Case Study 1 and 2 - Missing Brain and Renewable Energy
THE CASE OF THE MISSING BRAIN: AN IP CASE STUDY Questions: On Patents 1. What are UToc’s IP assets that could qualify for patent protection? UToc’s can apply for patent since they come up with an invention, a memory enhancer, and it complied with the Section 21 of the IP Code - Any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable shall be patentable. It is new or novel because it does not form part of the prior art. The UToc’s researchers conducted a prior art search in which they dug into tons of patents documents to check on available memory enhancers and they chanced upon Patent No. 007 granted in Itsonia. But the patent was for a brain massager and not for memory enhancers that stimulates the creation of more cells enhancing the memory capacity of the brain. It also involves an inventive step or to be non-obvious when, taking into account the prior art, their invention is not obvious to a person skilled in the particular field of technology and a person with ordinary skill in the field could easily deduce it from what already exists. Lastly, it is capable of industrial application or business purpose since it is beyond a mere theoretical phenomenon, useful and can provide some practical benefits. Their invention covered the subject matter that the IP Code has defined as patentable. Utility patents are the most common types of patents, and they are available for inventions of products or processes, or improvements to existing products or processes. Utility patents are what most people associated with patents and are the type most frequently granted. Utility patents cover: Processes - business processes, computer software, engineering methods, etc.; Machines - anything that performs a function; Articles of manufacture - a catchall category that covers anything manufactured; and Composition of matter - pharmaceuticals, chemical compounds, artificial genetic creations. 2. How could they have protected their research better? Based on my point of view, the UToc’s researchers should not have consulted a corporate lawyer rather a patent attorney. It is stated in the case study that the corporate lawyer did not have any scientific background so he disclosed the invention to a pharmacist which may lead to infringement and risks. A pharmacist had both the scientific background and knowledge on drafting specifications and claims of a patent compare to the corporate lawyer. The corporate lawyer didn’t maintain the secrecy of the
patent and he even introduced it to the another person so that’s why it is not possible that others may steal their invention and can patent it earlier because the UToc researchers lose the trade secret and patent protection. It is the patent attorney who has the qualifications and rights when it comes to enforcing a patent. Also scientific, legal, and practical considerations must be carefully weighed to best protect an inventor's rights. Corporate lawyers ensure the legality of commercial transactions. They must have knowledge of statutory law and regulations passed by government agencies to help their clients achieve their goals within the bounds of the law. To structure a business transaction legally, a corporate lawyer may need to research aspects of contract law, tax law, accounting, securities law, bankruptcy, intellectual property rights, licensing, zoning laws, and other regulations relating to a specific area of business. While a patent lawyer advises on intellectual property (IP) and helps IP owners register and maintain their property; apply for and secure patents, registered trademarks, industrial designs and plant variety types; assist them in taking any steps for enforcing their patent both domestically and/or in any export markets; advise them on the costs and the risks involved and the best strategy; determine whether a development is new and sufficiently inventive enough to justify a patent; determine the nature and ambit of inventions and prepare patent specifications; and help clients manage their IP portfolios, advise on patents and registrations held by others, and advise on whether developments infringe or might infringe rights held by others. It can be seen clearly that it is only the patent attorney who is entitled to prepare, amend and file patent applications on behalf of the researchers. The titles patent agent and patent lawyer are also used in some jurisdictions. In some jurisdictions the terms are interchangeable, while in others the latter is used only if the person qualified as a lawyer. 3. If UToc were sued for infringement, how can they defend themselves? On the other hand, can UToc run after the owner of Brainex? It may be hard for them to defend themselves since the owner of the Brainex already patented the invention. Once a patent is granted, no other party can even legally argue that they independently created it. What this means is you have an iron-clad lock on all uses of the patented invention. But the court can also find that there are other reasons why the patent owner is not entitled to prevail against you. It will take long process before any decisions be made. Under the Section 3 Part 4 Rule 304 of the Revised Implementing Rules and
Regulations for Patents, Utility Models and Industrial Designs which is the First-toFile Rule - If two (2) or more persons have made the same invention separately and independently of each other, the right to the patent shall belong to the person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or the earliest priority date (Sec. 29, IP Code). In short, if someone else legitimately invented the same invention after you invented it, but before you published anything about it or filed for a patent, then he would receive the patent. Also when the UToc’s researcher filed for patent application the owner of the Brainex already patented it and was ready for commercialization. Maybe the UToc have least chances to run after the owner of Brainex , aside from the fact that they already patented it , it will take time to prove and to have a final decision regarding to their case. It is stated that the UToc divulged the invention to the corporate lawyer which means they give all their complete trust and their full invention to the corporate lawyer rather to the patent attorney. If it is the exact invention that have been stolen then it also have the exact claims as a patented invention, then the UToc will be sued for literal infringement. Literal infringement means that the elements of a patented claim are present in an infringing article or product. When the court analyze the features of the product they compare the claims of the patents and this happens by checking each independent claim in the patent and seeing if each claim feature is found in your product or invention. Not only the claim but starting from the description, abstract, ideas, and drawings were being copied. After the owner of the Brainex filed an infringement against UToc, UToc can defend and argue that it is the corporate lawyer who disclosed the invention to others so that they lose their secrecy and others have stole it. Infringement means that the particular technology falls within the patent claims. If the technology falls within the claims, the next phase of evaluation is to determine whether the patent is valid. If the patent is invalid, there can be no infringement regardless of whether the technology is embraced by the claims. The corporate lawyer should inform the UToc that filing a patent is not in the scope of his job and tell them that it should be the patent attorney. But the final decision will be coming from the court because they are responsible for settling disputes and infringement cases from both parties. On Trademarks 1. What are the UToc’s IP assets that could qualify for trademark protection? The name of their invention whether one word or group of words, symbol, logo, or combination of these are qualified if UToc’s planned to make use of them in their invention. Their trademark should be able to distinguish their goods or services from
those of others. It should also meet also meet the requirements for registrability of marks under Sec. 123.1 of the Intellectual Property Code. Since UTocs are doing conferences, presenting it to exhibitions and later on commercialize the invention, it will be better if they have their own trademark to differentiate their invention from the others, take action against infringers and have powerful tool to take action against imitators and free riders. Trademark is a very effective tool that makes the public remember the quality of goods and services. Once a trademark becomes known, the public will keep on patronizing the products and services. Utilized properly, a trademark can become the most valuable business asset of an enterprise. In addition to making goods and services distinctive, the owner of a mark may earn revenues from the use of the mark by licensing its use by another or though franchising agreements.
