MUST READ: The Inventor’s Dilemma

HAPPY World Intellectual Property Day! A tricky issue that has long plagued inventors and researches who invent potentially commercially useful products or processes is the dilemma whether to:

  1. Seek patent rights for the invention
  2. Keep the details of the invention confidential
  3. Publish the details of the invention and depend on copyright protection afforded by the Copyright Act. The publication could be in a peer reviewed journal or as a paper presented at a conference proceeding

The question is, which is the path to take?

Let’s look at the various options available and the implications of each path to the inventor/ researcher.

Where the research is undertaken in an academic institution or in a research institution, there is culture of publishing the details of the invention in a peer reviewed journal or as a paper presented at a reputable conference. In fact, in many institutions it is a policy or internal regulation, requiring all research output in the institution to be published as early as possible. Academics are still governed by the “publish or perish” rule.

The publication, whether in a journal or in conference proceedings would nevertheless enjoy copyright protection, unless expressly disclaimed. But is copyright protection of the publication sufficient to protect the inventor’s interests or is it sufficient to prevent any other person from taking advantage of the invention disclosed in the publication by using the invention for commercial gain?

Copyright merely allows the owner (who could be the inventor, or the institution where the inventor is employed to do research) to prevent any others from substantial reproduction of the published works, but does not grant any right to prevent others from making use of the teachings or the details disclosed in the publication. For example, assume A publishes an article or a book entitled “The Art of Making Furniture” where modern methods of making furniture are disclosed in detail. The publication (the book or the article) would enjoy publication protection.

What right does A have? Is copyright protection sufficient to protect A’s interest? If, say a furniture manufacturer, B, obtains a copy of the publication and follows the teachings in the publication to improve his manufacturing method or produce new types of furniture disclosed in the publication, there is nothing A can do to prevent B from using the techniques, or even to demand monetary compensation or royalty from B.

A’s publication disclosing the details of his knowledge in making furniture will be deemed to be a donation to the public, allowing others to freely benefit from the creative or intellectual output. If A (or his employer) wants to benefit financially from the creative efforts, then A (or his employer) has to claim proprietary rights to the invention by way of patent rights (on the assumption that the creative output is patentable).

 

Can copyright and patent rights be claimed for the invention? Or is a claim to copyright and a claim to patent mutually exclusive? Has it to be one or the other? The patent laws of all countries require that the features claimed in the patent should be novel a at the date of first filing of the patent application. If the inventors has disclosed details of the invention to the public in any manner (eg, by publishing details of the invention in a journal, on a website or even orally at a conference proceeding/ seminar) prior to the filing of the patent application, the requirement of novelty is not met and a patent will not be granted, and if granted, it can be invalidated for lacking novelty. Even the inventor’s own publication (where the inventor is named as the author of the paper) is sufficient to destroy the novelty and is not excuse.

It is advisable not to rely on the grace period as an excuse to publish the invention before filing the patent application. However, it is possible to file the patent application and thereafter, on the very next day, publish the details of the invention, although for strategic reasons it is not advisable to do so, especially if further research is still being carried out on the subject matter of the invention. The author has personal experience where a granted patent for a commercially important invention is being challenged by a competitor for lack of novelty citing the inventor’s own publication of the invention in his institution’s in-house publications and on the institution’s website.

Alternatively, can the inventor keep the invention confidential or as a trade secret instead of filing a patent or publishing the invention and claiming copyright? If the invention relates to a chemical product or a method of manufacture, details of which can be kept confidential within the four walls of the factory and the product or process cannot be reverse engineered by analysis of the product when it is placed in the market, then it may be advantageous to keep the details of the products or process of manufacture as a trade secret. However, in this modern age of availability of sophisticated analytical tools and techniques, I doubt if such a process or composition can be kept confidential and cannot be reverse engineered.

Reverse engineering a product or process is lawful although it may not be morally acceptable or ethical. Further, once the trade secret is leaked out, there is no way the secret can be contained. It is also difficult to take legal action against anyone accused of using stolen trade secrets or of obtaining trade secrets unlawfully. If the inventor is desirous of commercialising his invention, then potential investors or licensees would demand to see patent rights and would not be favourable to obtaining a license to use trade secrets.

