In this webinar the panel discussed best practices for managing and evaluating research outcomes and IP, considerations for patent filing strategies and ways to optimise patent portfolio management.
We were pleased to receive some great questions from the audience during the webinar, including:
- If you are looking to keep costs down and move a PCT patent application along at a reasonable pace, do you recommend a particular office for the International Search Report (ISR)?
- How are the ISR's coming from Singapore competing with more traditional/established jurisdictions?
- How do you handle the situation where a researcher is pressing to file fast "because the field is very hot" but you haven't had a chance to do a satisfactory review ahead of a filing decision?
- Increasingly there are several if not dozens of named inventors on an academic disclosure. What is the best way to cull non-inventive named inventors?
- Can an AI be an author or inventor? If so is there a jurisdiction that is more open to it?
Transcript
Tamara El-Shibib: OK I think we can start. Good afternoon everyone. Thank you for joining us. Good morning if you are joining from the west and good evening if you are joining from the east. My name is Tamara El-Shibib. I am the Senior Patent Technology Transfer Consultant at Gowling WLG based in Dubai. Thank you for joining our third session of our webinar series on tech transfer and innovation. Before we start with panel introductions I wanted to introduce the webinar series for those who are new to it. The purpose of this webinar series is really to discuss different topics within the umbrella of tech transfer and innovation and to share knowledge and experience and identify challenges and solutions within this area. The focus is normally on the GCC region but we do look at experiences from other jurisdictions and lessons learned. For today's discussion we are focussing on IP management strategies for universities and R&D organisations. Both organisations are crucial in creating new knowledge and in supporting the utilisation of that new knowledge through research, through publication and then through tech transfer as well; and having the right IP management strategy is crucial to a technology's chances of reaching the market. So in today's webinar our panel of experts here will be sharing their experiences and their perspectives on strategies for protecting and managing your IP and the ways that you can show the value of your IP management activities. There will be an opportunity for questions at the end of the session so please leave your questions in the Q&A chat. You will also be prompted to complete a short survey at the end of the session. We would appreciate any feedback you can give us. If there is any specific topics you would like us to cover in future sessions please let us know. With that I would like to turn to our panellists and ask them for some quick introductions and the first one on my list is Winsome. Winsome, can you tell us a little bit about yourself.
Winsome Dunn: So my name is Winsome Dunn and I am the Manager of Intellectual Property and Agreements here at Khalifa University. I have spent several years in doing patent prosecution in both big pharma, biotech as well as academia. By way of biotech big pharma I was with Chiron Corporation which is now Novartis and they have the HCV portfolio. I then moved on to Roche and handled part of the PCR portfolio and then onto Emory University in Atlanta where I worked with setting up the first patent group within the technology transfer office. I then went over to Saudi Arabia did likewise and now I am here at Khalifa University doing the same thing. I am here to answer questions and quite open to discuss the way that we manage our portfolio here; how we maximise research in terms of market and our strategies in terms of managing our IP filings and budget constraints. The entire cake.
Tamara: Thank you Winsome. Trevor, can you give us a little bit about yourself.
Trevor Newton: Sure, thanks Tamara. My names is Trevor Newton and I am a partner in the Intellectual Property group here in the Ottawa office of Gowling WLG. I am a registered patent agent and I work primarily with companies in the pharmaceutical space, biotech space and with universities in those technological areas. Prior to becoming a patent agent I did not necessarily move around quite so much as Winsome did but I moved down to Boston and I was working in the research labs, actually the infection discovery group Astra Zeneca in Boston and I have worked in the infection research group at the National Research Council here in Ottawa, Canada. So working along both sides of the IP spectrum, so to speak, to develop and also now seek to protect and work on behalf of clients really to secure the best protection for the IP that comes out of the lab.
Tamara: Yep.
Trevor: That is essentially it.
Tamara: OK and then Vivian.
Dr Vivian Wei Cheng: Thanks Tamara. Hi everybody. My name is Vivian Wei Cheng. I am a patent attorney of JurisAsia LLC which is the Singapore office of Gowling WLG. I am a registered Singapore patent agent and my main role is drafting and prosecuting patents mainly in the biotech and biomedical fields. I also provide strategy advice in a lot of technological areas including AI. I also provide due diligence in terms of a prior art search, freedom to operate and provide support for litigation. Prior to being a patent attorney I have academia background. I spent four years working in the Agency of Science Technology and Research, ASTAR for short, of Singapore in a research lab. So doing interdisciplinary research covering biotech and nano materials before I transferred to the tech transfer office of ASTAR handling thousands of ASTAR's patent portfolios. Then after that I went to the law firm and trained to become a patent agent.