2. If UToc were to commercialize their herbal patch under the trademark “UToc Pneumonic” what would happen? The patent application will not be granted or be enforced since according to the Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs under Section 3 Part 4 Rule 410 - the title shall be in technical terms particularly referring to the technical feature or features of the invention. All fancy names are not permissible in the title. Also according to the Handbook on Industrial Property Information Guidelines the title should clearly, concisely and as specifically as possible indicate the subject to which the invention relates. But since the subject matter is all about memory enhancer, the title “UToc Pneumonic” is invalid since pneumonic is relating to and affecting to the lungs or to the pneumonia (Meriam Webster Disctionary). It should be remembered that the titles of inventions in patent documents form a useful secondary source of information, provided that they are reasonably informative. Titles of inventions convey to the user of patent documents a first impression of the main content of the invention.
On Copyright 1. What are UToc’s IP assets that could qualify for copyright protection? Since upon filing patent application they wrote about their invention in the scientific journals, presented it in conferences and showed it in international exhibitions they may apply for copyright protection. Copyright law grants authors, composers, computer programmers, website designers and other creators legal protection for their literary, artistic, dramatic and other types of creations, which are usually referred to as “works”. For purposes of copyright protection, the term “literary and artistic works” is understood to mean every original work of authorship, regardless of its literary or artistic merit. Scientific journals, audiovisual works, photographic works and pictorial illustrations for advertisements are among that UTocs can apply for copyright protection since it is part of how they disclose the invention to the public. Tthe computer chip that they have used in making the memory enhancer can be also qualified for copyright protection since it is related to computer software. On Patent Information 1. How could they have used patent information to their advantage? Patent information is the name we give to the technical information you find in patent documents, plus any legal information about them. Patent information can be helpful in many ways. One advantage of using patent information is to help UToc make inform decisions when choosing strategies for researching or developing new inventions. They can monitor patent documents to keep an eye to the competitors, to identify patents that are no longer in force and can be freely used. They can also avoid from infringing someone else’s patents. Patent information contains technical information, legal information, business-relevant information and public policy-relevant information. Technical information covers the drawings and description of the invention. Legal information defines the scope of the patents from the patents claims and from its legal status. Business-relevant information identifies the inventor, date of filing, origin, etc. from reference data. Public policy-relevant information from the analysis of filing trends to be used by policymakers. If UTocs were able to utilize patent information they can prevent others from infringing their invention, help them in identifying development trends, monitor the IP activities of their competitors and prevent them from duplicate developments and this will all results to a valuable research and development activities. Moreover, they can also find partners to enter into a license agreements which allow them to use their patents and vice versa.
Additional instructions: Based on my opinion, it should be stated where does the owner of the Brainex commercialized their invention because the Brainex cannot file an infringement case if the UToc’s is commercializing the same invention but not the same place as Brainex. As patents are territorial rights, the place where the Brainex patent was granted will be limited to the geographical boundary of that place. They can sue UToc’s for infringement if they are in the same place. Since patents are territorial rights, infringement is only possible in a country where a patent is in force. For example, if a patent is granted in the United States, then anyone in the United States is prohibited from making, using, selling or importing the patented item, while people in other countries may be free to exploit the patented invention in their country. The scope of protection may vary from country to country, because the patent is examined or in some countries not substantively examined by the patent office in each country or region and may be subject to different patentability requirements.