It can be concluded that where an inventor is researching on an area with potentially high commercial value, he is strongly advised to seek patent rights for the invention rather than depend on copyright protection or trade secret.

As a final note to all investors, do chat with any of the intellectual property (IP) service providers at ITEX 2017, happening from 11 – 13 May at Kuala Lumpur Convention Centre. CLICK HERE to pre-register and secure your entry pass today.

Contributed by P. Kandiah (Founder and Director of KASS International).

 


NOTE: This area of practice of intellectual property rights is complex and highly technical in nature. Inventors are strongly advised to seek professional advice from experienced practitioners in the field. This article is published purely for information and should not be construed as legal advice. Each case would depend on its own facts as to determine the best way to claim proprietary rights in order to commercialise the invention.

 

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Be Digital Free Trade Zone (DFTZ) ready at ITEX 2017

THE Malaysian government has long acknowledged that digitalisation will change the face of business sooner than we know it. Malaysia’s big push for digitalisation became evident when Prime Minister Datuk Seri Najib Tun Razak launched Malaysia’s Digital Free Trade Zone (DFTZ) on 22 March, making it the first of its kind in the world. Joining hands with big names such as Alibaba founder, Jack Ma, Malaysia’s aspiration of creating a levelled playing field for SMEs and Startups in the digital marketplace became a lot more promising.

Currently, a whopping 97% of the Malaysian business scene is made up of SMEs and microenterprises. Despite being the backbone of the economy, their contribution to the nation’s Gross Domestic Product stood relatively low at only 37%. Mostly, due to the lack of digital presence. With DFTZ, however, that figure is expected to grow exponentially up to 80%.

So, if your business hasn’t make its digital mark yet and you are looking for a place to start, come join us at ITEX 2017. Allow your business to be exposed to a myriad of possibilities from innovative business solutions to investment opportunities, and be up to date with what other budding entrepreneurs are saying about the DFTZ at the Startups exhibition area.

In the era of digitalisation, the longer you wait, the more you stand lose. So be DFTZ ready at ITEX 2017, happening from 11 – 13 May at Kuala Lumpur Convention Centre. CLICK HERE to pre-register and secure your entry pass today.

Growing Trees Into Furniture & Art

THE next time you sit on a wooden chair, don’t be surprised to discovered that the chair has been ‘grown’ and not manufactured in a factory. No nails, fixings or machinery are used in creating the furniture.

This novel way of creating or growing extraordinary household chairs and tables is the brainchild of British designer Gavin Munro who not only challenges the way we create products, but believes in letting Mother Nature do all the hard work.

As a young boy growing up in England, he noticed that his mother had a bonsai tree which was left to grow in its own direction. It eventually formed itself into the shape of a throne. He was intrigued by the idea of a chair being created directly from nature.

However, it was only when he moved to California – to get a degree in Furniture Design, an apprenticeship to a cabinet-maker and a long stint building with natural materials – that the idea of ‘growing’ furniture as a business took firm root. While in San Francisco, he spent his free time crafting furniture from driftwood, but the thought of his mother’s bonsai plant never left him. If a bonsai plant could grow into a chair shape, why not other furniture, he thought.

Returning to England, he founded his firm, Full Grown, in 2006, with one goal in mind – to create the world’s most eco-friendly furniture design company. “My chairs and tables are formed from one solid piece of wood. No joints, no nails, no weak points and no unnecessary waster.” he said in an interview recently in the Architectural Digest magazine.

How are these grown furniture made? He trains and prunes young tree branches as they grow over specially designed plastic moulds or formers. At certain points he grafts them together so that they object grows in to one solid piece.

 

The whole process of growing a chair can take between 4 and 8 years. Using this method, he’s already created several prototype pieces and has a whole field of willow trees in Derbyshire where he, his wife and their teams are currently tending a crop of 500 tables, chairs and lampshades which Munro hopes to harvest next year. It takes an immense amount of patience to get the job done. For every 100 trees, there are at least 1,000 branches that grow with them that must be shaped, coaxed and cared for. Also, the shoots must be trimmed at the right time to preserve the health of the tree while maintaining the desired shape.

