Intellectual Property - IP Info

What is IP?

Intellectual Property, or IP, is a term for intangible property rights which are a result of intellectual effort in the scientific, literary, industrial or artistic fields. These are legal rights, which are enforceable in a court of law, subject to conditions for their validity being fulfilled.

 

The main types of IP are confidential information, patents, trademarks, copyright, semi-conductor layout designs, geographical indications and registered designs.

 

IP rights can arise either automatically, as in the case of copyright, confidential information, unregistered marks and geographical indications; or only when applied for, as in the case of patents, trademarks and registered designs. Many technologies may be protected by more than one type of IP right as the protection operates in different ways. Hello.

 

Why Bother With IP?

The benefits of a properly maintained and consolidated IP portfolio are two-fold:

1.    A*STAR is able to maintain its dynamic and unencumbered research environment through the continual expansion and consolidation of its IP portfolio; and

2.    IP generated at A*STAR, as the driver and generator of IP in Singapore, is geared towards benefiting industry.

 

Who Is Owner Of IP?

Ownership of all IP generated by employees of A*STAR Research Institutes during their period of employment is automatically assigned to A*STAR Research Institutesby virtue of the employer-employee relationship; these IP are in turn consolidated with A*STAR as the owner. On the other hand, inventorship or authorship will always be attributed to the IP creator even though not being the owner.

What Rewards Are There For IP That Is Commercialised?

If the IP is commercialised, net cash receipts of commercialisation income that accrues to A*STAR is subject to deductions of 15% for Exploit Technologies' overhead and commercialisation costs, all IP protection costs and payments to third parties. The balance is allocated as follows - 1/3 to inventors, 1/3 to the research institute(s), and 1/3 to A*STAR. Payment is subject to the relevant inventor contact information being formally conveyed to Exploit Technologies or A*STAR, and continued support in the IP protection by the inventor.

 

What Is A Patent?

A patent is a monopoly right granted by a government to the owner of the patent for a limited period to exclude others from using that invention. In IP jargon, this is a negative right to prevent others from using the invention without permission. In return, the applicant has to FULLY DISCLOSE his invention to advance the state of the art.

 

Patents only protect inventions that are NEW, INVENTIVE and INDUSTRIALLY APPLICABLE. Typically, only after a patent office examiner determines that a filed application fulfills all three patentability criteria is a patent then granted.

 

NEW = NOT IN THE PUBLIC DOMAIN

 

Who Is An Inventor?

Co-authors of a publication are not necessarily co-inventors of an invention. Likewise, suggesting a problem to be solved does not necessarily make the person suggesting the problem an inventor.

 

Authorship of scientific publications is frequently based on overall contribution to a work (and occasionally on relational or courtesy considerations). The Singapore Patents Act defines inventorship strictly based on identifiable devisors of an invention. Thus, a lab technician following instructions is seldom regarded as an inventor under patent law. In some countries, including a non-inventor or omitting an inventor in a patent application has legal implications – it may be grounds for invalidating a patent granted for that patent application.

 

Is Submitting An Invention Disclosure to A*STAR Considered A Public Disclosure?

Technology disclosures submitted to A*STAR or Exploit Technologies are covered under confidentiality obligations and are therefore not considered as public disclosures.

 

Is It Possible For Inventions To Be Both Patented And Published?

DEFINITELY YES! Patenting and publication or disclosures are not mutually exclusive. If you’re considering publication, setting up a meeting with industrial people, or in doubt about any other situations in which details of an invention are to be provided, make it a point to involve A*STAR/Exploit Technologies as soon as possible.

Four basic ways of obtaining patent protection while being able to publish and collaborate:

 

1.    File a patent application before publication: Publication defeats patentability only if it occurs before filing for patent protection.

 

2.    Use Confidential Disclosure or Non-Disclosure Agreements when communicating to persons with no obligation to hold communicated subject matter confidential: For example, in a meeting with external personnel interested in your work, whether at A*STAR or elsewhere, a Confidential Disclosure Agreement can make the difference between retention and loss of patent rights.

 

A*STAR can assist in the use of the above agreement. So, if you are scheduling a technical meeting with people outside of A*STAR, a call to Exploit Technologies activates us to help protect any potential patent rights.

 

3.    Don’t give enabling information that teaches how an invention is made or used: Since a communication must be enabling to defeat patentability, a researcher can also protect patent rights merely by giving a “tantalizing glimpse” of a technology without revealing technical details.

 

CAUTION: Withholding technical details may not always be appropriate especially at scientific meetings, so please check with Exploit Technologies if in doubt.

 

4.    Mark information “CONFIDENTIAL” where appropriate: It never hurts to mark something as “CONFIDENTIAL”. This is not a guarantee, but it can help if the recipient of information is then expected to hold such information confidential as a result.

 

Remember that disclosing patentable subject matter, even though marked as 'CONFIDENTIAL', may still adversely affect patentability. In this regard, do consider patenting before any disclosure and feel free to contact Exploit Technologies if in doubt.

 

Where Can Researchers Go To Find Out More About Issues In IP?

A*STAR researchers can find out more about Intellectual Property and how to safeguard their research when collaborating with external parties by logging on to Exploit Technologies’ E-Learning portal.

 

http://elearning.exploit-tech.com 

To find out more on A*STAR’s IP Policy, click here