Tamara: Thank you Vivian. So we want to hear more about that experience. So before I jump in I am going to just quickly put up the topics that we plan on covering today. So the webinar is organised as more of an informal discussion, so depending on where the conversation leads us hopefully we will be able to cover all of these points at least to some extent. Jumping straight in I wanted to start talking about the IP management practises at the universities that you have had experiences with for the R&D organisations and when I talk about IP management I am talking about grades one to five which is basically the functions within a technology transfer office or an IP management office that deal with identifying, capturing, evaluating and protecting IP that is generated from R&D activities. Not so much the commercialisation aspect which is like your marketing and licensing and how to take ideas to market. So if we just go around the panel, I am going to start with you Winsome. Can you tell us a little bit about how KU being a federal university manages IP generated from its research programmes?
Winsome: So here at Khalifa University we both have internal and external granting or sponsored research. There is more internal than external. We are fortunate here in the UAE that mostly money is not an issue, so unlike universities in the US where there either always looking for money in every place on earth, here in Khalifa University we have the internal funding which is a lot of money and there is also external partnerships. The first thing that we have in place is an invention disclosure that we try to use that as the tool where we advise the faculty that unless they fill this in to the max because it has areas that it really provides us with a good feel of what this invention is about. So there are certain aspects of it that we do the background of it and the summary of it. One aspect that we always try to get from them in regards to the knowledge is explained to us what the market applications are because the goal of you, even filing your patent application, there is always that commercial component. So you always try to get from them to explain to you the market applications and anything that could be in terms of commercial products that is close to what they are doing, companies that would be interested, etc.
Tamara: Sorry to jump in I just have questions coming at me. Does the university have an IP policy that covers all ...?
Winsome: Absolutely and people get here from the orientation is when we try to get in to start the process of educating them in regards to what the policy is and how you should report your invention disclosure. We are fortunate here in the TMI department where I also handle agreements. So that also helps the inventors or the PIs with their industry outreach. So once they get in, in terms of the orientation, and we expose them to what our process is, the invention disclosure, we also discuss the IP policy with them because that provides guidance. The first thing that usually comes to their mind is their invention anyway is always the best, the greatest and blah, blah, blah right down and well how much money will I get? So the policy also governs how distribution of revenues, through licensing will be managed. So it is really comprehensive and it helps us to help them to understand what the process is what the expectations are. We also try to introduce them to the different portfolio managers whether it is physical science, whether it is electrical engineering or AI software, so they will know that we have various technology managers handling portfolios in various ranges.
Tamara: I think the IP policy is so important for any organisation that is running a R&D programme because I think it can also help to attract researchers as well. So I feel a lot of them ask those questions like, what is the royalty distribution. What is in it for me? And I think one of the ways that I have seen some institutions in the region tackle this, or they stand out in this aspect, is by playing around with the royalty distribution. So, for example, if they are looking more at retaining the best researchers most universities have an average of 33% royalty towards the inventors, some institutions will go up as high as 50%, just to keep and retain the best talent. So it is an important document to have as a guide for researchers so when it comes to what are the incentives for participating in IP management and commercialisation but also as a guide internally in terms of when you have something who do you talk to? How do you disclose it? Are there any things you need to keep in mind in terms of can I go and discuss what I have created with anyone or is there a particular process for public disclosures? So very, very important that an IP policy is in place early on. I would even say that if you are just new to setting up an IP management function that is probably one of the earliest things you need to be working on, an IP policy that can basically set out the organisation's position when it comes to managing IP. Vivian, you mentioned that you also spent some time in a tech transfer office, I think you said it was ASTAR. Can you tell us a little bit about your experience?
