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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5 Top Inventions by Women That Changed The World

WOMEN are behind a large number of inventions than they are generally given credit for. In fact, the inventive spirit in women can be traced back hundreds of years. The first patent granted to a woman was in 1637. Here’s a sampling of women inventors and their inventions:

 

1) Mary Anderson – Windshield Wiper

Mary Anderson may be a name many of us have never heard before but all those who drive vehicles use her invention. 1903 was the year that brought about a change in how people travelled in frosty weather. That year, Anderson a native of Birmingham, Alabama, was visiting New York City via a trolley car. Her intention of catching a glimpse of the Big Apple turned into disappointment when the snowy weather became a nuisance. She not only had a hard time seeing through the windscreen that was heavily covered with snow but noticed that drivers were also having difficulty seeing through the sleet and snow. They would have to reach through the window to wipe the snow and sleet off the windshield by hand. She immediately put her thinking cap on. After getting her formula right, Anderson filed for a patent for the first windshield wipers in 1903.

 

2) Stephanie Kwolek – Kevlar

Stephanie Kwolek saved an untold number of lives. A modern-day alchemist, she led the development of a synthetic material called Kevlar which is five times stronger that the same weight of steel. Many police officers owe their lives to her as Kevlar is a material used in bullet proof vests. The eureka moment came while Kwolek was working on specialty fibers at a DuPont laboratory in Wilminton. She is the only female employee of DuPont to be awarded the company’s Lavoisier Medal for outstanding technical achievement. She was recognised as a “persistent experimentalist and a role model.”

 

3) Margaret Knight – Square Bottom Paper Bag

When paper bags were first introduced to shoppers, they weren’t all that useful for carrying things. Shaped like an envelope, its use was limited. However, we have Margaret Knight to thank for the evolution of paper bags. Knight realized that paper bags should have a square bottom; when weight was distributed across the base in this way, more things could be carried in the bag. In 1870, she created a widen machine that cut, folded and glued the square bottoms to paper bags. She was granted the patent for the device in 1871. It’s interesting to note that Knight was awarded more than 20 patents.

 

4) Bette Nesmith Graham – Liquid Paper

In the 1950s the electric typewrite had just be introduced. Despite the convenience, secretaries often found themselves retyping entire pages because of one small mistakes. Bette Nesmith Graham was one of them and being a bad typist did not make the situation any better. An idea sparked when she watched workers painting a holiday display on a bank’s window. She noticed that when they made mistakes, they simply added another layer of paint to cover the mistake. She decided to put the idea to test.

Using her kitchen blender, Graham mixed a water-based tempera paint with dye that matched her company’s stationary. Unfortunately, Graham was fired from her job for spending so much time distributing what she called “Mistake Out”. Having more time on her hands, she tweaked her mixture, renamed the product Liquid Paper and received a patent in 1958.

 

5) Josephine Cochrane – Dishwasher

The real impetus for the invention of dishwasher was driven by the frustration over Josephine Cochrane’s servants breaking her heirloom china after fancy dinners. Her machine relied upon strong water pressure aimed at a wire rack of dishes, and she received a patent for the device in 1886.

Like any modern inventors today, she faced the same challenges back then. She claimed that inventing the machine was easier than promoting it. Undaunted, Cochrane sought appointments with large hotels and restaurants. Today, dishwashing machines are common in many homes as more women enter the workplace.

As a final note, wishing all readers a Happy International Women’s Day 🙂

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Know Your Rights Before Being Taken For Granted

MOST SMEs are started by persons who were once employees in an organisation where they had acquired the necessary technical skills and knowledge to manufacture the product their employer was manufacturing. These same individuals had the entrepreneurial spirit burning deep inside them, and so, armed with the skill/knowledge and a little capital (usually from personal savings, a little help from family members or friends), they venture out on their own to start a business, usually in competition with their previous employer.

There’s nothing wrong with that, of course, unless they are in breach of their employment contract or misuse their employer’s trade secrets or confidential information. The entrepreneur is now on his/her own to conquer the business world.

Initially, the entrepreneur or company started by the employee turned-entrepreneur will compete in the market on price and perhaps superior service to attract new clients. However, one cannot use price advantage for long if one intends to remain in business or for the business to grow bigger. The entrepreneur of the new SME has to secure other competitive advantages to remain in business and for the SME to grow and expand into new territories. This is where Government sanctioned “monopolies” come to assistance. Yes, we are referring to Trademarks, Patents, Industrial Designs and Copyright (collectively referred to as Intellectual Property Rights (IPRs).

Anyone who obtains a registered trademark or a grant of patent or certificate of industrial design has a virtual monopoly over the usage of the right for a limited period of time. The proprietor of these IPRs has the exclusive right to stop others from using an identical or substantially similar trademark or from using their patent-protected technology. With this exclusive right to the IPRs, the proprietor can charge a premium price to their product or service to recover their investment – R&D costs, branding costs, etc.

 

Many entrepreneurs and SMEs perceive the costs of obtaining IPRs as expensive and IPRs themselves as difficult to enforce. Plus there are other misconceptions about IPRs too, and it would probably take an entire article in itself to address these. The fact is, the cost of obtaining IPRs – at least in Malaysia – is not high and is affordable by most SMEs. It is more costly to the business if IPRs are not secured.

Imagine spending thousands of ringgit and years to build up a brand name and yet neglecting to spend a thousand or two more to protect the brand as a registered trademark, the registration of which enables the SME to sue any infringer. Let us cite an actual case that happened in Malaysia: A restaurant business was set up in a prominent part of Kuala Lumpur. Business boomed. The partners never bothered to register the name of the restaurant as a trademark. Unknown to them, some ex-employees registered the business name as a trademark, and it did not end there. After obtaining the registration, they sued the restaurant for infringement of “their trademark”.

The restaurant had to face a long trial in the High Court. Not only did the partners suffer loss of sleep, they (along with the restaurant) were also made to look bad in the media (thus affecting their reputation) and incur thousands of ringgit in legal costs. However, they did finally manage to “get back” their trademark. Their ignorance in not recognising the market power of their trademark nearly cost them the loss of their business. So SMEs, no matter what business they are involved in, should always seek their IP consultants’ advice on obtaining IP rights for the competitive advantages they enjoy.

In the current business world and rapid globalisation of trade, IPRs have come to play a crucial role in the very survival of SMEs. Unless entrepreneurs and SMEs fully appreciate the strategic role IPRs play in the existence or survival of their business, they may be wiped out from business by their competitors who have learnt to use IPRs as a business weapon to destroy or maim rival businesses.

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

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