FAQ for PIFAQ for PI

REGARDING INTELLECTUAL PROPERTY

REGARDING RESEARCH COLLABORATION

REGARDING INTELLECTUAL PROPERTY

  • What Is Intellectual Property?
    Intellectual property (IP) is a legal concept which refers to creations of the mind for which exclusive rights are recognised. Common types of intellectual property rights include copyright, trademarks, patents, and trade secrets. If you are in the science field, most IP is in the form of patents.
  • What can be patented and is my idea patentable?
    Most inventions can be patented if they fulfill the following three criteria: Novelty, Non-obviousness, and Industrial Utility. Things that are outright unpatentable (depending on the country) include laws of nature, discoveries and mechanisms, and methods of treatment.
  • What type of protection does a patent actually grant?
    Having a patent for your invention does not give you the right to practice an invention, but it does give you the right to exclude others from doing so. During the time a patent is in place, a patent holder or licensee can exclude competitors from making and selling products similar to the patented idea of invention.
  • How do I get started submitting an invention to ILO?
    If you have an invention to disclose, please complete the form here. After it is received by our office, one of our case officers will schedule a meeting with you to further discuss the invention. After conducting a review the technology to determine patentability and feasibility of commercialisation, they will provide a recommendation for the appropriate type of protection for your invention.
  • How long does ILO take to decide whether or not to file a patent application for my invention?
    The stipulated review period for an invention disclosure at ILO is 90 days.
  • How does ILO decide on whether to file a patent application or not?
    Our office bases our decision on patentability (which is subject to the three criteria described above) as well as the commercial potential of the technology. This could include an evaluation of the market need, potential regulatory and government hurdles, and initial interest from relevant companies.
  • Once ILO decides to file on my invention, do I automatically have a patent?
    No, ILO files a patent application for you which then must pass through several stages (and years) before becoming an issued patent.
  • How long does it take for a patent to be granted?
    It can take anywhere from 4-7 years after a patent application is first filed for an actual patent to be granted. Along the way there are numerous costs involved and the application can be abandoned at any stage.
  • Who drafts the patent application?
    Our office works with a highly experienced team of lawyers based in the U.S. and UK to draft your patent application.
  • How long does it take to file a patent application?
    Depending on the number of claims and complexity of the subject matter, it can take anywhere from 1 day to 1 month to draft and file a provisional patent application. A lot of it can depend on the availability of inventors to respond to questions posed by the lawyers during the drafting process. Provisional applications can be filed rather quickly if there is an urgent need but this practice is discouraged as it leads to very weak patent applications.
  • How long do patent rights last?
    The typical lifetime of a patent is 20 years from the date of filing.
  • Who owns the invention and patent rights?
    NUS is the legal owner of the invention and patent rights. Should NUS choose not to file a patent application for your invention or abandon your application at any stage, you can make a request that NUS assign the invention rights to you. NUS grants rights on a case-by-case basis.
  • Can early disclosure of an invention compromise the right to protect my invention?
    In most countries, the right of patent protection is lost or jeopardized if a public disclosure is made prior to the filing of a patent application.

    A public disclosure is information about the invention that is readily available to the public and that is “enabling” – meaning it describes of the technology in enough detail that someone else in the field would be able to make and use the invention.

    We therefore urge you to contact our office once you become aware of an impending public disclosure. We will work with you to evaluate and protect your invention without affecting the timeline of your publication or conference proceedings.

  • What constitutes a public disclosure?
    Common modes of public disclosure include: publications, lectures, published abstracts and posters, conferences and symposia, theses and dissertations.
    Things that do not constitute a public disclosure include: grant application and internal/departmental seminars and talks where external parties are not present
  • How do I decide who to include as an inventor on a patent application?
    Inventorship is a legal determination and is not the same as authorship. Patent inventors need to have made an intellectual contribution to the invention. If you need help deciding on the inventor list for a patent application, please contact our office.

 

REGARDING RESEARCH COLLABORATION

  • How is research collaboration different from receiving a research grant?
    A research grant is funding award received which enables the PI to achieve some specific goals that fit within the context of the general objectives of the grantor. Acceptance of a grant obligates the PI and NUS to terms and conditions specified by the grantor. Typical examples of grants are NRF CRP grants, EDB EWI grants etc.

    A research collaboration is the conduct of research project jointly among two or more separate organisations whereby a research collaboration agreement is negotiated and executed between the parties involved in the project.

  • When will a research collaboration agreement be necessary?
    A research collaboration agreement is required whenever an external party is participating in the research project, in particular if there is a need to bind the external party to its commitment to the project and there is a likelihood of inventing, creating or developing new Intellectual Property.
  • How do I initiate an agreement?
    When you are approached by an external party to work on a research project, or if you intend to carry out research collaboration with one or more external parties, please contact ILO to seek assistance in preparing a research collaboration agreement.
  • Am I in the position to decide and commit terms relating to IP and other legal obligations?
    Please refer all such discussions to ILO. All decision in relation the IP and research contractual obligations and liabilities will be decided by ILO, together with the relevant authorities within NUS where necessary.
  • Who is authorized to sign an agreement?
    The completed agreements must be approved and signed by the appropriate NUS authorities, consistent with the NUS Policy on Approving and Signing Authority (2007).
  • What are the issues that will delay the agreement?
    Issues that usually result in protracted negotiations are:
    •  Ownership of intellectual property rights
    •  Publication rights
    •  Warranty
    •  Indemnification
  • What are some of NUS’ typical non-negotiable terms in a research collaboration?
    NUS retains the right to publish the project results and the right to use the project results and intellectual property created for internal, non-commercial research, and academic purposes.
    NUS does not provide indemnities, in particular, indemnity for IP infringement. NUS also does not provide warranties for the merchantability or fitness of the project results or research output.
  • How long does it take to finalise an agreement?
    The time needed to finalise an agreement really depends on the motivation of both parties to reach a mutually-beneficial consensus. Often, contract negotiations are protracted when collaborators impose unreasonable and onerous terms. From experience, it generally takes between 6-8 weeks to conclude an agreement. All ILO officers strive to turn around all documents as expeditiously as possible.
  • What can I do to speed up the process?
    Delays in concluding a agreement can be due to several factors, many of which are external and often out of control of ILO. However, PIs can help by ensuring that Schedule 1 is properly completed before submission to ILO and that the correct IRC rate and GST are accounted for in the project budget.
  • What about overhead charges and Goods & Services Tax (GST)?
    Indirect Research Costs (IRC)
    IRC is chargeable to all external research funding. The prevailing IRC rate is stated in the Policy on External Grants Distribution of Indirect Research Cost Recovery. Any deviation from the previaling IRC rate would require approval from the Office of the Deputy President (Research & Technology).
  • Goods and Services Tax (GST)
    NUS is a GST registered organisation and GST is chargeable on any funding to NUS for a research collaboration where there are benefits conferred to the collaborator.
  • What about Consulting?
    Each full-time faculty member (asst. Prof and above) may undertake undertake consultation work (for an external party) subject to the prior approval of NUS, and in accordance to the policy Consultation Work Scheme. Please note that such consultation work is a private arrangement between the staff and the external party. NUS should not be a contracting party in any contract in relation to such consultation work and should there be any terms and conditions that will obligate NUS in these contracts.
    Please also be mindful that the scope of the consultation work cannot be the same as that of the any research projects that NUS may have undertaken or will be undertaking with the external party.