Vivian: ASTAR is actually a very important organisation and plays a key role in the Singapore innovation system. So it not only has cutting edge facilities to facilitate all kinds of research but it also puts in a lot of effort in nurturing the local talents. So back in the 1990s the predecessor of ASTAR was founded because the Singapore government identified the potential of biomedicine. So, the then chairman, went around the world looking for top bio medical talents and persuaded them to come to Singapore. So these top talents, the chairman called them whales, would bring the expertise particular skill and teach our local talents which are called guppies; and the guppies are trained under the whales with the aim to becoming whales themselves one day. So because of this initiative Singapore's bio medical sector has been thriving with many of our home grown scientists doing cutting edge research and many have even developed and commercialised their own work. We have also attracted major projects including, for example, Sanofi and biotech for vaccine manufacturing facilities and without doubt this has made significant contributions to Singapore during the COVID-19 pandemic and similar stories happened at other tech fields. So because of all these efforts ASTAR is one of the largest patent filers in Singapore. The IND talent really generates lots and lots of high quality IP and these are all supported by a very good IP management and a commercialisation infrastructure in the tech transfer office. So back then when I was working there we had a highly qualified and a well-trained team and many of us had advanced technical degrees and certificates in IP law. So usually the working schedule would be meeting inventors to discuss and understand their IP generated to handle due diligence, mainly prior art search, and making decisions of the IP portfolio management in terms of whether to proceed with patent filing or keeping them as know how or combinations of various forms of protection. So if a decision is made to proceed with patent filing we have to evaluate in terms of how to file, to file as a provisional as is or as a set of claims or with a full specification and where to file and when to file in terms of if there is a prior disclosure or an intention to disclose an invention. We also constantly collaborate with the commercialisation division to commercialise ASTAR's IP portfolio. So I would say there is a lot of communication with various parties and after the entire tech evaluation process we would have to discuss with the patent agents to come up with the best claiming strategy and then we will have to manage the whole life cycle of the patents all the way until grant. It is very important to supervise patent families which may cover multiple jurisdictions and sometimes we have to make decisions in terms of accelerating some important patents, delaying some or even pruning some. So it is very important to constantly talk to the commercialisation department to understand the marketing opportunities for the particular technology because that can have an impact on the patenting strategy.
Tamara: Definitely and I think it is interesting to see as well how ASTAR, as a research agency, also has a very comprehensive tech transfer function. So not only does it fund research, it conducts research as well but it is also managing the outputs of its research. So I think that is really important to see as well that it is not just something for universities. Research agencies need to be good at it as well. Trevor, I am going to move on to you – just based on your experiences with Canadian universities is it a similar function as well in terms of how they manage the outputs of their research?
Trevor: I would say, yes, it is quite similar in that there is definitely a very strong requirement for an IP policy. I do find often that the IP policies are quite different between universities and it is interesting to me because it gives the universities some different levels of flexibility as to how to work with licensees perhaps. The way that I work, not being inside the universities or inside the tech transfer office but the intersection between the universities and companies that might actually be carrying out the commercialisation such as spinout companies and that sort of thing, is that the early stage development of the IP from the lab to the tech transfer office is critical in order to help the early stage companies raise capital. So having an IP policy in place really is helpful to the spinout companies or the SMEs that might be developing the IP that comes from the labs. Because the core value of the company often is actually in those first patent applications that are filed and it is even more so in the bio tech and pharmaceutical space where is may be not quite so many patent applications that are filed. So having an IP policy that includes an audit perspective too is key not just to ascertain what you have within the growing portfolio from a lab but also to manage the budget that is going to be required in order to maintain that IP; because it does get costly especially when you get into national phase campaigns like filing applications all around the world and all the translations that come along with it. So having that IP policy and including an IP audit component to it is quite key, especially to help the researchers in the lab and also the companies that develop the IP from the lab to succeed.
