FAQ

Where is CTeD located in Duke-NUS?

We are located at Duke-NUS Medical School, Level 6.

What does CTeD do?

CTeD oversees and manages selected intellectual property generated by the researchers and staff at Duke-NUS, and works to ensure optimal commercial outcomes for all Duke-NUS inventions. Learn more about CTeD here.

Can I do an internship with CTeD?

Please contact us if you would like to do an internship with CTeD.

Where can I find more information on the patenting process for Duke-NUS technologies?

Please refer to the Duke-NUS Researchers page for CTeD’s commercialization process as well as the patent policy in Duke-NUS.

What is a patent?

A patent is a legal document that offers the patent owner a property right over his/her invention. A patent grant provides the owner (See Ownership and Inventorship section below to understand more about patent ownership) a right to exclude all others from performing acts such as practising, using, reproducing, selling etc., the invention and its products. Carrying out these acts by anyone except the patent owner and his/her licensees would constitute infringement of the patent, which is a punishable offence. The patent owner enjoys these rights in exchange for disclosing all relevant information about the working of the invention which can be clearly understood by a person possessing ordinary skill in that field of technology. Patent rights are time-bound and territorial, meaning the rights of a patent owner are usually restricted to a period of 20 years and available only in those countries where the patent owner has applied for and successfully secured a grant of patent. In other words, the patent owner gets a limited monopoly over his/her invention.

What constitutes a patentable subject matter?

Patent laws around the world define patentable or patent-eligible subject matter. Patent ineligible subject matter categories include (but are not limited to) laws of nature, algorithms, mathematical formulae, artistic works etc. These categories are considered patent ineligible subject matter since they fall under the spectrum of abstract ideas and/or discoveries. Patent eligible subject matter is, for example a process, a machine, a method of manufacture or composition of matter, which is novel and non-obvious and has some commercial applicability. “Novelty” of an invention is assessed by identifying either a new physical attribute, a new combination or a new use over the existing or prior developments available to the public anywhere in the world (also known as prior art). “Non-obviousness” of an invention is assessed by determining whether the new physical difference, a new use or new combination is not obvious to a person with ordinary skill in the field of the invention and whether the new attribute, use or combination produces new and unexpected results.

What is the advantage of filing a patent application?

Almost all jurisdictions follow the first-to-file principle, wherein an inventor who files a patent application first is awarded the rights upon the grant of his/her patent. The granted patent provides a negative right, in that the owner can exclude all others from practising, using, reproducing and selling the product/process, essentially granting him a monopoly over that invention for a period of 20 years. The owner can sue others, who perform the above-mentioned activities, for patent infringement. In this way, filing a patent application is an essential first step in exploiting one’s invention for commercial benefits and preventing all others from doing so. If an inventor fails to file a patent application for his invention but instead publishes the invention in the scientific literature, then others may copy and exploit the same invention commercially, without the inventor having any recourse.

What are the stages in the patenting process – from filing to grant?

0 month: The first step usually is to prepare and file a provisional patent application. In Singapore, US and many other countries, a provisional application is a relatively inexpensive application. The purpose of filing a provisional application is two-fold: (1) obtain an early filing date i.e. a priority date, which is to establish the novelty and non-obviousness over the relevant prior art as on that date, and (2) gain 12 months to strengthen the application by generating more exemplifications of the invention.

12 months: After 12 months, the provisional application must be converted into a non-provisional application. There are 2 ways of doing this, either (1) by filing non-provisional applications directly in countries where the patent protection is sought, or (2) via a PCT application. PCT is an abbreviation for Patent Cooperation Treaty, an international treaty on patents with currently 152 contracting nations. PCT enables one to buy time during which to further assess the merits of the invention, and to assess the likelihood of it being adopted by the relevant industry. Another advantage of the PCT application is deferment of patent filing costs in different countries, which are relatively expensive, for a period of 18 months. For the filed PCT application, international authorities will carry out prior art searches and prepare a written opinion which may assist the applicant in his/her assessment of the application. However, the grant of patent rights in any country remains under the control of the respective national patent offices – during the so called “national phase”. Duke-NUS usually takes the PCT route. (Information on PCT adapted from the WIPO website.)

30 months: National Phase Entry: After 18 months from the PCT filing, the applicant must decide in which countries to seek grant of patent rights and enter the national phase. The PCT application and the search reports will then be transmitted to national patent offices. National offices of the designated countries will examine the patent application based on their country’s patent laws and the international search report. The national offices will issue “office actions” to which the applicant is entitled to respond and request reconsideration, if the applicant’s claims are rejected by the examiner. This examination process is essentially a negotiation, between examiner and applicant, about the scope/breadth of the patent claim that will be allowed. Finally, subject to fulfilment of all the requirements of the national office, a patent may be granted in that country. The term of that granted patent is 20 years from the date of the originally-filed non-provisional or PCT application.

