AuthorshipAuthorship

Franco G. Teves, Ph.D. Franco G. Teves, Ph.D. Dipl. Phil. Acad. Microbiol.Dipl. Phil. Acad. Microbiol.

Director of ResearchDirector of ResearchMSU-IITMSU-IIT

Who is an author?Who is an author?

Generally considered to be someone Generally considered to be someone who has made who has made substantive substantive intellectual contributions to a intellectual contributions to a published studypublished study (ICMJE) (ICMJE)

Falls under Falls under ethical considerationsethical considerations in the conduct and reporting of in the conduct and reporting of researchresearch

Must be distinguished from other Must be distinguished from other contributorscontributors

Considerations from the International Considerations from the International Committee of Medical Journal Editors (ICMJE)Committee of Medical Journal Editors (ICMJE)

CRITERIA FOR AUTHORSHIP CREDITCRITERIA FOR AUTHORSHIP CREDIT1.1. Substantial contributionsSubstantial contributions to to conception conception

and designand design, , acquisition of dataacquisition of data, or , or analysis and interpretation of dataanalysis and interpretation of data;;

2.2. Drafting the articleDrafting the article or revising it or revising it critically for important intellectual critically for important intellectual content; andcontent; and

3.3. Final approvalFinal approval of the version to be of the version to be publishedpublished

AUTHORS MUST MEET AUTHORS MUST MEET ALLALL THESE THESE THREE CRITERIATHREE CRITERIA

Large Multi-Center Group Large Multi-Center Group (Multiple Authorship)(Multiple Authorship)

The group must identify individuals who The group must identify individuals who accept accept direct responsibility for the direct responsibility for the manuscriptmanuscript and who qualify as authors. and who qualify as authors.

Acquisition of funding, collection of Acquisition of funding, collection of data, or general supervision of the data, or general supervision of the research group research group alonealone does not does not constitute authorship.constitute authorship.

All other contributorsAll other contributors are mentioned are mentioned in the Acknowledgments portion.in the Acknowledgments portion.

Multiple AuthorshipMultiple Authorship Corresponding authorCorresponding author should clearly indicate should clearly indicate

the identity of all authors, and in which order.the identity of all authors, and in which order. GuarantorsGuarantors are authors who take are authors who take

responsibility for the integrity of the work as a responsibility for the integrity of the work as a whole, from inception to published article, and whole, from inception to published article, and publish that information.publish that information.

Senior or First AuthorSenior or First Author is the one who has is the one who has contributed the most to the work, followed by contributed the most to the work, followed by others in descending order as to who has others in descending order as to who has contributed the most.contributed the most.

The The last authorlast author is usually the head of the lab is usually the head of the lab or research group.or research group.

Prior ArrangementPrior Arrangement

Decisions about contributors/authors Decisions about contributors/authors should be jointly made by the groupshould be jointly made by the group

Corresponding author/guarantor Corresponding author/guarantor should be prepared to explain the should be prepared to explain the presence and order of authorspresence and order of authors

AcknowledgmentsAcknowledgments

All contributors who do not qualify All contributors who do not qualify for authorship should be included, for authorship should be included, example:example:1.1. Person who provided purely Person who provided purely

technical help;technical help;

2.2. Person who provided writing Person who provided writing assistance;assistance;

3.3. Department Chair who provided Department Chair who provided only general support.only general support.

Other DeclarationsOther Declarations Disclosure of the Disclosure of the identity of personsidentity of persons who who

have helped in the study design, data have helped in the study design, data collection, data analysis, or manuscript collection, data analysis, or manuscript preparation.preparation.

Disclosure of Disclosure of financial and material financial and material supportsupport..

Disclosure of otherDisclosure of other conflicts of interestconflicts of interest.. Readers may infer endorsementReaders may infer endorsement of the of the

data and conclusion from the people in the data and conclusion from the people in the Acknowledgments, therefore they should Acknowledgments, therefore they should give give written permissionwritten permission to to be be acknowledged.acknowledged.

Overview of the Overview of the IP System: RecapIP System: Recap

What is intellectual What is intellectual property? (WIPO)property? (WIPO)

CreationsCreations of the human mind of the human mind Relates to Relates to items of information or items of information or

knowledgeknowledge, which can be incorporated in , which can be incorporated in tangible objectstangible objects at the same time in an at the same time in an unlimited number of copies at different unlimited number of copies at different locations anywhere in the world locations anywhere in the world

Intellectual property rights protect the Intellectual property rights protect the interests of the creators interests of the creators by giving them by giving them property rights over their creationproperty rights over their creation

increase the company’s market value

enhance access to finance

open access to new markets

avoid unnecessary litigation

WHYWHY Protect IP? Protect IP?

