An introduction to Intellectual property rights Part I 21/08/2017 Jan Demolder, PhD European Patent Attorney
Overview • • • • • •
The role of Intellectual Property Rights in innovation Types of IPR: trademarks, copyright, and more What is a patent? What is/is not an invention? What is a patentable invention? Patents and Innovation
Intro • Society’s changing expectations Traditional [manufacturing] industries are leaving Europe To maintain our welfare, Europe is betting on the knowledge economy
Intro • Society’s changing expectations The knowledge economy is thriving on innovation • • • • •
Biotech ICT Nanotechnology Cleantech 3D-printing
Universities and research institutes are hot spots for innovation
Tech Transfer Tech Transfer
= the movement of knowledge between different parties = the transfer of knowledge from an academic institution to industry
Tech Transfer: definition Purposeful transfer of the results of fundamental/basic research from universities and research institutions into the economy and the society via protection and out-licensing of intellectual property rights and via collaborative research with industry
Tech transfer Contact sport between: 1) Researchers and tech transfer team of university/public research organisation 2) Researchers, technology acquisition/licensing/business development managers and chief officers of industry, and 3) Investors (business angels, seed capital, venture capital, institutional investors, initial public offering...), using...
Intellectual property rights are at the basis of tech transfer:
An intermezzo Intellectual property rights (IPR) = an umbrella term for various exclusive rights attached to ‘products of the mind’ = IPR grant a legal protection to its creator and the subject of its creation
Intellectual property rights (IPR) Intellectual Property Rights Important Remark: Law is sometimes different between country to country (ex. between EU and US), law is not stable and changes continuously, innovative technologies continuously create new challenges for specific intellectual property protection
TRIPS agreement (1 january, 1995) • The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is an international agreement administered by World Trade Organization (WTO) that sets down minimum standards* for many forms of intellectual property rights (IPR) as applied to nationals of other WTO** Members *adequate protection of IPR, how countries have to implement, respect and enforce IPR **WTO: World Trade Organisation (started on 1 january 1995): 164 members, the organization deals with regulation of trade between participating countries by providing a framework for negotiating and formalizing trade agreements
Intellectual property rights are everywhere in the society and come in many different types: Mostly Patents, but also: Trade Marks Industrial Design rights Plant Variety rights Copyrights Database rights Trade secrets Regulatory data protection (data exclusivity) Geographical indications Utility modes Mask models TV formats Supplementary Patent Certificates (SPC)
Very often a combination of IPRs exist in one product
Importance of IPR-system
IPR system is needed to stimulate innovation !!
Cost of counterfeiting is huge
Importance of intellectual property rights • Essential business asset in the knowledge economy Swedish steel-maker Sandvik: 20% of its value is from IP! • Protects small innovative firms Dolby® Laboratories: 86% of its revenue from licensing its technology • Needed to release IP into the public domain under controlled conditions: Linux operating system (General Public License): improvements must be free too!
Importance of IPR in academic research • Academic research is embryonic Feasibility is unknown Market is unknown
• Development from concept to product is risky => Intellectual property rights (IPR) are an incentive to make a high risk investment => Increases funding for innovative projects => needed to attract (VC)-capital for startups
Examples of valuable intellectual property in society
Harry Potter Coca-Cola®
DNA copying process
Some examples of IPR: Plant variety rights / plant breeders rights = exlusive rights conferred to a breeder on a generated plant variety without authorization of the breeder the variety cannot be: grown (produced or reproduced) offered for sale sold exported imported stocked
Plant Breeders Rights (PBR) or Plant Variety rights (PVR)
Plant variety rights: registration • At nationale level, buy also at the Community Plant Variety Office which offers EU-wide protection • most countries have signed the UPOV convention* (different versions, 1961 – 1979 – 1991) Remark: in EU: no patent possible on plant variety, in US: double protection is possible
*UPOV: Union Internationale pour la protection des obtentions végétales
Plant Variety rights: how to obtain Seed deposit at a national or international office Variety right can only be obtained if variety is: novel distinct from other varieties uniform stable
Duration of protection: At least 20 years At least 25 years for varieties of vine and tree species
Plant variety rights versus patent rights ? 3 important differences with patent protection:
Breeder’s rights exemption Farmer’s privilege or Farmer’s Saved Seed Rights extend to harvested material of plants
Complex case: ‘transformed plant varieties’ • • •
A plant variety (i.e. a phenotypically distinct, uniform, stable and new agricultural and horticultural variety) can be regionally protected by a plant variety right (and –in Europe- not by a patent). A transformed plant can be regionally protected by a patent on the trait (see further) A transformed plant variety can thus be protected by a plant variety right from a plant breeder and as a ‘transformed plant’ and can thus also be protected by a patent from a biotech company... → a license from both the breeder and the biotech company is required to commercialize !
