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CREATING AND MANAGING INTELLECTUAL PROPERTY Creating and Managing Entrepreneurial Ventures UNL, 09/04/2014 Ricardo do Nascimento Ferreira (MLGTS /FDUNL) 1
CREATING AND MANAGING
INTELLECTUAL PROPERTY
Creating and Managing Entrepreneurial Ventures
UNL, 09/04/2014 Ricardo do Nascimento Ferreira (MLGTS /FDUNL)
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Source: The Basics of Intellectual Property Law - The Rosetta Stone to Understand
Intellectual Property, by A. David Spevack, Office of Naval Research
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Non-physical goods, creations of the mind
If an author writes a book, he owns the copyright, he
has rights over what happens to the content of the book.
But if you buy that book, the author does not own your
copy of the book, he has no right over what you do with
that particular copy of the book. But the author has
control over how you use the content of the book and
can control your reproduction of the book, translation of
it, etc.
IP is independent from property over the respective
supporting materials
INTELLECTUAL PROPERTY
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INDUSTRIAL PROPERTY
CPI
COPYRIGHTS
CDADC
Protection of literary,
scientific and artistic works
Literature (writings)
Music
Photography
Cinema
Paintings, architecture
Protection of technical
creations (inventions),
designs and symbols
(names/images) used in
commerce
INTELLECTUAL PROPERTY
Patents
Utility Models
Designs or Models
Trademarks
Trade Secrets
Unfair Competition
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Attribution of exclusive rights (IP rights) to exploit
intellectual goods and prevent others from doing so
Acquisition
Industrial property rights – registration
Copyrights – creation/no registration
Temporary nature
Patents – 20 years from the application for registration
Copyright – 70 years after the death of the author
How does it work?
INTELLECTUAL PROPERTY
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COPYRIGHTS
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Código do Direito de Autor e dos Direitos Conexos
Copyrights: literary, scientific and artistic works
Related rights: performing artists in their
performances, producers of phonograms in their
recordings and broadcasters in their radio and
television programs
COPYRIGHT – sources of law
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Copyright protects works:
• Works: intellectual creations in literary, scientific and artistic
domains, by any means expressed
• Ideas, processes, systems, methods of operation, concepts,
principles or discoveries are not, per se and as such, protected as
copyrights
Copyright does not protect ideas, it protects the
expression of ideas
Since there is no copyright in ideas or information, it is no
infringement of copyright to adopt the ideas of another or
to publish information derived from another, provided
there is no copying of the language in which those ideas or
that information have been previously embodied
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Originality: does not mean that the work must be
expression of original or inventive thought; it only
means the work must not be copied from another work,
it should originate from the author
Copyright emerges with the creation of the work
No registration needed
Optional registration
Condition for protection
COPYRIGHT
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EXAMPLES OF WORKS
Original works:
Books, magazines, newspapers and other
texts/writings
Conferences, lessons, presentations (including oral)
Music (with or without words)
Cinematographic and TV works
Drawings, paintings, sculptures, architectural works
Photos
Designs
Works equivalent to original works:
Translations, arrangements, transformations of a
work
Summaries and compilations of works
Titles of works
Computer programs
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General rule
Duration
public domain
70 years after the death of the author
COPYRIGHT
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Double sided right
Moral rights
• Connected with the author’s personality
Economic rights
• Right to economically use the work (directly or indirectly)
COPYRIGHT
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ECONOMIC RIGHTS
Exclusive right to dispose of the work
Exclusive right to use the work directly or through an authorized third party
Uses of the work: publication, representation, exhibition, reproduction, distribution, translation, disclosure to public, etc.