Tamara: And actually just picking up on that last point of yours, having an IP mind frame when you are looking at these R&D projects I thought it might be helpful to set out the kinds of R&D building blocks that are used in the research process. So when you are looking at capturing IP you are not just looking at inventions and technical solutions, you are looking at anything that can be bundled together with that that can help increase the value of the IP that you are licensing out to a spinout or a company; and it is really important how you capture these assets. So there are standard ways that tech transfer offices do that and that is using, as Winsome mentioned, an invention disclosure form. So that is a tool where you can basically capture what are the new and inventive features that have been generated in the research and I would say especially nowadays it has become so much more important to have either questions related to software in the disclosure form or maybe even just a standalone software disclosure form; because a lot of the inventions we are seeing today have software components and it is really important if that software has been developed using open source that we are able to look at whether there are any restrictions or limitations on owning the software that has been generated or commercialising it. So you need to have those questions in the form, ask the researchers have they used open source? What are the licences? Then as part of the due diligence looked at those open source software licences and see if there is anything you need to be aware of before you invest more in trying to protect and move forwards with it. There are other ways as well that you can capture those assets and so there are knowledge management systems that can help you track your patents, of course, but some of these are also designed in a way to help you capture other assets. So they are more like project management systems and you can put in details about your research project and then add in all the assets related to that project. Those can be a bit helpful when you are looking not only at patents but other types of assets listed in the slide before. You need to capture as much of that into that docketing system and then later down the line, when you are looking at commercialising and you are maybe demoing something, that is when some of that data might become really helpful. Then also trade secrets. Sometimes you might not necessarily file a patent for something, you might be looking at protecting and keeping it confidential but you do have to take steps towards maintaining something as confidential in order for it to be protected as a trade secret. So there are management systems you can use that can help with managing your trade secrets as well; and then agreements are another type of tool as well that you can use. So turning back to you, Winsome, what would you say are the main criteria you look at? So this slide is basically almost like a brain dump based on what I remember doing when I was at a tech transfer office. So we would look at ownership, the technology in question, how unique is it? What are the strengths of the technology? Then we would look at the market for it – so what is the commercial opportunity and then we would also do an IP analysis. So based on how things run at KU would you say this is the same?
Winsome: All of it. In particular, the patentability test. That is foremost in the back of our minds. We do like an internal review first and it seems to, as they say, pass the smell test per se we sometimes engage a third party out there to do a more comprehensive analysis. Once we get that back we just do not necessarily take their word for it, we have a numbering system and if it gets to a certain number – that is you are checking the patentability, the landscape, the commercial applicability, etc – if it gets to a certain number based on our analysis that is when we start doing a more deep dive into, OK, the interview with the inventor scene, who are the inventors of their collaborators, and one of the things that we try to do as soon as we are evaluating and we know that there is a third party and if there are agreements that speak to ownership. The first thing that we try to do is to reach out to the co-owner and then try to work out an IP management agreement, we try to get that on the ground before we start. So most of the time most do not have the funds to pay for whatever we need whether it is a patent cost, commercialisation cost, whatever; and you try to hit the ground with them to say OK so we will pay X, Y, Z however that means it will reduce the amount of revenue you get. So you work certain things out in the agreement but all of this together and sometimes we also use other softwares like Locks or Frost & Sullivan and a few more to assist us with the ...
Tamara: Market analysis.
Winsome: Absolutely, yes.
Tamara: I think that is key as well. I think it can add a lot of pressure to a small tech transfer office to try to be experts in all areas. I think it is important to reach out to experts in the different tech or market areas you are looking at for specialised reports and, I guess, Frost & Sullivan – we did a little ad for them right there – but I think a few of us have used them before for doing this kind of analysis.
Winsome: The other thing that you have too once you are doing this evaluation, you may come across something that is not patentable for whatever reason, especially with the software and AI, that is new to us and to most researchers in that no, you cannot go and use somebody's algorithm and say you make it better and then it is better. You say no, you cannot do that. There are encumbrances here so sometimes you look at what they have done and you have to take two roads – either you are going to keep it as a trade secret, because it is a value and it has its uses; or you may just have to copyright it. So you then have to choose whether you are going to do a patent, if you are going to do a trade secret or you are copyrighting.
Tamara: Vivian, how did you evaluate invention disclosure? Was it any differently to what we are talking about?