General Coverage of IP Protection General Coverage of IP Protection (Convention Establishing the World (Convention Establishing the World Intellectual Property Organization, Intellectual Property Organization,

1967)1967) Literary, artistic, and scientific worksLiterary, artistic, and scientific works Performances of performing artists, Performances of performing artists,

phonograms, and broadcastsphonograms, and broadcasts Inventions in all fields of human endeavorInventions in all fields of human endeavor Scientific discoveriesScientific discoveries Industrial designsIndustrial designs Trademarks, service marks, and Trademarks, service marks, and

commercial names and designationscommercial names and designations Protection against unfair competitionProtection against unfair competition All other rights resulting from intellectual All other rights resulting from intellectual

activity in the industrial, scientific, literary activity in the industrial, scientific, literary or artistic fields.or artistic fields.

Important Milestones in IP Important Milestones in IP ProtectionProtection

Paris ConventionParis Convention for the Protection of Industrial for the Protection of Industrial Property (1883)Property (1883)

Berne ConventionBerne Convention for the Protection of Literary and for the Protection of Literary and Artistic Work (1886)Artistic Work (1886)

Creation of Creation of WIPOWIPO (1967) (1967) Bayh-Dole Act, USABayh-Dole Act, USA (1980) (1980) Treaty on Intellectual Property in Respect of Treaty on Intellectual Property in Respect of Integrated Integrated

CircuitsCircuits (1989) which was included in the Agreement on (1989) which was included in the Agreement on Trade-related Aspects of Intellectual Property Rights Trade-related Aspects of Intellectual Property Rights (TRIPS), 1994(TRIPS), 1994

R.A. 8293R.A. 8293 (1998) prescribes the IP code and establishes (1998) prescribes the IP code and establishes the IPO, providing for its powers and functions, and for the IPO, providing for its powers and functions, and for other purposesother purposes

House Bill 3270House Bill 3270 (still in Congress), Techno Transfer Bill (still in Congress), Techno Transfer Bill

Two Branches of IPTwo Branches of IP CopyrightsCopyrights – – artistic creations, such as artistic creations, such as

poems, novels, music, paintings, and poems, novels, music, paintings, and cinematographic workcinematographic work; excludes others from ; excludes others from making copies of the expressions without making copies of the expressions without permissionpermission

Industrial propertiesIndustrial properties::1.1. PatentsPatents to protect inventions to protect inventions2.2. Industrial designsIndustrial designs – aesthetic creations – aesthetic creations

determining the appearance of industrial determining the appearance of industrial productsproducts

3.3. Trademarks Trademarks to protect reputationto protect reputation4.4. Service marksService marks5.5. Layout designs of ICLayout designs of IC6.6. Commercial names and designationsCommercial names and designations7.7. Geographical locationsGeographical locations8.8. Protection against unfair competitionProtection against unfair competition

CopyrightsCopyrights

Have a lifespan of 50 years or Have a lifespan of 50 years or until the death of the author, until the death of the author, and is transferableand is transferable

PATENTPATENT A statutory grant by the Government A statutory grant by the Government

conferred to an inventor or his legal conferred to an inventor or his legal successor, in return for the successor, in return for the DISCLOSURE DISCLOSURE of the invention to the of the invention to the public, the public, the RIGHTRIGHT for a limited period of for a limited period of time to exclude others from making, time to exclude others from making, using, selling or importing the invention using, selling or importing the invention within the territory of the country that within the territory of the country that grants the patent.grants the patent.

granted for inventions

technical solution to a problem in any field of

human activity

PATENT

a patent owner has the exclusive right to make, use, sell or import the patented products or process

First-to-file rule

Term of Protection: 20 years from filing date

Patents: Conditions of Patents: Conditions of PatentabilityPatentability

(Section 21, R.A. 8293)(Section 21, R.A. 8293) Industrial applicabilityIndustrial applicability NoveltyNovelty Inventive stepInventive step Patentable subject matter Patentable subject matter

(depending on country)(depending on country) Lifespan of 20 yearsLifespan of 20 years