COPYRIGHT
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MORAL RIGHTS
COPYRIGHT
• Even after transfer of copyrights, author, during
his life, retains moral rights to claim authorship
over the work and to ensure integrity of the work
• Even after author’s death, those rights are
exercised by his successors while copyrights are in
force
• After copyrights’ expiration, State protects
integrity of the work
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General rule – the author of the work is considered the owner
of the copyright in the work
Special cases
The party financing the work does not acquire copyrights, unless
agreed otherwise
Copyrights over works for hire or under employment agreement
belong to the author of the work, unless agreed otherwise; absence of
author’s name in the work is presumption that copyright belongs to
employer
Works done in collaboration are disclosed or published on behalf of
the collaborators – copyright belongs to all collaborators
Collective works are organized by a singular or collective entity and
disclosed or published on its behalf (newspapers) – copyright belongs
to that entity
University IP policies
Ownership
COPYRIGHT
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COPYRIGHT INFRINGEMENT
Piracy: use of a work without authorization of the author (a TV program uses a copyrighted music without authorization of the author)
Plagiarism: use of a work without authorization of the author, passing it off as its own (a student’s doctoral thesis reproduces another’s work as his own)
Plagiarism still exists if it is partial reproduction or if it is substantially similar to the copyrighted work (by changing or omitting occasional words)
Avoid plagiarism:
Cite properly when using others’ work
Use quotes when directly quoting
Credit the others – homage
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EXCEPTIONS TO COPYRIGHT INFRINGEMENT
If the work is not copyrighted: • Protection expired, already in public domain
• Was never copyrighted (copyright does not protect facts or
ideas)
If the use of the material is authorized by the
author
If the use is authorized by law (free/fair use) Private and non commercial use, teaching, criticism,
research
Reproduction must include citing and be short
Use of an illustration as part of the argument may
count as criticism; use as decoration falls out of free use
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PATENTS
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What is a Patent?
• Title granted by the State to
provide legal protection for
inventions
• State rewards innovation, as new
products lead to the formation of
new companies and other new
products
• In exchange for the inventor
making the invention public in
sufficient detail so that one skilled
in the art can reproduce the
invention after expiration of the
patent
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Types of Patents
Patents may be obtained for any inventions,
be they products or processes, in all fields of
technology
Product patents: apparatus, machine, device,
compound, substance, composition
Process patents: manufacturing process of a
product; use of a product
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Object of the Patent
• Not considered to be inventions: • Discoveries, scientific theories and mathematical methods
• Materials or substances already existing in nature and nuclear materials
• Aesthetic creations
• Schemes, rules and methods for performing mental acts, playing games or
doing business, and computer programs, as such, with no
contributions
• Presentations of information
• Inventions not patentable: • Processes for cloning human beings
• Processes for modifying the germinal genetic identity of human beings
• The use of human embryos for industrial or commercial purposes
• The human body, at the various stages of its formation and development
• Surgical or therapeutic methods for treating the human body, though
products, substances or compositions used in those methods may be
patented
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PATENTABILITY REQUIREMENTS
• Novelty: an invention is considered new if it does not form part of the state of the art
• Inventive step: an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art
• Industrial application: an invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry or in agriculture
• The state of the art shall be held to comprise everything made available to the public within the country or abroad by means of a description, by use or in any other way
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NOT TO DO BEFORE PATENTING
Publish manuscript, paper or thesis First patent, then publish
Disclose invention in a presentation
Discuss with anyone without a confidentiality agreement
Use invention, offer for sale or other
commercial activity 28
• Applied to and granted by INPI
• Patent application shall contain:
• The applicant’s personal information
• Name or title for the invention
• Identification of the first application filed, if applicant
wishes to claim priority right
• Claims that characterize the invention
• Description of the invention
• Drawings required for a perfect understanding of the
invention
• Summary of the invention
National Patent
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PATENT APPLICATION AND GRANTED PATENT
Claims shall define the object of the protection requested: careful
drafting, not too narrow-not too broad
Description shall give a brief, clear indication of everything
making up the invention and contain sufficient information so
that any person skilled in the art may carry out the invention
Drawings may consist of figures confined to the number strictly
necessary for an understanding of the invention
Summary is exclusively for technical information and consists of
a brief overview of the description, claims and drawings and
preferably shall not contain more than 150 words
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Patent Process
