Introduction to Intellectual Property Rights: how to protect what’s yours

This is the first article of a two-part series on intellectual property for biotech start-ups.

Have you heard of Intellectual Property Rights (IPRs)? Intellectual property is legally protected knowledge, making it an intangible asset that can be bought, sold or licensed.  In the USA, intangible assets account for more than 85% of the market value of S&P500 companies.

This article provides a brief introduction of the main IPRs – patents, trademarks, registered designs, copyright, and trade secrets. Other IPRs are grouped together as a last category. In this article, we discuss these IPRs in the Singapore context. IPRs may vary in other countries.

 

Which IPRs apply to your business? We summarize the main IPRs in Singapore in the table below. Each IPR is elaborated in more detail later in the article.

IPR	What does it protect?	Do we need to apply? If yes, when?	Duration of protection
Patents	Inventions	Yes, before showing or using in public	20 years
Trademarks	Brand names and logos on goods and services	Not compulsory, can register when in use	10 years, renewable indefinitely
Registered designs	aesthetic appearance	Yes, before showing or using in public	5 years, renewable to 15 years
Trade secrets	Confidential manufacturing  technique, formulation, client list	No	As long as the information is kept secret
Copyright	Original artistic works: sculpture, music, literature, film	No	20 to 70 years, depending on the work
Plant varieties	Plant material: seeds, fruit, dried parts, etc.	Yes, within 1 or 4 years after selling the plant material	25 years
Geographical indications	Products with unique characteristics due to a particular territory e.g. Champagne	No	Indefinite
Integrated circuits	Circuit design	No	15 years

 

1. Patents

A registered patent allows the rights holder to use an invention and to prevent others from using the invention, e.g. an engineered product, chemical compound, computer-implemented invention, or manufacturing process.

 

 

 

What constitutes a patentable invention? A patentable invention needs to have novelty, an inventive step, and be industrially applicable.

• In order for an invention to be new (novel), the invention must not have been disclosed to the public anywhere in the world, such as in a publication. Showing or using your invention in public before filing an application may also destroy the novelty of your invention, unless the disclosure was unauthorized. Although Singapore has recently introduced a 12-month grace period for public disclosures by the inventor, disclosures made by third parties are not covered by this grace period. Moreover, many other countries do not have such a grace period. Grace periods are a form of safety net for accidental or inadvertent disclosures, not to be relied upon as a strategy, so it would be good practice not to disclose your invention until the application has been filed.
• An invention is inventive if it is not obvious to a person working in that technology field, after considering existing knowledge in the public domain. For example, in a crowded scientific field where there are publications, an invention might be considered novel but just an obvious incremental advance over what was known. In the absence of any unexpected advantage, the use of a pig enzyme to process fat might be considered obvious in light of a publication disclosing the use of the homologous rat enzyme for the same process.
• An invention is industrially applicable if it can be used in industry and does not fall within Singapore’s statutory exceptions. Methods of medical treatment, therapy, surgery or diagnosis performed on the human or animal body (including immoral acts such as human cloning) are not considered industrially applicable in Singapore. However, uses of compounds are allowed if written in a suitable format, as are diagnostic kits.

In addition to the 3 basic criteria above, the invention must not be a mere discovery, scientific theory or mathematical method, aesthetic creation (protected under copyright), method for performing a mental act, playing a game or doing business, or mere presentation of information. For example, a naturally occurring microorganism or compound is not patentable, but new uses of the microorganism or compound can be patented. Genetically modified organisms can be patented, such as microorganisms for bioreactors and plants with higher yield.

The claims in a patent define the scope of protection, so they must be carefully written to cover the commercial embodiment of the invention and to prevent third parties from easily designing around the patent. The application must pass an examination at IPOS before the patent can be granted. Thus, it is highly recommended that a patent agent is engaged to prepare the patent application with appropriate legal format and terminology.

Once granted, renewal fees need to be paid every year to keep the patent in force for up to 20 years from the date of filing.

 

2. Trademarks

 

A trademark is a sign that is used in relation to goods and/or services, to distinguish brands from competitor products or services. Trademarks can be words, logos/graphics, word/graphic combinations, shape, color, sound, or any combination of these elements, provided it meets certain criteria, such as not being descriptive, not a geographic location, not a common surname, not the same or similar to another’s on similar goods. It must also be distinctive and not offensive.

In a competitive market, brand awareness and loyalty are very important. Examples of well-known brands include PFIZER®, iPhone®, ROLEX®, AMAZON®, HUMIRA® and T TERUMO®.