A patent has been filed with the help of CTeD for an invention arising out of my laboratory, what steps should I follow next?

Once a provisional application is filed, the inventor is required to generate data that demonstrates the working of the invention unambiguously and supports the patent claims. The inventor gets 12 months for this, after which a PCT must be filed. CTeD will meet regularly with you to track progress to help ensure that the data necessary for patent prosecution is available. Refer to answer for Q.4 for more information on patent filing procedures.

I plan to take an invention/technology through commercial development, when can I publish – before or after filing a patent application? And what about public disclosures like presenting posters, giving seminars or speaking at large conferences?

It is essential that all public disclosures of the invention such as publications, poster presentations, oral presentations etc. be made after filing a provisional application. These disclosures may defeat the novelty and inventiveness of the invention and make it impossible to obtain a patent, because they will be prior art documents, citable against the patent application. The timing of preparing a patent application and a manuscript for publication can be managed. Come and talk to us.

Who owns the invention and the patents?

In accordance with Duke-NUS’ patent policy, all rights, title and interest in Inventions discovered, created or developed in the course or furtherance of Duke-NUS Research or other work, are the sole property of Duke-NUS. Furthermore, Duke-NUS employment contracts contain clauses wherein it is mutually agreed that each employee will assign rights in his/her IP to Duke-NUS.

Who is an inventor? What is the difference between inventor in a patent application (or of the new technology) and author on a research paper?

Any person who has conceived the invention or has devised the inventive idea and has reduced the idea to practice can be considered as an inventor on a patent application. Performing routine experiments which exist in the art and statistical analysis of data do not qualify one to earn the inventor status since neither of these has to do with conceiving the invention. It is the ideation that is critical to determining the inventor(s). This differentiates inventorship in a patent from authorship in a publication since in publications, it is normal that even contributions such as statistical data analysis, performing experiments upon instruction, merely writing the manuscript or completing the final experiment are sufficient to warrant authorship. While author lists on publications are not governed by laws, inventorship is a legal issue and the laws and judicial decisions can vary from country to country. In fact, patents can be invalidated based on erroneous list of inventors. Hence, “courteous granting” of inventorship may have serious consequences.

What happens if I am a Duke-NUS researcher collaborating with Duke University?

Will be answered soon, watch this space.

What happens if there is a co-inventor from another institution?

If it has been legally determined that the patent application would have a co-inventor from another institution, then it is imperative that the co-inventor’s name be added to the inventor list in the application. As a result, the invention is co-owned with the other institution. Existence of co-inventors at another institution also necessitates that an IP agreement be executed between Duke-NUS and the other institution. This agreement outlines certain important aspects of the IP such as who takes the lead in seeking patent protection and how the revenue arising from commercialization is shared by the 2 institutions.

Who pays for the patent expenses?

Patent prosecution costs are paid for by NUS Industry Liaison Office.

What are out-of-pocket expenses?

During a project’s commercialization process, CTeD sometimes pays for incurred expenses related to business development (e.g.: hiring consultants for business analysis and engaging contract research organisations). These expenses are classified as out-of-pocket expenses, which need to be recouped subsequently by CTeD from commercialization revenue, prior to disbursement.

Where can I obtain gap funding?

The following types of gap funding are available for application: NHIC Innovation to Commercialisation Grant, NHIC-AstraZeneca Open Innovation Collaboration Grant, Khoo Grants and A*STAR Industry Alignment Fund.

How do I benefit? Why should I work with CTeD to seek patent protection?

• Patent protection helps drive research to the market, for the benefit of patients
• Patent protection and commercial development is a new and interesting process for scientists to learn about – brings out the entrepreneur in you!
• You will be able to share the monetary benefits with Duke-NUS: 50% of school’s share of commercial revenue is shared among the inventors and contributors
• It looks good on your CV!

How and when does CTeD decide whether to take a new technology/invention through the path of commercial development after receiving the Invention Disclosure Form (IDF)?

Once an IDF is received, CTeD assesses the patentability and market potential of the invention/technology. Subject to favorable results, CTeD will employ patent firms to work with you to draft and file a patent application. CTeD will then collaborate with you in the development and de-risking of the invention to a stage where it is ready to be out-licensed. At this stage, if the inventors are keen to establish a start-up company, CTeD will assist in finding suitable investors interested in commercializing the technology. Alternatively, CTeD will structure and negotiate license agreements with industry partners interested in the Duke-NUS technology.

Where can I download the IDF?

The IDF can be found at the Duke-NUS Researchers page, under the Policies and Forms section.

How do I protect a non-patented invention if I am planning to discuss it with external parties for commercial development?

Before disclosing confidential information to any external party (a non-Duke-NUS staff member), it is mandatory to execute a non-disclosure agreement (a.k.a. confidential disclosure agreement) with the external party. We can help. Come see us.