Trademarks (mark, brand, logo) Trademarks = is a recognizable sign, design or expression (even sound or odor) which distinguishes products (or services) of a particular business or company. The trademark owner can be an individual, business organization or any legal entity. A trademark is often located on the product.
Regulatory data protection (RDP) • RDP: value and proprietary nature of data (e.g. clinical trial data, field data, toxicology) submitted to regulatory authorities for product registration (e.g. agrochemical or new medicine) • Intention to keep generics out of market for certain amount of time • EU: 10 years /US: 5 years (pharmaceuticals) and 12 years (biologicals)
Know-how – Trade secrets by definition not public (confidential or secret information. This information has a commercial value and grants a company a competitive advantage against other companies Confidentiality is important and great care should be taken at the company level
Know-how Examples: • Technical know-how = experience, formulae, ... • Commercial know-how customer lists, marketing technics, ...
IPR: Trade Secrets • Formula, processes
Trade secret misappropriation Stealing of Trade Secrets: DuPont vs Kolon A jury in Virginia District Court has awarded damages of US$919 million for trade secret misappropriation against a South Korean company, Kolon Industries. Returning a verdict finding that Kolon illicitly made use of 149 such secrets, this works out at over $6 million per secret. Kolon competes with market leader DuPont in the lucrative market for aramid fibers. As reported by Bloomberg, DuPont alleged in their trade secrets action that Kolon had hired former DuPont executives and engineers as consultants, and then conspired with them to steal DuPont's trade secrets relating to the manufacture of these fibers. The jury agreed. It seems DuPont became particularly suspicious when Kolon hired former DuPont engineer Michael Mitchell, who had previously been in charge of DuPont's marketing of Kevlar. Following a complaint to the FBI (who handle such cases under their economic espionage jurisdiction), Mr Mitchell's home was searched, and the Feds found proprietary DuPont information on his computer. Last year, Mitchell pleaded guilty to theft of trade secrets and obstruction of justice, resulting in an 18 month prison sentence and an undoubted strengthening of DuPont's case against Kolon. Given the size of the award (which represents about a third of Kolon Industries' annual turnover, and a full four years worth of its operating profits), it is not surprising that Kolon plans to appeal. Kolon, responding to the jury's verdict, denies that it sought or solicited any trade secrets from the ex-DuPont consultants it hired, or that it was aware that any information it received was in fact a trade secret. Kolon also claims that at least some of the information was in the public domain, presumably in the hope of at least whittling down the number of items regarded as secrets on appeal, leading to a corresponding reduction in damages. Posted By David Brophy to The IPKat on 9/15/2011 11:15:00 PM
Industrial design rights • Design patent (US) – design rights (EU) • (US): Industrial design right granted on the visual design of a functional object, term: in US usually 14 years after grant of a design patent • “Functional” ≈ practical function
Industrial design rights • Rights on the visual design, examples: a computer logo or a product • An industrial design patent (US) protects only how a product looks like (esthetic effects) and not its function (not its techical effects) ! • Many products have a design right and patent rights (e.g. smartphone) • EU: protection via registered Community Design Right (max 25 years) or even non-registered (e.g. fashion design)
Example of recent law suit: Apple versus Samsung
Standard in US-Court: ... If the accused object is sufficiently similar to the figures in the design patent so that a typical observer would confuse the two, then the accused subject infringes the design patent
Everything original that you write (or draw or paint), regardless of whether it is an e-mail, a painting, an image, a thesis, a web page, a database or anything else (such as a computer program or song) is copyright protected by you. Term: lifetime of author + 50/70 years
Copyright = offers temporary, exclusive rights conferred to the holder of a copyright “the right to control the copying” Exclusive rights associated to copyright: • To produce copies of the work and to sell those copies • To import or export the work • To creative derivative works (works that adapt the original work) • To perform or display the work publicly • To transmit or display by radio or video
DATABASE RIGHT (“databank”) Databank: “A database is a collection of information that is organized so that it can be easily accessed, managed and updated” A database with a substantial investment: sui generis protection for the producer (15 years) (prohibits the transfer of substantial part of database)
DATABASE RIGHT(2) • Protection of the investment for: Aquisition of the data Control of the data to generate the database Presentation of the database: eg structure or content
Most important in tech transfer practice: Patents
The first account of a "patent system" In the ancient Greek city of Sybaris (destroyed in 510 BC), leaders decreed: "If a cook invents a delicious new dish, no other cook is to be permitted to prepare that dish for one year. During this time, only the inventor shall reap the commercial profits from his dish. This will motivate others to work hard and compete in such inventions."