Statutory Classes of Statutory Classes of InventionsInventions

An invention may be, or may An invention may be, or may relate to:relate to:

-a useful machine;-a useful machine;-a product;-a product;

--a process or improvement of a process or improvement of the foregoing;the foregoing;

--microorganism;microorganism;

--non-biological & non-biological & microbiological processesmicrobiological processes

(Sec. 21, IP Code, Rule 201, IRR)(Sec. 21, IP Code, Rule 201, IRR)

Biotechnological Biotechnological InventionsInventions

are inventions which concern products are inventions which concern products consisting of or containing biological consisting of or containing biological materials or processes by means of materials or processes by means of which biological materials are which biological materials are produced, processed or used.produced, processed or used.

Biological material- any material containing genetic information and capable of reproducing itself or being reproduced in the biological system

Patentable Inventions Patentable Inventions in the Field of in the Field of BiotechnologyBiotechnology

ProductsProducts

including cellular and non-including cellular and non-cellular organismscellular organisms

ProcessesProcesses

UsesUses

List of Patentable List of Patentable Biotechnological Biotechnological

InventionsInventionsPRODUCTSPRODUCTS PROCESSESPROCESSES USESUSES

1. Chemical1. Chemicala) antibiotics, natural a) antibiotics, natural chemicalschemicals

(gums,sec. metabolites)(gums,sec. metabolites)

b) peptides or proteinsb) peptides or proteins

monoclonal antibodiesmonoclonal antibodies

c) genes, other DNA & RNAc) genes, other DNA & RNA

molecules, e.g. expression molecules, e.g. expression control signals (promoters,control signals (promoters,

enhancers etc.) antisense enhancers etc.) antisense oligo- nucleotidesoligo- nucleotides

d) ribozymes, plasmids ord) ribozymes, plasmids or

other vectorsother vectors

e) pharmaceuticale) pharmaceutical

compositions containingcompositions containing

any of the aboveany of the above

2.Live2.Livea) microorganismsa) microorganisms

3. Cellular3. Cellulara) Bacteriaa) Bacteria

b) fungi(including b) fungi(including yeasts) yeasts)

c) algae c) algae

d) protozoad) protozoa

e) animal or plant e) animal or plant cells or cell linescells or cell lines

4. Non-cellular4. Non-cellulara) Viruses and a) Viruses and bacteriophagesbacteriophages

b) Viroidsb) Viroids

c) fungic) fungi

5. Apparatus5. Apparatus

1. Processes for1. Processes for

preparing:preparing:a) proteinsa) proteins

b) genes, other b) genes, other RNA orRNA or

DNA DNA moleculesmolecules

c) c) microorganismsmicroorganisms

d) cell linesd) cell lines

e) virusese) viruses

f) medical f) medical productsproducts

2. Processes for 2. Processes for producing producing productsproducts

by fermentationby fermentation

1. Use of the 1. Use of the product in the product in the process (to process (to prepare prepare another another product)product)

2. Medical uses2. Medical uses

Exceptions to Exceptions to Patentability in Patentability in BiotechnologyBiotechnology

DiscoveriesDiscoveries

Methods for treatment of the Methods for treatment of the

human or animal body by human or animal body by

surgery or therapy & diagnostic surgery or therapy & diagnostic methods practiced on the methods practiced on the

human & animal body human & animal body

Exceptions to Exceptions to Patentability in Patentability in BiotechnologyBiotechnology

Plant varieties or animal Plant varieties or animal breeds or essentially breeds or essentially biological processes for the biological processes for the productionproduction

of plants and animalsof plants and animals

Contrary to public order or Contrary to public order or

moralitymorality

(Sec. 22, IP Code)(Sec. 22, IP Code)

Requirements of Requirements of PatentabilityPatentability

1. Novelty 1. Novelty an invention shall not be considered new an invention shall not be considered new

if it forms part of a prior art.if it forms part of a prior art.

