RDO Chats… 03/2008 – Intellectual Property Rights and Research - by DD_AKO
Intellectual Property Rights and Research
Deputy Director Akkharawit Kanjana-Opas (DD_AKO)
I have been asked recently by VP Research and Graduate Studies to inform the committees of the Graduate School about the introduction of intellectual property rights especially on the parts which might involve with research of PSU graduate students. I think the content of what I have presented in that meeting might be of the interest for the PSU research communities therefore I am giving it out here and please feel free to write any comments or questions you might have related to the intellectual property rights.
Basically, the intellectual property right (IPR) can be classified into 7 categories including patents, copyright, trademark, trade secret, geographical indication, and IC circuit design. What related to research the most should be patents and copyright which many researchers are still confusing between these two IPRs. Theoretically, patents give the protection to invention (process and products) and design whereas copyright protects the creation in literature, arts, and performing arts.
For example, if anyone has invented a new equipment to produce biodiesel he or she should seek for the protection by patenting the invention. However, if he or she wrote the manual about how to operate that machine, the manual is then protected by the copyright law. As you can see here that one research project can actually be protected by more than just one intellectual property rights. Another important misunderstanding of researchers is the patentability and publications. Many researchers still believe that if one wants to patent the same work can not be published anywhere. This is actually wrong. It depends on what comes first. To be able to understand this, one must understand the criteria on patentability which are, novelty, inventive step and utility. In order to file for a patent, the invention (process or product) must possess all three characters. Novelty means the invention has never been disclosed to the public domain in any form before. If researcher has presented the work at the conference or published in any journal, newspapers or other type of media, this actually destroys the novelty of the invention causing the patent to be invalid. However, if the patent request has been filed before presenting that work to the public domain, it does not destroy to the novelty of the invention and the researchers can enjoy the benefit from getting the patent right and the publication.
I am not saying that all research must be patented. It really depends on the objective of the researcher. On the other hand, I strongly encourage the researchers to really explore the possibility of obtaining the appropriate intellectual property rights in order to protect their rights regarding the research, innovation or else.
The understanding about the intellectual property right not only allows the researcher to understand what can be protected but also reduces the risk of violating other people’s intellectual property rights while doing research. I always encourage the researcher to perform the search in the patent databases i.e. U.S. Patent and Trademark Office (USPTO), European Patent Office (EPO) or Department of Intellectual Property (DIP), Thailand, when writing the research grant proposal. By doing so, the researcher can be certain that what he or she plans to do in this research has not been studied before. Moreover, if there is the possibility to patent this work at the end of the research project, it can be done without having to check the patentability again. This process is called IP clearance which I will talk more about it next time.
There are also some serious concerns about the intellectual property rights when having the co-advisors from outside of PSU-either Thais or foreigners. In normal practice, before asking anyone to serve as a co-advisor of your student, the IPR issue must be laid out clearly. If there is an exchange of biological materials, samples or research objects, please also make sure that the material transfer agreement (MTA) has been signed by both parties in order to define the scope of use of these materials. MTA is highly important when the researchers (hopefully from both sides) are seeking the IP protection. It will help to define the contribution of each party in the invention and to prevent the receiver of the material to file for patent without prior informing the owners of the materials. From my understanding, almost all of our collaborative research projects so far have not used the MTA when sending the materials to the research partners. This is rather dangerous not only because the researcher can loose the right on intellectual property but also the liability which might occur if the receiver has use the material in the wrong way or illegally.
As one can see that the understanding of intellectual property right is very critical for researchers. Here at PSU, we have set up an office to help with this matter. It is called the Intellectual Property Office of Prince of Songkla University (IPOP) which is under the Prince of Songkla University Business Incubation Center (PSU-BIC). The office provides a full services related to intellectual property such as the patent searching, patent drafting and filing. If anyone has questions related to intellectual property, please contact the office and we will be glad to assist you with your request.
Next time, I will write more about the specific type of intellectual property as well as the services which can help you to do your research efficiently.