Ordonnance City-State Venice (first written patent law, 1474)
Venice enacts a patently original idea
Thanks to the goodness and grandeur of our city, we have citizens and we attract visitors from all corners of the world, who are highly gifted and who are great thinkers capable of coming up with all kind of ingenious findings. If we can secure that their products of the mind and their inventions cannot be copied by others who have simply seen their inventions, we should be able to sharpen their talent and encourage them to invent products which could be of great benefit to the City
Venice enacts a patently original idea (2)
Therefore, this council decides that anyone in this City who makes an ingenious finding which has never before been made in our region and which is available for use, may report this finding to the City council. Without prior approval and license from the original inventor, and for a period of ten years, it will be forbidden to everyone to copy such finding and use it in our region
Venice enacts a patently original idea (3)
In the event someone copies the finding without approval, the inventor has the right to initiate a court case in this City. The court can force the copier to pay 100 ducats and to destroy the copied finding immediately.
Modern Patents: definition … a contract between the inventor and the state.
… limited in time (for up to 20 years) granted to an inventor in exchange for a full disclosure of the invention …limited to the specific state
A patent is territorially limited to one state….. No worldwide patent Intention for a European Unitary Patent...
Various cooperations (e.g. EPO) centralizing application and granting procedure
Protection paradox: a patent... • provides a negative right
• … does NOT give the owner the right to use the invention
• … does NOT provide freedom to operate.
A litigation document: i.e. gives you the right to sue anybody who you think is making, using, selling, or importing your invention into the country where your patent was issued
Import of a product made by a patented process
Interplay between dependent patents
Dominant patent vs Selections patents a Gene an allelic variant a splice form a specific use an siRNA construct a vaccin a gene therapy vector comprising the gene
Patents can be granted for inventions Art 52 (1) of the European Patent Convention (EPC): ‘European patents shall be granted for any inventions, in all fields of technology, which are new, involve an inventive step and are susceptible of industrial application.’
Must be concrete and of technical character (cf. ‘all fields of technology’)
Are not regarded as ‘inventions’:
• Discoveries, scientific theories, mathematical methods • Aesthetic creations • Schemes, rules and methods for performing mental acts, playing games or doing business, and computer programs • Presentations of information
Examples (Europe) •
The mere discovery of a gene or a substance existing in nature is not patentable; if however ‘a technical effect’/ ‘a practical use’ is revealed, a gene or a substance might be patentable. (US: recent supreme court decision – June, 2013 – Myriad-case)
A painting defined by subjective, aesthetic aspects is not patentable; a painting defined by the dyes used (i.e. defined by technical features having a technical effect) might be patentable. Computer programs might be patentable if they solve a technical problem
Inventions, but not patentable (Europe) • Methods to treat humans/animals and diagnostic methods practised on humans/animals (but not products used to treat) • Inventions contrary to ‘ordre public’ or morality (ex. letterbombs, human clones,...) • Plant or animal varieties or essentially biological processes for the production of plants or animals (not microbiological processes)
Not patentable biotech ‘inventions’ •
Methods for cloning human beings
Methods for modifying the germ line genetic identity of human beings
Uses of human embryos for commercial purposes
Methods for modifying the genetic identity of animals and genetically modified animals if they are likely to suffer without substantial benefit to man or animal
The human body or one of its elements including genes (an isolated gene having industrial applicability is patentable)
Patentable (biotech) inventions 1) products: (small) molecules, nucleic acid sequences, amino acid sequences, plasmids, yeast cells, viruses, bacteria, human-, animal- and plant cells, transformed plants and non-human animals, vaccines, biologicals... 2) processes to produce products 3) uses of products to make diagnostic tool, purify proteins, make stressresistant plants, visualize substances in situ,...
Tech Transfer Challenge • development of a novel drug requires on average 1.5 billion dollar [> 15x annual VIB budget] • development of novel crops, diagnostics, feed or food is cheaper, but also requires very large cheques • [~150 M€ for a novel transgenic corn variety]
Tech Transfer and the need for IPR • Academic research is embryonic Feasibility is unknown Market is unknown
• Development from concept to product is risky => Intellectual property rights (IPR) are an incentive to make a high risk investment => Intellectual property rights (IPR) help to trigger the “first mover’ by providing certain protection against later competitors
Keeping out competitors
Conclusions • Intellectual property rights enable businesses to invest in the development of novel products • Patents form the basis of innovation in Biotech • Academics who want to see their research reach society (which requires other people to invest in it), need to think about protecting their inventions prior to disclosing them.
“Great scientists can do great in tech transfer”