INTELLECTUAL PROPERTY OVERVIEW Patrícia Lima October 14 th, 2015
Intellectual Property INDUSTRIAL PROPERTY (INPI) COPYRIGHT (IGAC) It protects technical and aesthetical creations, and trade distinctive signs. Patents and utility models; Designs and models; Trademarks and logos. It protects the forms of expression of ideas. Books; Photographs, Paintings; Music; Algorithms; Software, among others. 2 Source: INPI
Intellectual Property Some IP found in a mobile phone Trade marks: Made by Apple" Product iphone Patents: Data-processing methods Semiconductor circuits Chemical compounds Fingerprint identity sensor Copyrights: Software code Instruction manual Ringtone Trade secrets:? Designs (some of them registered): Form of overall phone enclosure 3
Role of Patent System Encourage technological innovation Promote competition and investment Encourage dissemination of information Promote technology transfer 4
Inventions An invention is a novel technical solution for a specific problem. Forms of protection of inventions in Portugal: Both are industrial property rights that enable their assignees to exclusively exploit the invention and prevent third parties to use the invention without their consent Duration: Patent (20 years) / Utility model (10 years) Territorial Protection 5
Inventions These are not considered inventions: Discoveries, scientific theories, mathematical methods; Presentation of information; Surgical or therapeutical methods of treatment; Human body; Plant varieties and animal breeds; Software (except CIIs). 6
Patents Patentability Criteria: To be patentable, an invention must: be NEW (novelty) involve an INVENTIVE STEP be SUSCEPTIBLE OF INDUSTRIAL APPLICATION 7
Novelty An invention is new when it is not part of the state of the art. What does this mean? State of the art: Everything that was made available to the public, inside or outside the country, through written or oral disclosure, use, or in any other form, BEFORE the submission of the patent application. It includes the contents of all patents and utility models applications in the country that have not been published yet. 8
Novelty Is it possible to publish and patent the same result/invention? Yes, but you must always file the patent application BEFORE you publish the results. Submit the patent application BEFORE any public communication or disclosure 9
Inventive Step An invention is considered to involve an inventive step if it is not obvious to an expert in the field. An expert in the field: Is a regular practitioner Knows about what is common knowledge in the technical field Has access to everything that is available in the state of the art Has regular capacities for the development of routine work, but has no inventive capacity Cannot predict an unexpected result 10
Inventive Step Patents vs Utility Models In the case of utility models, there is inventive activity when the invention is not obvious to an expert in the field OR When it presents a practical or technical advantage in comparison with the state of the art. INVENTIVE STEP 11
Industrial Application The usefulness criterion The object of the invention can be produced or used in any type of industry. 12
Patent Drafting - Overview Summary of the invention (Abstract) Description (defines the invention) Claims (define the scope of protection) Drawings 13
Patent Drafting - Overview 14
State of the Art Search Some free websites for state of the art search: WIPO - http://www.wipo.int/patentscope/search/ EPO - http://worldwide.espacenet.com/ USPTO - http://www.uspto.gov/ INPI - http://servicosonline.inpi.pt/pesquisas/main/patentes.jsp?lang=pt and more. 15
Economic Exploitation Patent application filed. What s next? The applicant has an exclusive right over the invention Obligation to exploit (art. 106, Portuguese Industrial Property Code) 16
Economic Exploitation Licensing Transfer Spin-off creation 17
Economic Exploitation Protection Abroad International Application via Patent Cooperation Treaty (PCT) Possible to seek patent protection for an invention in 148 contracting states in a single application; Entry into national phases: 30 months from the priority date; Validation of the patent in the selected countries; Payment of fees required ( ). European Application Possible to protect the invention in some or all of the countries European Patent Convention; Centralized procedure at EPO; Validation of the patent in the selected countries; Payment of fees required ( ). 18
Economic Exploitation Online Application 101,40 National Patent ( ) (includes publication + examination) Renewal 0-4 th year 0 5 th year 50 10 th year 350 20 th year 700 European Patent ( ) PCT ( ) 115 1.094 + 0-2 nd year 0 5 th year 775 10 th year 1.495 20 th year - 1.495 12 / page (after 30 th page) To these you must add examination, search, translation and other fees!!! Source: INPI, EPO (2012). 19
Technology Transfer Office @ IST Intellectual Property IP Policy (July 2010): changes included more benefits for inventors and creators and new decision process (legal, technological and commercial due diligence) Commercialization effort (IP contracts) 20
Technology Transfer Office @ IST Master and PhD Theses In case of confidential information, theses must include an annex with the confidential information The members of the jury must sign a non-disclosure agreement 21
Technology Transfer Office @ IST Corporate Partnerships Recruitment of IST s students through partnerships with companies IST/companies interface Job bank Analysis of CVs 22
Technology Transfer Office @ IST Thank you! Our contacts: E-mail: pi@tecnico.ulisboa.pt Website: http://tt.tecnico.ulisboa.pt 23