Newsletter No. 109

CUHK Newsletter No. 109 4th June 1997 3 If you invented a method of teaching kangaroos to farm, a time-warp machine, or the quintessential chair, you never know what lucrative returns your invention could bring, and might need a patent to safeguard your interest Here at CUHK, staff members who have invented, say, a method of compressing data, a new drug, or a super material, can apply for a patent through the Patent Committee to protect their invention. The Patent Committee was formed in 1989 in anticipation of expansion in research and development activities at the University. It replaces the Standing Patent Committee, whose establishment in 1984 was necessitated by the increase in research funding received by the University in the 1980s. Seeking Protection for Your Inventions why is the University involved? Apart from assisting staff to file patent applications, the Patent Committee is responsible for recommending and reviewing guidelines governing inventions by University staff, supervising the administration of these guidelines, and ensuring proper dissemination of the University's patent policy. Unless there is a pre-approved contractual obligation, the inventors are required to apply for patent through the University, and in doing so, assign the rights to the invention to the University. Secretary of the Patent Committee, Research Administration Officer Mrs. Alice Yip, explains that according to the University's Policy on Research, Consultancies and Intellectual Property, all intellectual property arising from any work done by an employee as part of his/her duty is vested in the University, and hence inventors wishing to make patent applications are obliged to do so through the University. After a patent has been successfully obtained, three-quarters of any future income generated by the invention goes to the University, leaving a quarter for the inventor. If the inventor chooses to shoulder part of the application expenses, he/she is automatically entitled to the same percentage of the total income, in addition to 25 per cent of the balance. Taking out a patent protects an invention and also renders it more attractive to commercial investment. In more idealistic terms, a patent gives 'proper value' to an invention. And with increased emphasis on academic accountability, the number of patents gained by a university can be used by the public to gauge how successful it is in 'turning research into knowledge, processes and objects that benefit society, and transferring technology back to society' . The Wheres and Whats Mrs. Yip points out that two factors determine where a patent application is filed: the market for the invention and the established law in the target country. For these reasons, most of the University's patent applications are made to the US Patent Office. If an invention is thought to have a better market in, say, a European country, the application will be filed in that country. An invention can be a process, a machine, or an article of manufacture. It is, in the broadest sense, a creation of the mind. The mind knows no bounds, so what makes certain creations of the mind patentable and others not? According to the US Patent Office, the basic requirements for a patentable invention are 'novelty' — it must be new, 'utility' — it must be useful, and 'non-obviousness'— judged from the viewpoint of someone practising in the same speciality as the inventor. But before a potential invention comes under the stringent scrutiny of the target patent office, it is evaluated by the University's Patent Committee. The latter's criteria for approving or rejecting applications include scientific merit (which is assessed by the Committee's ad hoc review panel), feasibility, innovativeness, commercial viability, and scope of application. There has to be a balance in the emphasis given to the different criteria: a novel way of producing a manual typewriter, for example, may score high on scientific merit but low on commercial viability, and may not therefore be worth pursuing. The Patent Committee is in fact considering enlisting consultancy firms for commercial assessment. Since copyright protection prevails in the arts and humanities, the current Patent Committee (see box below) comprises mainly representatives of the medicine, science and engineering disciplines. The Whens and Hows One word of caution: publishing may put an end to patentability. And in the 'publish or perish' world of academia, to publish or to patent can be a big dilemma for researchers. In the US, there is a 12-month grace period for patentability from the date of publication. In a seminar on patent-related issues recently organized by the Patent Committee, two lawyers were invited to speak on different apects of patents. Mr. Kenneth Allen, senior partner of Townsend and Townsend and Crew LLP, the oldest and largest intellectual property law firm in the western United States, spoke on how and when an invention disclosure should be made; and Dr. Albert W. K. Chan of Cooper & Dunham LLP, an intellectual property law firm in New York City, gave an overview of how the patent system works. Both lawyers have assisted the University in patent applications. Videotapes of the seminar may be borrowed for viewing from the Research Administration Office. Looking After Number One Patent applications are often long and complex, and the Patent Committee needs to involve the inventors along each step of the process as well as in the marketing of the invention thereafter. 