It is not compulsory to register a trademark but if the trademark is not registered, it should include the “TM” superscript to show the public that it is being used as a trademark.

A registered trademark is a statutory right that makes it easier to sue other parties for trademark infringement, because the onus is on the infringer to prove they were not aware of the registered mark and/or that the trademarks are different. Whereas, to enforce rights against a third party the owner of an unregistered trademark must rely on common law ‘passing off’ and the onus is on them to show they have acquired reputation in the trademark. This can be difficult for young companies new in the market.

Once a trademark is registered, it will be protected for 10 years and can be renewed indefinitely.

 

3. Registered designs

 

Do you take pride in the elegant design of your microfluidic device, test kit, product packaging or user interface of your app? To register a design, it must be novel and distinctive. If the product is not patentable but has a distinctive appearance, design protection is a relatively low-cost way to prevent copying. Registered designs protect the shape, configuration, colors, pattern or ornamentation applied to any article or non-physical product (e.g. graphic user interface). Registered designs can be in 2 or 3 dimensions. An article is any object that is handmade or manufactured. A non-physical product refers to any projection of a design on a surface or into a medium (including air).

Once a design is registered, it is protected for 5 years from the filing date. This protection period can be renewed every 5 years, up to 15 years.

 

4. Trade secrets

As the name suggests, trade secrets encompass any commercially valuable and sensitive information that is kept secret. For example, a list of suppliers and customers, a production process, or business strategy can qualify as a trade secret. Trade secrets can last perpetually, as long as they remain undisclosed. Examples of trade secrets include the recipe for Coca Cola which has been carefully protected since 1886 and Google’s search algorithm.

Short of locking the trade secret in a vault for 86 years as Coca Cola has done for their recipe, maintaining secrecy may be tricky. For a start, you can restrict access to the trade secret and indicate on the relevant documents that the contents are confidential. However, there are several famous cases (e.g. Apple, Samsung, DuPont, SeaGate, and Genetech) where trade secrets have been misappropriated by competitors.

Trade secrets cannot be enforced against someone who independently discovers or creates the “secret”. This includes situations where someone derives a chemical formulation by reverse engineering. However, unlawful access or use of a trade secret is can be sued under breach of confidence or theft.

 

5. Copyright

 

Copyright protects the expression of ideas in tangible forms. Marketing material (drawings, diagrams, brochures, posters), website layout, logos and even programming code can, for example, be protected by copyright.

Copyright works do not need to be registered, but in order to enforce copyright right, there must be proof of ownership. Proof can include adding an indicator of authorship on diagrams and adding a statement on your website, poster or video to state that you created the work and own copyright to it. Keeping detailed records of how and when you created the work, including date stamping can assist with proving ownership.

The duration of protection varies for each category of copyright work. A list of various categories of copyright works and their duration of protection relevant to biotechnology is provided below:

Literary works exist in manuscripts, software code, company brochures.

Artistic works exist in diagrams, drawings, photographs, website layout, and prototype of your medical device. Both are protected for 70 years after death of the author/artist.

Films exist in videos for product demonstration or company promotion. They are protected for 25 years from the first publication.

 

6. Other IPRs

Plant variety protection applies to any plant variety for up to 25 years. The plant variety needs to be new (not sold in Singapore more than 1 year prior to application, not sold overseas more than 6 years for trees or 4 years for other plants prior to application), distinct (distinguishable from existing varieties), uniform, and stable (characteristics do not change after repeated propagation).

Geographical indications can be used by all producers or traders of products originating from and possessing unique qualities attributed to the specific geographical territory, e.g. Champagne, Darjeeling.

Integrated circuit designs protect up to 15 years. This is an automatic right.

The Next Action

You can start by setting up systems for identifying IP generated in your business, using the list above, and then take strategic steps to protect them appropriately.

Using a combination of IPRs to protect various aspects of your biotechnology business would help to maintain a competitive advantage, as well as showing your technical capabilities to competitors. These IPRs can also count as your company’s assets.

Some IPRs, such as patents, trademarks, copyright, registered designs and plant varieties can be licensed, assigned or mortgaged; and are thus potential sources of revenue. Please note that in-licensing technology that complements your technology can also add value to your company.

You may want to appoint an IP manager to handle your IP portfolio, particularly the documentation and deadlines. You may also want to consider using agents to assist you for the application process.

It is important to note that IPRs are specific to each country: you would need to seek protection separately in each country of interest. Furthermore, different countries have slightly different types of IPRs, application procedure, scope and length of protection. Please seek professional advice on application procedures and strategies specific to your business.