Understanding the Intellectual

Property System

Contents
Introduction to Intellectual Property (IP)
Rights
Polytechnic Industry Collaboration
Interesting case law

Exclusive rights, apart from

Government licenses, include

Patents
Trademarks
Copyright
Industrial Design Rights
Geographical Indication Rights
Layout Design of Integrated Circuits
Trade Secrets

 Patent
Industrial Design
(Design Patent)
Trademark (VIAGRA)
(including colour)

PATENTS
Exclusive rights for an invention - provides a new way
of doing something, or offers a new technical
solution to a problem
Product
Improvement to existing products
Process, method of manufacture
Improvement, modification to a process or method

New non-obvious use of known product (mainly chemical

products)

Examples
Urea is produced through several reactions:
N2 + 3 H2 2 NH3
2 NH3 + CO2 NH2COONH4 (ammonium carbamate)
NH2COONH4 H2O + NH2CONH2
ONE-STEP (NCZ method) on urea synthesis:

N2 + (CO + 2H2) NH2CONH2

One-Step Urea Synthesis System And Method For OneStep Urea Synthesis (PI 2011001512)

Theoretical Calculations
CO2 + 3H2 + N2 NH2CONH2 + H2O (H = -225.4 kJ/mol)
CO + 2H2 + N2 NH2CONH2 (H = -222.61 kJ/mol )

Substance

CO
CO2

-110.5
-393.5

H2O
NH2CONH2

-285.83
-333.11

Examples
Reactive Low Molecular Weight Natural Rubber as A
Toughening Agent in Epoxy Resins (PI20055057).

A Method of Synthesizing Natural Fibre Reinforced

Polyester Composites from Recycled Polyethylene
Terephthalate (PET) and the Product Synthesized
Thereof (PI20070596)

TRADEMARKTM
What constitutes as a TM?
Anything that can be graphically represented: word, numbers,
signs, symbols, pictures, graphic designs, logos, caricatures etc

Word mark
Device mark
Composite mark

KODAK
(Cameras)

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INDUSTRIAL DESIGN
Mainly consumer products
Shape, ornamentation, patterns that appeal to the eye
Not dictated by function or engineering
requirements

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GEOGRAPHICAL
INDICATIONS
Darjeeling tea
Persian carpets
Scotch whiskey

Langkawi marble
Champagne
sparkling wine

Basmati rice

Kanjeepuram sarees
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COPYRIGHT

Original works; including the right to copy, distribute and adapt

the work
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Comes into existence

upon REGISTRATION

> Patents
> Industrial Designs
> Trademarks
> Geographical
Indications

NO REGISTRATION
required

> Copyright
> Layout Design of
Integrated Circuits

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REGISTRABLE
Intellectual Property Rights
are granted by the Government of each country
have a fixed period of duration
rights granted to foreigners must equal to rights granted to
local businessman
(no discrimination against foreigners)
require positive action by owners of IP rights
(no registration no rights)

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Examples
Paracetamol (US Patent) was synthesized in 1877
at John Hopkins University.
First marketed in US in 1953.

Immitate
Generic products:
Milidon
Panadol
Uphamol

Exclusive Rights Give the Owner

Rights to...

manufacture the product

use the technology
use the industrial design on product
use the trademark, geographical indication, copyright, layout
design of I.C. on products
grant IPR licenses to third parties
derive income
obtain cross-licenses
get stronger negotiation position against third parties

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Without Protection
Unless protected according to law, there are no rights to
stop others using the invention, innovation or industrial
design.
Others can use your technology without your consent.
Generally, other party will wait until you create the market,
then they will introduce their product.

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Without Protection
All risks and costs borne by you
years of research and development costs
initial market introduction costs
regulatory approval expenditure
will be taken advantage of by other parties

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Why are IP rights important in business?

Why should academics be interested in IP Rights?

IP rights are insurance against destruction by
competitors after your R&D product is successful in the
market!

R&D Results are published isnt Copyright good

enough a weapon?
R&D Results, if published, fall into the public domain
No property rights except Copyright

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Why are IP rights important in business?

Isnt recognition as author of peer-reviewed articles

in reputed journals good enough?
IP filed is also an insurance protection for investors.
No investor would want to buy or license the
technology.
No exclusive rights.

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University Industry
Collaboration

23

 Until the 1990s Universities saw teaching as a

primary role; academic research was secondary
and commercialization of useful results incidental
Since 1990s policies have changed but
attitudes are shifting slowly

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 Incorrect assumption
Once research results are published, any
interested party can take steps to
commercialize the teachings.

Truth is
there will be no investors until he/she is
guaranteed some sort of exclusivity and rights
to the technology

25

Now businesses or
even universities
are seeking IP rights
for their research
results
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No.

Applicants
Name

Total No. of
Applications
(2007)

Total No. of
Applications
(2008)

Total No. of
Applications
(2009)

1.
2.

UTM

58

132

251

UPM

25

53

71

UMP

46

4.

UM

17

18

42

5.

UKM

23

23

41

6.

UIA

12

31

7.
8.

USM

29

UiTM

16

11

27

9.

Uniten

10

10.

UTHM

# Source: Intellectual Property Corporation of Malaysia (MyIPO)

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Issues confronting University

Industry Collaboration
1. University research results are not immediately
ready for commercialization. Industry is not
prepared to invest further.
Instant Noodle approach

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(Contd)

2 (i) Industry not aware of Universities R&D Results

(ii) No active promotion of Universities R&D Results

(iii) Passive rather then proactive approach

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(Contd)

3(i) Universities do not seek out foreign

partners
(ii) Not all R&D Results are stand alone or one
product one patent
(iii) Need bundling of patents for a product

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University Industry Collaboration

Joint R&D agreements
Licensing of patents
Participating in government-sponsored joint
research programmes
Informal networks
Universities must give a complete product package
Role of Technology Transfer office / Research
Management Centre in commercialization
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ICC / TLOs
Should actively identify potential
licensees, collaborators, Joint Venture
Partners and market the technology
Use of patent database to identify
right person
Need for proactive university
scientists willing to cooperate with
industrial users for discovering
market applications of their scientific
findings
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 Universities need to work to Industrys work culture

and timelines
Contrasting cultures
Universities open culture. Urgency to publish
research results.
Industries work on secrecy only publish if
necessary
University deadlines are not critical
But industry deadlines to meet production /
marketing targets are critical

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 Industries still totally not aware of services of

Universities
Still considered by SMIs as mere teaching
institutions
Perception?
Lack of publicity of Universities research
achievement
Media relations need improvement?

34

 Increased costs of research in private sector

Industries are looking to Universities for joint
research
Can Universities rise up to the opportunity?

35

Case Study

36

University of Western Australia

vs. Dr. Gray
History:
Dr. Gray invented a anti-cancer drug

Left UWA and set up his own company

The drug became successful and UWA sued Dr.
Gray for damages
UWA lost in High Court
The decision was appealed to Full Federal Court
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University of Western Australia

vs. Dr. Gray
Held:
Dr Gray did not have a duty to invent
There was no effective express term in Dr Grays contract about IP
ownership the reference to the Universitys Patent Regulations
was not effective
There was no implied term in Dr Grays employment contract that
UWA owned the IP
Dr Gray did not owe UWA a fiduciary duty

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University of Western Australia

vs. Dr. Gray
It means:
Universities may need to review their employment contracts on
ownership clauses, and whether their IP regulations are valid and in
practice, and
Companies dealing with universities or academics should consider
ways to ensure ownership issues are clear and not contested.

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No questions?

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