References http://www.wipo.int/edocs/lexdocs/laws/en/ph/ph093en.pdf http://www.lawmart.com/forms/difference.htm http://smallbusiness.findlaw.com/intellectual-property/utility-patents-overview.html http://www.princetonreview.com/careers/168/corporate-lawyer http://www.caskaip.com.au/services_item/patent-attorneys-patent-lawyers/ http://smallbusiness.findlaw.com/intellectual-property/enforcing-patent-rights.html http://www.astudillolaw.com/pdf/FAQs%20on%20Trademarks.pdf http://www.ipophil.gov.ph/services/trademark/about-trademark http://www.wipo.int/export/sites/www/uipc/en/documents/pdf/patent_inf_epo.pdf
Hypothetical Case - Renewable Energy: Wind and Solar Yumiko Hamano
Dr. Troja and Dr. Joksimovic have a prototype of the Smart Turbine which is a highly efficient wind energy and solar energy collector. It deals with the renewable energy and they should have consulted a science-technical expert upon negotiating with Karpatia. The Chief Technology Manager and a company lawyer represent the Karpatia while the two professors and a patent attorney represent the university. But they also need a scientific-technical expert that will provide scientific and technological expertise and conducts due diligence research relating to the technology at issue. Both parties have decision makers which have an authority to commit both parties particular deal terms. Once the team is in place, it's important to meet and reach an understanding of the motivation for the deal and to go over each member's responsibilities. Both sides have signed non-disclosure agreements prohibiting disclosure or improper use of confidential information. It means that they determined that Smart Turbine is probably not patentable and the best way to protect it is to sign a confidentiality agreement before they disclose any secrets. Disclosure agreements vary in format but these main elements should be present: a definition of what is and what isn't confidential information, obligations of the receiving party, and time periods. A non-disclosure agreement covers what is and isn’t confidential and may include a section on what is considered a trade secret. It also excludes some information from protection to establish the boundaries of the agreement and disclosure, but without actually disclosing the confidential information. That’s why they have an attorney with them because the attorney knows what he is doing to create agreements and enforceability is the key to a non-disclosure agreement. Then the obligations of the receiving party must hold and maintain the confidentiality of information and can also limit the receiving party’s power to use the information. Once they received the confidential information they cannot breach the confidentiality, induce another to breach the confidentiality or any improper means. It also include of how they will handle third parties who aren’t part of agreement, as well as setting forth how information should be handled and stored. Next is the time period which will determine how long the obligations last. One of the conflicts between two sides is that the other wants a longer period of time of protection while the other wants a shorter period of time. This issue is often a subject of negotiation. Five years is a common length in the United States. However, many companies want on no more than two or three years. The decision will depend on the factor of negotiations and in relation of bargaining powers of the parties involved. Lastly, miscellaneous provisions are included at the end of the non-disclosure agreements. It involved consequences and penalties in the event that one party breaches the agreement. They have to consider what forms of resolution or settlement will make sense like arbitration, mediation or other alternative forms and the venue selection clauses.
In additional to non-disclosure agreement is they should have a joint privilege agreement if both parties want to discuss legal opinions and avoid waiving the attorney-client privilege. Attorney-client privilege is a rule that preserves the confidentiality of communications between lawyers and clients. Under that rule, attorneys may not divulge their clients’ secrets, nor may others force them to. The purpose of the privilege is to encourage clients to openly share information with their lawyers and to let lawyers provide effective representation. It applies when the prospective or actual client communicates with a lawyer in consultation of legal matter; the lawyer acts as competent professional; and the client intended the communications to be private and acted accordingly. The privilege stays in effect even after the attorney-client relationship ends, and even after the client dies. In other words, the lawyer can never divulge the client’s secrets without the client’s permission, unless some kind of exception applies (United States v. White, 970 F.2d 328 (7th Cir. 1992); Swidler & Berlin v. United States, 524 U.S. 399 (1998).) The attorney-client privilege differs somewhat from state to state, and between state and federal court. It is important that the attorney of both sides make sure to go over the scope and boundaries of the attorney-client privilege and the duty of confidentiality. Any relevant areas not covered by the agreement shall be address and the lawyers should be able to advise them of the applicable law. Once they clearly define the goals, they should only disclose the information that is necessary to achieve that goal and nothing more. Remembered that not because they have entered to joint privilege agreement, it doesn’t mean that all confidential information is protected. Before sharing any information, make sure that the written agreement is in place and signed by all defense counsel and parties to the agreement. Finally, as with any decision that affects your client, you should fully disclose to your clients the benefits and risks of entering into this agreement and obtain their informed consent before proceeding. It is therefore important to seek an attorney regarding legal advice at the earliest time not only for protection but against the disclosure of the sensitive documents.
References http://www.nolo.com/legal-encyclopedia/lawyers-lawfirms/attorney-client-privilege.html http://www.hfw.com/downloads/Client%20Brief%20 %20Joint%20Venture%20Parties %20[A4%204pp]%20July%202011.pdf http://www.steptoe.com/assets/attachments/3264.pdf http://www.americanbar.org/news/abanews/aba-news archives/2013/07/joint_defense_agreem.html http://www.dentons.com/en/insights/newsletters/2015/september/30/daily-report-inpractice/joint-defense-vs-common-interest-agreements