Vivian: It is quite similar to what Winsome does at Khalifa University. So ASTAR has been using a very well designed invention disclosure template form for inventors to disclose their inventions. They have to submit that form to the tech transfer office for evaluation. So the information we require is really very detailed. The tech details of the invention would typically be at a scientific publication level and inventors information will include residential information/citizenship because in some instances, for example if an inventor is an India resident, we have to obtain an Indian Foreign Filing Licence before we file the application - for example, in Singapore first – and we will require the investors to describe the known products - any problems solved by the invention and the advantages of the invention; any of the potential licences that they know; any known competitors; any intended public views or public disclosure in terms of conferences or scientific publications or even the business impact of the invention such as whether it is easy or is it difficult to design around the invention. So in my opinion good invention disclosure will not only describe the invention but will sell the invention by describing its advantages in preferably quantitative terms compared to its prior art. It has to emphasise the features that provides advantages because this will make the tech transfer manager's job much easier in terms of doing the later prior art search process, evaluate the invention in view of the prior art and determine the inventive concept. So once we receive the invention disclosure form we will typically have an inventor interview to obtain more information to supplement the invention disclosure, for example, to obtain additional details on the deadlines of filing, in terms of our broadest concept of the invention. It will also be very important to understand the next stages of their research, for example, are they going to invest more effort and money in this project down the road, even in the next 12 months, because if there is more data generated we will make sure that can be incorporated at the conventional stage and in the provisional application that we file. We have to put in some statements there to provide support. So after that it would be the time of reviewing the invention disclosure and to do a prior art search to determine if the invention is clear for seeking a patent protection. So we use databases like the major patent databases and including all the land patent data research. So I would say it is quite critical to determine the correct search keywords. Then determining your searching keywords requires some kind of knowledge equivalent to a patent agent's drafting skills because you do not determine the keywords based on the invention itself which can be an embodiment of the inventive concept. So after the prior art search we would do a patent ability assessment where the inventive step issues will be examined to determine the strength or weakness like is it unsurmountable concept issues or is there a possible ability to overcome it is cleared for proceeding into a patent file application. So if there are some inventive step issues that are identified then it is critical to go back to the inventors to get a secondary consideration; if they can provide any arguments to say that probably the identified prior art putting together will not destroy the inventive idea or to suggest any element of the inventive idea. So, again, I think communication is key here.
Tamara: And I agree in the sense that you need to have an idea of these things before you invest in patenting as well. So if there are issues with inventorship or ownership or even if you are able to get the marketability assessments done earlier on, you almost want to know before you invest in patenting. Trevor, I am going to jump to you.
Winsome: Before you move on just one quick thing. One of the things we have been doing here, in collaboration with the library, is doing a market patent and patent ability seminar with students of anybody who would be interested, and something that we are now teaching them is how to do the search and it is using the classification system. So we have them checking different databases, it is our way of teaching them, in order for them that when they provide us with an invention disclosure we do not spend a whole lot of time actually doing the prior art search that they should have really done that would have probably saved them the headache that when we first get it and start doing the searches like – did you really submit this without doing a search? So they are getting a little bit more sophisticated here.
Tamara: That is really smart. That is definitely one of the techniques I have seen at some of the more advanced tech transfer offices is they teach the researchers how to do the searches themselves. Then that helps them improve the quality of their research and the likelihood of their research moving forward. Trevor, I was going to ask you about IP analytics. What can we learn from IP analytics early on? Can they help us save cost down the road if we get them done earlier?
Trevor: So analytics in terms of searching, say, background art that might be out in the space?
Tamara: Background art but then also like IP landscaping analysis.
Trevor: Absolutely and especially when you get to the start-up phase, we are both looking at patentability, so I am looking through the prior art and looking through what is out there in terms of what you can get as a patent, but also what your competitive landscape is going to look like; and that obviously ties into your market analysis side of things. Winsome, it is great that you are doing a little bit of training on the searching side of things because having that ability to go through and find, if not necessarily all the prior art but the relevant prior art that is in your space helps you both understand not only what you can get out of your research programme patent wise but also what your potential partners are going to be if you are able to negotiate a partnership with some of the other players in the industry, by looking at the landscape analysis to look where the mine field is or what your potential challenges are going to be both from who you might be working with as a partner, or as a competitor who has the deepest pockets to be actually enforce some of their patents and how do you work your research programme around all of that in order to get the best value out of the research efforts that you have. Because it really comes down to looking at what value comes out of the research lab and how you can commercialise that. The fewer obstacles that you have between the lab and the commercialisation things the better chance you have to be able to raise capital, the better chance you have to be able to succeed in actually developing your product at the end of it all. So the searching and the IP landscape or analytics side of things is something that is ongoing. It does not stop because the research typically does not stop as long as you are working towards a product and there is possibly going to be new IP and new players evolving in the system. So we do the two hand in hand with the companies that we work with and certainly the tech transfer offices have an important part in that as well because we are really at the early stage of a commercialisation core programme.
Tamara: Absolutely and I feel even having these analysis' one can feeds back into the R&D strategy as well. When you are doing your landscape analysis you can have an idea of where are the areas for potential new IP development or where the areas are too crowded and risky to go into. So if you are looking at especially applied research, I feel that is definitely something that should be done early on probably. Jumping on to the next topic because I am conscious of the time and I feel there is so much more we can talk about on the evaluation stuff alone. But we will come back to that. In terms of IP protection strategies, I am going to turn to each of you based on your areas of expertise. I was going to start with Vivian. So how would you work together with a researcher or research team to advise on an IP protection strategy for something within the domain that you would normally work in, so biotech or life sciences or medical inventions. What would be the first thing?