(Sec. 23, IP (Sec. 23, IP Code)Code)

Prior Art-Prior Art- everything made everything made available to the public by means of:available to the public by means of:

PRIOR ART

Requirements of Requirements of PatentabilityPatentability

2. Inventive Step 2. Inventive Step

an invention involves inventive step if, an invention involves inventive step if, having regard to a prior, it is not having regard to a prior, it is not

obvious obvious to a person skilled in the art at the to a person skilled in the art at the

time time of the filing date or priority date of the of the filing date or priority date of the application. application. (Sec. 26, IP Code)(Sec. 26, IP Code)

Requirements of Requirements of PatentabilityPatentability

3. Industrial Applicability 3. Industrial Applicability

an invention that can be an invention that can be produced produced

and used in any industry shall and used in any industry shall be be

industrially applicable.industrially applicable. (Sec. 27, IP Code)(Sec. 27, IP Code)

Special Patentability Special Patentability Requirements for Biotech Requirements for Biotech

InventionsInventions PriorityPriority Sufficiency of DisclosureSufficiency of Disclosure Deposition of microorganismDeposition of microorganism

(Budapest Treaty)(Rules 408 & (Budapest Treaty)(Rules 408 & 409, IP Code)409, IP Code)

The claims: The claims: the requirement of the requirement of clarity & support by the clarity & support by the descriptiondescription

Requirements for Filing a Requirements for Filing a Patent ApplicationPatent Application

Completely filled-out request form Completely filled-out request form for a patent grantfor a patent grant

Specification and claim(s)Specification and claim(s) Drawing necessary for Drawing necessary for

understanding the inventionunderstanding the invention Abstract of the inventionAbstract of the invention Filing feeFiling fee

Utility ModelsUtility Models

For certain inventions in the mechanical For certain inventions in the mechanical fieldfield

Less complex inventions, have shorter Less complex inventions, have shorter commercial lifecommercial life

Novel, but may lack an inventive stepNovel, but may lack an inventive step Shorter maximum term of protection Shorter maximum term of protection

(between 7 to 10 years)(between 7 to 10 years) Lower fees for obtaining and Lower fees for obtaining and

maintaining the rightsmaintaining the rights

Industrial DesignsIndustrial Designs

Novel ornamental or aesthetic aspect of Novel ornamental or aesthetic aspect of a useful article (shape, pattern, color)a useful article (shape, pattern, color)

Design must have visual appeal and Design must have visual appeal and performs its intended function performs its intended function efficiently (main difference with efficiently (main difference with copyright)copyright)

Must be reproducible by industrial Must be reproducible by industrial meansmeans

Maximum term of 10-25 yearsMaximum term of 10-25 years

Layout Designs of Layout Designs of Integrated CircuitsIntegrated Circuits

Something new that do not fall Something new that do not fall under industrial design, under industrial design, copyright, and patentcopyright, and patent

TrademarksTrademarks

Sign, or combination of signs, Sign, or combination of signs, which distinguishes the goods or which distinguishes the goods or services of one enterprise from services of one enterprise from those of another (words, letters, those of another (words, letters, numerals, pictures, shapes, colors)numerals, pictures, shapes, colors)

In other countries include 3D In other countries include 3D forms (Coca-Cola bottle, forms (Coca-Cola bottle, Toblerone), sounds, smellToblerone), sounds, smell

If applied for services, become a If applied for services, become a service markservice mark

Trade NamesTrade Names

Name or designation that Name or designation that identifies an enterpriseidentifies an enterprise

May be registered or not, May be registered or not, depending on the country, but depending on the country, but protection is still givenprotection is still given

Geographical IndicationsGeographical Indications

Signs used on goods that have a Signs used on goods that have a specific geographical origin and specific geographical origin and possess qualities or reputation possess qualities or reputation that are due to that place of that are due to that place of originorigin

Protection Against Unfair Protection Against Unfair CompetitionCompetition

Competitor creating confusion Competitor creating confusion False allegationsFalse allegations

Who should own the Who should own the patent/copyright in a university patent/copyright in a university

setting?setting? The university owns the The university owns the

patent/copyright normallypatent/copyright normally All contributors share the All contributors share the

royalties, including the funding royalties, including the funding agenciesagencies

Thesis outputs with potential Thesis outputs with potential commercial value must be commercial value must be decided before hand with decided before hand with regards to patent ownershipregards to patent ownership

IP Policies Should Pave the Way IP Policies Should Pave the Way for Technology Transferfor Technology Transfer

Steps in technology commercialization:Steps in technology commercialization:

1.1. Technology generationTechnology generation2.2. Invention reportInvention report3.3. AssessmentAssessment4.4. Patent filingPatent filing5.5. ValuationValuation6.6. MarketingMarketing7.7. LicensingLicensing8.8. Commercial developmentCommercial development

THANK YOU FOR YOUR ATTENTION.