Examination of the form and limitations of the object of the patent
If the application is in order, it is published in the Industrial Property Bulletin
Submission of oppositions two months as of publication of the application in the Industrial Property Bulletin
Search of the state of the art in order to assess whether the requirements are met
If the search shows that the patent can be granted, the respective notice shall be published in the Industrial Property Bulletin
The decisions granting or refusing the patent may be appealed against within two months of their publication
Duration of 20 years from date of application •After the expiry, the invention can be put to use by any person
•SPC
Effective only in Portugal 31
EUROPEAN PATENT
European Patent Convention of 5 October 1973
A European patent is not a unitary right, but a
group of national patents
Granting of European patents via a single,
harmonized procedure before the EPO
When the EPO grants a patent to be valid in
Portugal, the patentee shall submit to the INPI a
Portuguese translation of the patent, on pain of the
patent not being effective in Portugal 32
EUROPEAN UNION PATENT
Unitary effect
All Member States, except Italy and Spain
Regulations will only apply from the date of entry
into force of the Agreement on a Unified Patent
Court
Coexists with European patents and national
patents
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INTERNATIONAL APPLICATION
Patent Cooperation Treaty (PCT), 19 June 1970
There is no “world” or “international” patent with
unitary effect
PCT application establishes a filing date in all
contracting states, followed with the step of entering
into national phases for granting
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PATENT OWNERSHIP
General rule: The right to patent belongs to the inventor; if two or
more persons have made an invention, any of them may apply for a patent on behalf of all
Special rule: If an invention was made during the performance of an
employment contract in which inventive activity is provided for, the right to the patent belongs to the employer
Applicable to inventions made by order Applicable to the State and administrative bodies and
their employees and service providers for any purpose
University IP policies
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PATENT INFRINGEMENT
There is infringement even when the infringer
develops his technology completely on its own and
has no knowledge of the patent
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PATENT INFRINGEMENT
Distinction: Literal infringement: Every element of the claim is found in
the accused device: For example, if your claim recites three
elements, A, B, and C, and the infringing device has four
elements, A, B, C and D, it will infringe. But if the infringing
device has only two of the three elements, A and B, it won’t
infringe.
Doctrine of equivalents: When there is equivalence between
the element of the accused device and the element claimed in
the patented invention.
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EXCEPTIONS TO PATENT INFRINGEMENT
Accused product is outside the scope of the claims
Patent has expired
Patent is invalid
Free uses Private and non commercial acts Trial or experimental acts, including approval of
generics
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Utility Models
New inventions involving an inventive step can be protected as
utility models, if they have an industrial application
Suited for minor improvements of existing products,
particularly in small and medium-scale enterprises and among
private persons
An invention can be protected by a utility model or patent, as
the applicant chooses, except: inventions involving biological
material or chemical or pharmaceutical substances or processes
Examination of the invention not mandatory: No examination requested, utility model granted provisionally
If the holder of a provisional utility model wishes to bring
lawsuits to defend its right, he must ask INPI to conduct
examination
Duration of utility model may not exceed 10 years from the
application
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DESIGNS OR MODELS
A design or model represents the appearance of a
product in whole or in part by virtue of such
characteristics as lines, contours, colors, forms, textures
or materials used in the product itself and its
ornamentation
New designs or models that are distinctive in character
shall have legal protection, i.e.:
If no identical design or model has been made available to the
public
If the informed user finds it different from other designs or
models which are available to the public
Duration up to a limit of 25 years from application
European protection (OHIM)
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TRADEMARKS
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DEFINITION
A trademark may consist of a sign or set of signs that
can be represented graphically, namely words,
drawings, letters, numbers and sounds, the form of the
product or respective packaging, provided that they
adequately distinguish the products and services of one
company from those of others
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FUNCTIONS
Distinction
Quality assurance
Publicity
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• Word trademark
• Graphic trademark
• Mixed trademark
TRADEMARKS
Adidas
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TRADEMARKS
Ownership and rights
Ownership by registration
Registration of a trademark confers upon the proprietor the
right to prevent third parties from using an identical or
similar sign without its consent in economic activities for
products or services that are identical or similar to those for
which the trademark was registered and which, as a result of
the similarity between the signs and the affinity between the
products or services, may give rise to a risk of confusion or
association in the mind of the consumer.
