Introduction to IP

What is a Patent?

A granted patent for an invention is a property right to inventor/applicant issued by National IP office, generally for a term of 20 years from the date of filing subject to certain extensions available and maintenance fee paid. The rights in the patent include right to exclude others (in contrast to right to make) from making, using, offering for sale, selling, importing. It is applicant or inventor duty to enforce the patent. Generally there are three types of patents:

  • Utility Patents: for any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof\
  • Design Patents: for new, original, and ornamental design for an article of manufacture
  • Plant Patent: for asexually reproducing any distinct and new variety of plant.

 

What Is a Trademark or Servicemark?

A trademark is a word, name, symbol, or device used in business to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is same as a trademark except that it is used for service rather than a product. The rights in the trademark include preventing others from using a confusingly similar mark. Trademarks may be registered with the National IP Office.

 

What is a Copyright?

Copyright is a protection provided to the authors of literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished for their original work. The rights include exclusive rights to reproduce the copyrighted work, distribute copies, perform copyrighted work publicly, display publicly, or to prepare derivative work. The rights include on the form of expression rather than subject matter.

 

Resources for Researchers

Patent Review Board

The UBD Patent Review Board (PRB) is appointed by Assistant Vice Chancellor (Research and Innovation) to evaluate inventions, to determine which ones should be submitted for international patent protection, and to discuss patent renewals. Patent Review Board guides Universiti Brunei Darussalam (UBD) to align its Patent Strategy with current market needs. Members of the Patent Review Board comprising of internal and external stakeholders are appointed by Assistant Vice Chancellor (Research and Innovation).

 

Patent Screening Committee

The UBD Patent Screening Committee is chaired by Director, Industry Liaison Office to evaluate inventions to determine which ones should be submitted for filing patent protection. Members of the Screening Committee include Director of Research, Deputy Director of Research, IP Manager. The patent screening committee meets based on needs and finalize the inventions at earliest so as to file the invention locally or provisionally abroad to get earliest filing date. Recommendations of Patent Screening Committee are discussed at Patent Review Board to recommend inventions for International Protection by filing PCT or Non-Provisional Application abroad.

Please find below some resources that may be helpful in order to protect research outputs:

 

  • Invention Disclosure Form
    • Please submit IDF for any research output or technology for which patent protection is required. Each inventor has duty to disclose any research paper or any material that you know and is relevant to patentability of the technology being submitted in IDF for patent protection. The duty to disclose will remain applicable during the period when patent is pending.
  • Inventor Guidelines
    • Rules and guidelines for determining inventorship are established by laws and judicial decisions and can differ from country to country. Inventorship guidelines should be followed while filing Patent Application and please ask for clarification if required.
  • NDA
    • If you need to disclose any confidential information for the purpose of evaluation and assessment of the information, please get the NDA signed first.
  • UBD IP Policy
    • This Intellectual Property Policy (IP Policy) of Universiti Brunei Darussalam provides a framework and guideline for creation, development, management, protection, exploitation and ownership of Intellectual Property Rights (IPR) created by the University’s employees, students and associates including visitors to the University.

 

 

Patent Search

One may search following databases for prior patents or patent publications freely:

 

Brunei Patent Information and Rules

Brunei Patent Legislation may be accessed at below Links

 

US Patent Information and Rules

What Can Be Patented:

  • Any new and useful
    • Process
    • Machine
    • Manufacture
    • Composition of matter
    • Or any new and useful improvement thereof

Exceptions:

  • Inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.
  • Laws of nature, Physical phenomena, and Abstract ideas
  • Mere idea or suggestion. A complete description of the actual machine or other subject matter is required.

Note:

  • Process is a process, act, or method, and primarily includes industrial or technical processes.
  • Manufacture refers to articles that are made, and includes all manufactured articles.
  • Composition of matter relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.
  • These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.

 

Duty to Disclose Information Material to Patentability

All inventors have duty to disclose any information that may include prior research paper, patent application, or webpage if it is material to patentability of pending claims. The duty to disclose will continue until patent is granted and not just limited to at the time of filing.

It doesn’t mean that it is duty to submit all papers or publication that an inventor knows, the keyword is if it is material to patentability. Inventors and Applicants should carefully examine all references cited in search reports of by other patent offices in a counterpart application. It also doesn’t mean that you need to continue search and submit, it only says that if you are aware of any reference then that reference should be submitted to the patent office.

No patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.

Who has duty to disclose:

  • Each inventor named in the application
  • Each attorney or agent who prepares or prosecutes the application
  • Every other person who is substantively involved in the preparation or prosecution of the application and is associated with the inventor or assignee

 

35 U.S.C. 102 CONDITIONS FOR PATENTABILITY; NOVELTY

  • NOVELTY; PRIOR ART – A person shall be entitled to a patent unless
    • the claimed invention was patenteddescribed in a printed publication, or in public useon sale, or otherwise available to the public before the effective filing date of the claimed invention; or
    • the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing dateof the claimed invention.
  • EXCEPTIONS –
    • DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION – A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if
      • the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
      • the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
      • DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS – A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if
        • (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
        • the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
        • the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
  • COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS – Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if–
    • the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
    • the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
    • the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
  • PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART – For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application–
    • if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
    • if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

 

WIPO PCT Information and Rules

Rules to file International PCT Application are available at the link below.

WIPO