'It is very important that the inventors work closely with the University and the lawyers from the very beginning by supplying information meticulously and in good time,' says Mrs. Yip. So be fully prepared for the tedium on the way. The success of an application is as much in the hands of the researchers as in those of the vetting parties. As the 'first- stop' in the patent application process, the Research Administration Office offers information (including what database to search and how to go about a patent application) on its website 一 http://www.cuhk.edu.hk/rao/patinfo.htm. Piera Chen Patent Committee Chairman: Prof. Arthur K. C. Li, Vice-Chancellor Members: Dean of medicine or the dean's representative Dean of science or the dean's representative Dean of engineering or the dean's representative Chair of the Research Committee or the chair's representative Prof. Tony L. Lee, Department of Information Engineering Prof. Wu Chi, Department of Chemistry Dr. Albert Y. Chang, Director of the Hong Kong Institute of Biotechnology (co-opted) Secretary: Research Administration Officer Service to the Community and International Organizations * Prof. Chen Char-nie, professor of psychiatry, has been reappointed by HE the Governor as a member of the Mental Health Review Tribunal for two years from 15th April 1997. * Prof. Helen Chiu Fung-kum, associate professor in the department of psychiatry, has been reappointed by HE the Governor as a member of theMental Health Review Tribunal for two years from 15th April 1997. * Prof. Leslie Lo, dean of education, has been appointed by HE the Governor to the Advisory Committee on Teacher Education and Qualifications for one year from 1st May 1997. * Prof. Wong Hin-wah, associate professor in the department of curriculum and instruction, has been appointed by HE the Governor to the Advisory Committee on Teacher Education and Qualifications for one year from 1st May 1997. * Prof. Chan Wing-wah, professor in the department of music, has been appointed by the Secretary for Home Affairs as chairman of the Hong Kong Jockey Club Music and Dance Fund for two years from 1st April 1997. * Prof. Paul But Pui-hay, director of the Chinese Medicinal Material Research Centre, has been appointed by the Secretary for Health and Welfare as a member of the Preparatory Committee on Chinese Medicine for two years from 1st April 1997. * Dr. Yeung Hin-wing, reader in the department of biochemistry, has been appointed by the Secretary for Health and Welfare as a member of the Preparatory Committee on Chinese Medicine for two years from 1st April 1997. * Prof. Thomas Y. K. Chan, associate professor in the department of clinical pharmacology, has been reappointed by the Secretary for Health andWelfare as a member of the Sub-committee on Chinese Medicine of the Preparatory Committee on Chinese Medicine, for two years from 1st April 1997. * Mrs. Clara Lee, director of student affairs, has been reappointed by the Secretary for Education and Manpower to the Joint Committee on Student Finance for one year from 1st May 1997. * Prof. Tsui Hung-tat, associate professor in the department of electronic engineering, has been appointed by the Secretary for Economic Services to be a member of the Appeal Board Panel established under the Electricity Ordinance for three years from 1st May 1997. * Prof. Richard Ho Man-wui, Registrar, has been reappointed as a member of the panel of adjudicators of the Obscene Articles Tribunal for three years from 16th June 1997. * Prof. Arthur K. C. Li, vice-chancellor of the University, has been reappointed as an honorary adviser to the Ombudsman, Mr. Andrew So, from 1st July 1997. * Dr. Anthony James, director of the Animal House, has been appointed a member of the Animal Welfare Advisory Group of the Economic Services Branch, Government Secretariat, for two years from 1st May 1997. * Prof. Simon S. M. Ho, professor in the School of Accountancy, was elected inaugural president of the Hong Kong Academic Accounting Association on 14th April 1997 for a one-year term. * Prof. Julian Critchley, professor of clinical pharmacology, has been appointed as a member of the executive editorial board of the British Journal of Clinical Pharmacology f r om January 1997. * Prof. Wong Yuk, associate professor in the department of philosophy, has been appointed by the Research Centre of Chinese Thinkers at Nanjing University as a specially invited critic for the Series of Chinese Thinkers in January 1997. * Prof. C. Metreweli, professor of diagnostic radiology and organ imaging, has been awarded the British Journal of Radiology Barclay Medal for 1997 in recognition of his contribution to the journal. * Prof. Henry Wong Nai-ching, professor of chemistry, has been made Honorary Professor by the Shanghai Institute of Organic Chemistry, the Chinese Academy of Sciences, from 2nd April 1997. (Information in this section is provided by the Information and Public Relations Office. Contributions should be sent direct to that Office for registration and verification before publication.)