Validity: 10 years from grant, renewable – may be
indefinitely renewed
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TRADEMARKS
European trademark: unitary; OHIM
International application: does not create an
“international” trademark, but a bundle of
national rights
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Absolute grounds for refusal of trademark registration
Signs devoid of any distinctive character
Descriptive names
Trademark “Restaurant” to identify a restaurant
But it is possible to register “Restaurant XPTO”
Ideal protection of “fantasy” names
TRADEMARKS
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TRADEMARKS
Absolute grounds for refusal of trademark registration
Signs that are exclusively made up of indications that
may serve in commerce to designate the type, quality,
quantity, purpose, value, geographic origin, period or
means of production of the product or the service, or
other characteristics thereof
Trademark “Clothes” to identify the sale of shirts
But it is possible to register “Clothes XPTO”
And it is possible to register “Clothes” to identify
cigarettes
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Absolute grounds for refusal of trademark registration
Trademark that contains in some or all of its
constitutive elements:
Expressions or figures that are contrary to the law,
morality and public order
Signs that may mislead the public, namely as to the
nature, properties, utility or geographic origin of the
product or service for which the trademark is
designed (“Café de Timor” when the coffee is made in
Brazil; “Novix Fibra” when the technology used is
cable)
TRADEMARKS
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Relative grounds for refusal of trademark registration
Reproduction or imitation of all or part of a trademark
previously registered by another person for identical or
similar products or services that may mislead or confuse the
consumer or comprise the risk of association with the already
registered trademark
Infringement of other industrial property rights and of
copyrights
TRADEMARKS
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A trademark is considered to have been infringed, as a
whole or in part, by another trademark, when,
cumulatively:
• The registered trademark has priority
• Both trademarks are designed for identical or similar
products or services
• The trademarks are so similar in graphic, figurative,
phonetic or any other terms that the consumer can easily
be misled or confused, or that it comprises a risk of
association with the already registered trademark, so that
the consumer can only distinguish between them after
attentive scrutiny or comparison
• Marlboro vs. Marbelo
TRADEMARK INFRINGEMENT
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- Example of patent
- Industrial Property Bulletin
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UNFAIR COMPETITION
Is not an IP right, but a rule of market behaviour
All acts of competition that contradict the rules and
honest practices in any branch of economic activity, in
particular:
Acts that may create confusion as to the company, products or
services of competitors
False statements with the aim of discrediting competitors
False descriptions or indications as to the nature, quality or
utility of the products or services
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TRADE SECRETS
• Disclosure, acquisition or use of the business secrets of
a competitor without its consent
• Can include data, formulas, compilations, programs,
etc., which are maintained as a secret
– Example: Coca-Cola formula – if the formula had been
patented, it would no longer be a secret, as patent is
publicly disclosed (mutually exclusive)
– Anyone who independently and legitimately discovers
the secret of the Coca-Cola formula can use that
discovery, and the Coca-Cola would have no legal means
for stopping them
• Protected by confidentiality and non-disclosure
agreements
• Indefinite duration; last until become public
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MORE THAN ONE PROTECTION
• Patent: ring-pull
• Trademark: Coca-Cola
• Design: colour, artwork
• Copyright: typographical arrangement of text
• Trade secrets: ingredients
• Unfair competition: …
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MORE THAN ONE PROTECTION
Patent:
Trademark:
Design:
Litigation Apple vs. Samsung
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CUMULATIVE PROTECTION
Infringement of an IP right can amount to unfair
competition
Computer programs (software) protected by patent
and copyright
Designs or models as industrial property and
copyright
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AGREEMENTS RELATING TO IP
• Non disclosure/confidentiality agreements
– Used to protect proprietary information: know how; trade secrets;
any IP
• Ownership agreements
• Assignments
Transfer of ownership
Subject to registration in the case of industrial rights
Not subject to registration in the case of copyrights, but must be
in writing
• License agreements
Authorization to use the IP right without transfer of ownership
Subject to registration in the case of industrial rights
Not subject to registration in the case of copyrights but must be in
writing
FCT TECHNOLOGY TRANSFER OFFICE: FCT
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Questions???
THANK YOU FOR YOUR ATTENTION!
Ricardo do Nascimento Ferreira
93 726 21 39
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