Vivian: So one of the very important issues about life biotech or life science inventions is the patent of all subject matter. So many inventions in this field may be based on the discovery, such as some genetic material or micro-organism that could pre-exist in nature, but in terms of patenting this kind of invention there must be something more to constitute an invention. So, for example, to find a genetic material or micro-organism pre-exists in nature would be just a discovery but if the contribution made goes beyond isolating or purifying a material or micro-organism that pre-existed, for example to include modification of it so that it can be adapted for a specific use, then both the modified material and the specific use could be considered inventions; and the same principle also applies for a naturally occurring process. So an example would be the method of digesting a milk casein using proteases found in the gut would be considered as being directed to a natural process. But if there is a process of producing probably fermented beverages using the natural proteases to digest a milk casein then this could be a specific use of the natural process and therefore could be possible patent subject matter. Another issue in this field would be a method of medical treatment. So this is a specific exclusion under the industrial applicability, at least in Singapore, and the same provision exists in many other jurisdictions. So the rationale of excluding the method of medical treatment or surgery performed on human or animal bodies is to ensure that our medical practitioners are not unnecessarily hindered from exercising their professional skills by the patent rights. So to give you some specific examples in this field many of the inventions concern cosmetic treatments. So if there is a pure cosmetic treatment, for example, for reducing the normal hair loss by administering a certain compound it would be considered a patentable non-therapeutic method. But if it has a therapeutic effect it will be considered as a matter of therapy, for example, a treatment of acne. So it is quite important to amend the claim so it will specify the non-therapeutic aspect of the method only.
Tamara: I think that is why it is important to work specifically with somebody who specialises in that area because they will know how to draft the claims around some of these exclusions. Trevor, I was going to jump to you because I know your background is dealing with chemical inventions. You have done organic chemistry, pharmaceuticals, clean tech. Is there anything we need to be aware of within those spaces when it comes to drafting or patenting?
Trevor: A lot of the same strategies that Vivian referred to are exactly the same in the space that I would work in. Pharmaceuticals often talk about new chemical entities or antibodies and there are different laws all around the world around the types of eligibly subject matter. Also there are different thresholds in terms of what type of support that you need and what I find often is that if we have a nice new invention we really like to try and get the broadest support possible for it and it can be difficult to do that when you have a research programme that does not have necessarily the same deep pockets that a pharmaceutical company would have where you can actually put all the resources that you want at getting all the various permutations of an invention evaluated and test the limits to see where things will work and things will not work. So trying to get the breadth that you need, especially when you are working with the budget of an academic lab, can be difficult. At least with universities and small biotechs that I work with we try and make sure they are educated enough that we try and keep publications under wraps as best as possible, which we know exportations we are working with there, the labs need to be able to publish. As long as we get protection before those publications come out and make sure that the researchers know what types of additional research work needs to be done before, let us say, a PCG application is filed because we want to round out those specifications as best as possible to get the broadest possible protection for what will inevitably be a very good invention once you get to that stage. So ultimately it is a combination of education of inventors and timing and I definitely found over a period of COVID that timing became a real issue because a lot of the researchers could not get into their labs over the course of COVID and that sort of thing, and it was a little bit heart-breaking really to see it because I have had a couple of clients come to me and say, hey is there any way to extend this priority deadline, I was not able to get into the lab to complete the work that I needed to finish over the course of the priority year and of course there was no such thing as an extension to that priority period. So forward thinking and planning around what your research can actually obtain over the course of a year really should be also part of your at least life science bio tech chemical evaluation when you are doing the initial evaluation of a programme. What types of resources do you have to build around that invention nicely?