‘Growing’ furniture is not a new concept. In fact, the ancient Greeks and Egyptians grew stools while the Chinese were known to dig holes and grow tree roots through the gaps of chair-shaped rocks.

As the first commercially-available chairs are expected to be ready for sale by mid 2017. Munro is in discussions with a few galleries. Other items such as geometric lamps and mirror frames, are expected to be available in the later part of this year.

As a final note to all Investors and Inventors, stay tuned for the latest inventions showcase at ITEX 2017? Haven mark your dates yet, fraid not! Pre-register now by CLICKING HERE.

 

Image Designed by www.fullgrown.co.uk

From Sci-Fi Dream to Reality

 

FOR many decades, science fiction films have often shown what they think the future could look like – some were ludicrous, some were realised. However, self-lacing shoes was a pipe dream for many futurists.

Welcome the Nike HyperAdapt 1.0, the first performance vehicle for the company’s latest platform breakthrough, adaptive lacing. The shoe translates deep research in digital, electrical and mechanical engineering into a product designed for movement.

It challenges traditional understanding of fit, proposing an ultimate solution to individual idiosyncrasies in lacing and tension preference.

Functional simplicity reduces a typical athlete concern, distraction. “When you step in, your heel will hit a sensor and the system will automatically tighten,” said Tiffany Beers, Nike’s senior innovator and the project’s technical lead.

 

“Then there are two buttons on the side to tighten and loosen. You can adjust it until it’s perfect.” For Nike, the innovation solves another enduring athlete-equipment quandary: the ability to make swift micro-adjustments. Undue pressure caused by tight tying and slippage resulting from loose laces are now relics of the past. Precise, consistent, personalised lockdown can now be manually adjusted on the fly.

“That’s an important step, because feet undergo an incredible amount of stress during competition,” said Tinker Hatfield, Vice President for Design and Special Projects of Nike. Beers began pondering the mechanics shortly after meeting Hatfield, who dreamed of making adaptive lacing a reality. He asked if she wanted to figure it out – not a replication of a pre-existing idea but as “the first baby step to get to a more sophisticated place”.

The project caught the attention of a third collaborator Nike president and CEO Mark Parker, who helped guide the design. The process saw Beers brainstorming with a group of engineers intent on testing her theories. They first came up with a snowboard boot featuring an external generator. While far from the ideal, it was the first of a series of strides toward Beers and Hatfield’s original goal: to embed the technical components into such a small space that the design moves with the body and absorbs the same force the athlete is facing.

 

Through 2013, Hatfield and Beers spearheaded a number of new systems, a pool of prototypes and several trials, arriving at an underfoot-lacing mechanism. In April 2015, Beers was tasked with making a self-lacing Nike Mag to celebrate the icon’s true fictional release date of October 21. The final product quietly debuted Nike’s new adaptive technology. Shortly after, the completion of the more technical, sport version they’d originally conceived, the Nike HyperAdapt 1.0, confirmed the strength of the apparatus. The potential of adaptive lacing for the athlete is huge, Hatfield said, as it would provide tailored-to-the moment custom fit.

“It is amazing to consider a shoe that senses what the body needs in real-time. That eliminates a multitude of distractions, including mental attrition, and thus truly benefits performance.

“Wouldn’t it be great if a shoe, in the future, could sense when you needed to have it tighter or looser? Could it take you even tighter than you’d normally go if it senses you really need extra snugness in a quick manoeuvre? That’s where we’re headed. In the future, product will come alive.”

In short, the Nike HyperAdapt 1.0 is the first step into the future of adaptive performance. It’s currently manual (i.e., athlete controlled) but it makes feasible the once-fantastic concept of an automated, nearly symbiotic relationship between the foot and shoe.

If you have gotten yourself a pair, share your shoe-experience with us in the comment box below 🙂

 

Image Designed by www.nike.com