, exit interview, retirement); proactive role
21 Educate Employees Contd... Make known that disclosure of trade secret may result in termination and/or legal actionConfidentiality agreements/non disclosure agreements/ Non compete agreementsTransform every employee into a potential security officer; every employee must contribute to maintain the security environmentHuman and procedural security must be proactive; clear communication and repetition
23 Mark DocumentsUniform system of marking documentsPaper BasedElectronic
24 Physically Isolate and Protect Separate locked depository; authorizationAccess control (third parties; unauthorized )Log of access; document reviewed or takenSurveillance of depository/company premisesShreddingOversight; audit trailLabs, green houses, test plots, etc
25 Maintain Computer Secrecy Authorization; access controlMark confidential or secret; legend pop, or before and after sensitive informationPhysically isolate and lock: Computer tapes, discs, other storage mediaRemote access; SMS messagesOversight; audit rail
26 Restrict Public Access to Facilities Log and visitor’s pass to be worn all timesAccompany visitor; sometimes CA/NDAVisible to anyone walking through a company’s premises (type of machinery; layout; physical handing of work in progress or finished products)Overheard conversationsDocuments left in plain viewUnattended waste baskets
27 Third Parties Sharing for exploitation Consultants, financial advisors, computer programmers/professionals, web site host, other independent professional, subcontractors, designers, partners, joint venturesConfidentiality agreement, Nondisclosure agreements
28 Unsolicited Submissions (US) Formulate procedures to handle USNotify (in writing) all persons submitting US disclosures that your company will not enter into a confidential relationshipRequesting the submitter to sign an acknowledgement that your company is not obligated to use the US Information and owes no duty of confidentiality
29 IP Rights: PatentsDefinition: A patent is an exclusive legal right granted for an invention that is:New (Novelty)Involves an inventive step (Non obvious)Capable of industrial applicationDuration: 20 years from filing/priority dateTerritorial rightRequires disclosure/deposit of the invention/materialCan be licensed to third partiesUtility Models (or short-term patent): up to 10 years
31 Patents Why apply for patent protection? Market exclusivity To recover R&D investmentsFacilitates licensingAdvantageous negotiating toolFinancing opportunities (venture capitalists, etc)Favorable image and credibilityFreedom to operateHigher market value and publicityInternational expansion
32 Patents contd...First to file/first to invent: Laboratory books/DrawingAccelerated examinationDependence and multi-patent productsFront page, description and drawingsClaims; technological density and claim breadth/Route of filing/amendment of claims
33 Problem-Solution Approach Definition of closet prior artObjective identification of technical problemExamination, whether solution obvious from prior artPatent Office may contrast closest prior art with technical effect of invention; definition of “objective problem to be solved” is different from problem defined in original applicationChoice of prior art affects whether obvious or not
34 Case study on patent protection Case study on the commercialization of a patented productCroatian pharmaceutical company (Pliva) discovers new antibiotic (azythromicin)Pliva applies for patent protection in Croatia and in various potential export marketsLarge pharmaceutical multinational Pfizer searches patent databases and discovers the Pliva patentPliva licenses Pfizer to produce the antibiotic in the US as well as in some other countries in Western Europe while Pliva maintains the exclusive right to commercialize the antibiotic in Eastern Europe