Tamara: I think another area where timing is really important is basically in the software and AI space, because you have developments happening so quickly and I am just going to jump to that. So if you are seeing a lot of inventions in that space coming through some things to keep in mind when it comes to software and AI, and that is what we are personally dealing with here a lot in the UAE, there is so much going on in this space. We can patent software related inventions and AI related inventions but there are things to keep mind when you are patenting in those areas; there are issues related to subject matter eligibility for AI; there are also issues related to ownership in some jurisdictions as well, especially if it is an invention that is generated by an AI model who owns it, who is the inventor. Generally here in the region they tend to look at what guidelines have been published by the EPO or the case law that is developing in other jurisdictions and, also something to keep in mind is, generally if you have a set of allowable claims in one of these jurisdictions it tends to go through the patent office more easily. When it comes to drafting in these areas usually you need to show a technical purpose so it does help to draft starting off looking at what is the technical problem and then what are the technical solutions being sold basically. That is why you need to work again with specialised attorneys in that space. They will have an idea of all the publications in that area. They will know how to get around some of these exclusions and then also patents can only cover certain aspects. Where you cannot get patent protection maybe look at other types of IP where you can fill in the gaps. Maybe for particular inventions you might want to do the analysis first before you rush to file a patent. Think about do you want this published? Can you detect infringement? How easy is to invent around? So these are some of the issues you need to think about, and I do not think that is specific to AI and software as well. If you are filing a patent you need to be able to monitor and enforce it so if you cannot see somebody else is using the technology then it is going to be very difficult to enforce or monitor infringement. So we are going to jump straight into patent filing and prosecution strategies and then briefly talk about developments in the area. So when it comes to patent filing considerations these are the areas we would look at when I was in the tech transfer office at least. Before we rushed to file a patent we need to think about what is the budget we have? What are we working with as a tech transfer office? Have they disclosed anything? A lot of times that I think, Winsome you have had personal experience with this as well, you will file a patent and then you will find out that it was already published before filing and the inventors forgot to mention. So these are things you need to know upfront because not all countries will have disclosure grace periods and so that immediately removes a lot of jurisdictions and there are ways as well in which you can speed up or delay the patenting process and different reasons for why you may want to do that. So if you want something to go to grant quicker because it is perhaps an area that is developing really quickly - you want to be able to enforce your patent - you can speed up examinations in the patent offices. A lot of the patent offices have agreements with each other where if you have a set of allowed claims in one that can help to speed up the examination in another patent office. If you want to delay decisions because, for example, you have not done your market analysis you can file a provisional – file a PCT – and that will give you 30 months to decide which countries do you want to go into. So there are different strategies you can deploy depending on the invention that you are dealing with, depending on how far along you are in your analysis and how quickly you want to go to market. Also where you file. So that really depends on where your markets are. So you would need your analysis to help support that. So where are your markets? Where are your areas/potential countries where you might manufacture? Where are your competitors? Those are the countries that you would normally seek protection in. I was going to talk a little about updates in the regions but I think I am going to skip that. I think the main thing to know with the region is that the GCC Patent Office does not accept GCC applications anymore. I think I am going to go straight into talking about what are the things that you can take advantage of in other jurisdictions as well. So perhaps maybe, Vivian, what are the ways that an applicant can help to either speed or delay patenting if they are filing, for example, in Singapore.
Vivian: Singapore has the advantage of a so-called fast track programme. I think it so far the world's fastest file to grant system that you can get a patent granted as fast as six months from the date of filing. Of course there is a limited quota for each applicant per year to file patents and request acceleration under IP fast track. The good thing is that it can be applicable for all the tax fields, you just have to state the tax fields and the reason for accelerations when you apply for this fast track. Also, if the quota is met then you have the 12 months vouch grant system. Then you also establish patent corporation with Cambodia and Laos to re-register a granted patent in Singapore there. Then around the region we have the aspect programme with other Asian countries. You basically use an earlier search and examination report issued by one of the offices, such as the Singapore Patent Office, to accelerate the prosecution of a corresponding application of another participating member country, such as Malaysia. So in this way it avoids the duplicative search and examination and also reduces the workload of the patent office. The good thing is it does not incur any additional official fees and all the forms and applications are filed in English, so it saves lots of time and money in preparing the various translations for different Asian countries here. Then another important thing about the Singapore Patent Office is both a member of GPPH, Global Patent Prosecution Highway, as well as a member of the ASPEC programme. So it is the only member in the Asian countries which boasts GPPH and ASPEC member. So for any applicants who have a business interest in an Asian region we would highly encourage them to leverage on this initiatives, for example, to get a patent in Singapore granted as fast as possible through the GPPH programme or other national acceleration programmes then use this Singapore patent to gain a gateway to accelerated examinations in the Asian region through the ASPEC programme.
Tamara: I think that is really helpful as well because I think generally if you are patenting in Singapore you would probably be considering countries around as well in the region. If there are ways they can harmonise or simplify that process that is helpful for applicants.
Vivian: I would also like to mention that at Singapore if you file a PCT application with the Singapore Patent Office it can be filed in Chinese as well. So I think this is something unique to Singapore and we can also obtain a file an international search report in Chinese or English and it does not incur additional official fees. So actually it saves the translation cost for entering China at a later stage.
Tamara: And I think China is a huge market for most applicants as well nowadays so that is definitely happening. Trevor, is there anything that you want to share in terms of developments in your area?
Trevor: Well, I think there are constantly developments and I could probably send a whole other hour on developments. One thing for Canada is that we just had a whole update to our patent rules and, for those of you who have actually filed in Canada before, you might have remembered some flexibility that we used to have around the number of office actions that we would issue and the number of claims that you could file and you could easily file 150 claims or however that might be. But now, all of a sudden, Canada's rules have changed to be a little bit more similar to the US where there will be excess claims fees for claims over 20. There is a limitation now on the number of office actions before you either have to file an RCE, a Request for Continuing Examination, or re-application is essentially rejected. So you have three office actions before your first RCE and then once you file an RCE you get two office actions. So that brings it similar to the US to a certain extent. It is maybe not quite as strict as the US is in terms of numbers of office actions before you get a final action or need to file an RCE, but other things in Canada around using the PPH - applicants do use the PPH a lot and usually they will harmonise that together with either the US or the European filing strategy. There are some nuances to that but it does tend to be a very effective approach to acceleration if that is something that you wanted to use; and there are a couple of other acceleration routes that we have including one for green technologies. So if anyone is working out there that has green tech you do not even need to pay a government fee and get automatic fast track examination for your green tech technologies, along as you file a request before you get your first office action.
Tamara: That is a great idea. I love to see when a government gets involved to try and support innovation in particular areas. So we are actually running out of time. This is such a big topic that I think we may be need another hour. But what I will do is obviously we will share the slides with everyone but just to skim through quickly what is left and then we will address the questions because we have got about nine of them. So, we were going to talk about managing IP and agreements but that is also a whole other topic I think that needs its own webinar. I think, Winsome, you are going to be back for that one, but I think we can stop at the KPIs here. So I was going to talk about if you are running a tech transfer office or an IP management function we do need to think about how to show the value of your activities, because a lot of times with tech transfer offices they can struggle to justify their budgets or show their value of what their activities are because it is such a long term process until you start seeing the impact; and the return is not necessarily monetary. You are creating an eco-system and so you are in it for the long haul. But there are ways that you can track figures and numbers for you to see where your strengths are/where your weaknesses are and then are you on the right track as well. So these are some of the KPIs I was able to pull from, like the associations for universities and tech transfer. Typical KPIs here are that some entities track and there are a lot more than this that you can probably find, but these are the basic ones that most universities use to track. Winsome, before we turn to the questions I was going to ask you does KU have a system for tracking any KPIs? If you do, how does that help you?
Winsome: Well it is baked into your evaluation. We do a monthly report and it takes into consideration all this too and one of the things, where you have start-ups, that is one of the KPIs too - how many licence agreements you have done – it is all there. So that is how it is tracked and we keep track of where we are in terms of how much they think we should have and where we are. Sometimes you meet it and sometimes you exceed it; and the other part is sometimes you do not.
Tamara: Would you say, so I am just going to pick up the questions and just jump straight in. What are some of the ways that you can help to optimise your patent portfolio? I am going to go back to you, Winsome, on this.
Winsome: So you tie in agreements too and that does help through licensing the options, the start-ups...
Tamara: Do you do any filtering of your portfolios?
Winsome: Well you do and you do a pruning too because you look at projects based on the portfolio and one of the things we look at it is whether or not the inventors are still here. If they are here it is high priority looking at it, seeing where we are, has there been any progress, what is going on or what can we do with this? Sometimes you can bundle it with something else or if it is not going anywhere then you let it go.
Tamara: So we have a few questions from the same attendee which I think we will take offline just because we are a couple of minutes in and I just wanted to thank you all for participating in this webinar. I think there is so much content here that we might have to do a part two at some point and, to the audience, if there are any questions please email me and I will make sure everybody gets to them. I just want to thank you for participating and for attending and I hope you all have a lovely day or evening wherever you are and we will speak soon. Thank you.
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