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(BES04) Activity - Finals

This document summarizes the recommendations for 4 projects based on intellectual property due diligence investigations: 1. For a dengue diagnostic kit, further negotiation is recommended between the university, researcher, and funding company. More information on clinical trials is needed and patents reviewed to avoid overlap. 2. For an LED reading light, the prototype's novelty was confirmed but performance needs validation. Filing new patents for modifications is recommended. 3. For a guided missile, thorough legal and technical review is advised given the university-government collaboration and spin-off plans. 4. For a digital camera, the invention seems novel but major camera companies hold extensive relevant patents so risks require consideration.

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Jushua Ramos
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0% found this document useful (0 votes)
68 views6 pages

(BES04) Activity - Finals

This document summarizes the recommendations for 4 projects based on intellectual property due diligence investigations: 1. For a dengue diagnostic kit, further negotiation is recommended between the university, researcher, and funding company. More information on clinical trials is needed and patents reviewed to avoid overlap. 2. For an LED reading light, the prototype's novelty was confirmed but performance needs validation. Filing new patents for modifications is recommended. 3. For a guided missile, thorough legal and technical review is advised given the university-government collaboration and spin-off plans. 4. For a digital camera, the invention seems novel but major camera companies hold extensive relevant patents so risks require consideration.

Uploaded by

Jushua Ramos
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
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Download as PDF, TXT or read online on Scribd
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Southern Luzon State University

College of Engineering
ECE Department
BES04 – Technopreneurship 101

IP Due Diligence
Activity – Finals

Bermudez, Brian Aaron R.


Cruz, Carloui R.
Ramos, Jushua D.

Date of Performance: December 13, 2021

Date of Submission: December 17, 2021

Rating

Engr. Zoren P. Mabunga


Instructor
GENERAL INSTRUCTION
You have been instructed to investigate the following projects. Determine what level of
investigation can be done given the information. Make a list of criteria and give a recommendation
(acquisition, avoidance of restrictions, investment) based on the result of your investigation.

A. Dengue Diagnostic
A researcher from the University’s Center for Tropical Diseases sends an Invention
Disclosure covering a diagnostic kit for Dengue fever. The extensive clinical trials show the
diagnostic provides detection in a third of the time of standard commercial tests. The results of the
trial are yet to be published. The center is partially funded by Novartis. The researcher has filed
several patent applications through the University and has a track record of being cooperative. He
has, however, expressed no desire to be involved in the commercialization of the invention.

Level of Investigation Strategic Due Diligence


 Based on the given information, the diagnostic kit for dengue
fever created by the university already provided a substantial
amount of IP which is provided by extensive clinical trials
results which are soon to be published and applying several
patent applications.
 The project is also partially funded by Novartis. Since the
diagnostic kit is funded by a company and the university is
applying for invention disclosure while the researcher does not
want to be involved in the commercialization.
 Results has yet to be published so there is a time or substantive
review for the clinical trials to show the results of the diagnostic.
 There are analyzed claims of to the company’s
products/services.
List of Criteria  General background
 Financial consideration
 Preliminaries
 Organization
 Ownership
 Disclosure/IP protection procedures patents
Recommendation  In this project, it is recommended that the researcher, university,
and the company must reconsider another negotiation for the
alignment of goals between the deal.
 Further information about the clinical trial is needed.
 Review of the patents applications to ensure that it does not have
any overlapping patents similar.

B. LED Reading Right


A retired professor from the Department of Electronics Engineering shows you a prototype
of a reading light using LED’s. This prototype is arranged to give maximum available life to the
LED across a wide temperature range, currently -2◦C to 45◦C. The professor believes a production
model could increase this to -25◦C to 75◦C. During his tenure, the professor was a prolific inventor
with substantial industry contacts. He has now been retired 15 years. He is happy for the University
to take a sizable portion of the rights in exchange for assistance in commercializing the invention.
A patentability search indicates the invention is novel, and the field has very few relevant
documents.

Level of Investigation Basic Due Diligence


 The basic investigation has been done and the patentability
search indicates that the prototype is novel alongside the
professor who did multiple inventions in the past which
indicates that the prototype is credible. Now all that needs to be
done is to prove that the production model could increase the
temperature range to – 25◦C to 75◦C.
 There is a screen preliminary information on the side of the
retired professor.
List of Criteria  General background
 Operation
 Preliminaries
 Organization
 Other agreements
 Claims, threats, and suits
Recommendation  Review the contents of the patents applications and issued
patents.
 Learn more about the company’s product and services relevant
to this transaction to know more about the professor’s recent
inventions related to his offered prototype for identifying if is
capable of improvement.
 In this project, the invention is novel but the performance shown
is different. It is recommended that the researcher and the
university must file new patent applications for the new IP.
Since the original IP needs to be modified and need to issue
another patent.

C. Guided Missile
A team from a collaborative venture between the University and the government has
developed a guided missile with a ram jet drive. The delivery system is considerably less
expensive, for the same accuracy and range, than known technologies. The professor heading the
team has expressed a desire for the team to spin off a company, and take all the rights from the
collaboration. He has already been in touch with the European Space Agency to determine
preliminary interest, though the invention is yet to be disclosed.

Level of Investigation Exhaustive Due Diligence


 Based on the given information, the guided-missile project is a
collaborative project between the university and the
government.
 The preliminary investigation for the technology involved uses
much cheaper manufacturing costs with the same overall
performance and can be compared to other overlapping projects.
 The team contacted the European Space Agency to determine
the preliminary interest and review their plan to establish a spin-
off company and take all the rights from the collaboration.
List of Criteria  General background
 Management and control
 Industry and competitors
 Operation
 Preliminaries
 Organization
 Disclosure/IP protection procedures patents
 Claims, threats, and suits
Recommendation  In the project, it is recommended that the team prepare claims,
invention disclosure, and other legal considerations to ensure
the IP asset and patent used for the project compared to other
known technology and patent is validated.
 It is also recommended to have more analytical comparisons for
the design and technology used from manufacturing and uses to
reinforce the IP asset. Since the project started as a collaboration
between the university and the government and wanted to
establish a spin-off company, the team and the government must
negotiate and agree to a certain deal in which both parties
benefit.

D. Camera
A senior lecturer from the Faculty of Engineering has developed an electronic still camera
employing digital processing of image signals corresponding to a still image and storage of the
processed image signals in a removable static random access memory card. There is currently
nothing like it in the market. A patentability search indicates the invention is novel. However, three
of the largest camera makers in the world have extensive patent portfolios in this area. The lecturer
is very excited by the invention and wishes to take the idea as far as possible.

Level of Investigation Basic Due Diligence


 Based on the given information, the developed electronic
camera based on the patentability search indicates that the
invention is novel and there is nothing alike in the current
market. In the current market, the 3 largest camera makers have
an extensive patent portfolio in the field.
 Since there is nothing like it in the market, it indicates that it is
indeed a novel invention so the preliminary investigation of the
prototype has already been done. It is also mentioned that three
camera makers are in the area in terms of the patent portfolios
so all it needs is to ensure that no other company must have any
valid claim for the patent other than them.
List of Criteria  General background
 Industry and competitors
 Operation
 Legal
 Preliminaries
 Organization
 Ownership
 Disclosure/IP protection procedures patents
 Claims, threats, and suits
Recommendation  For this project, it is recommended to ensure the IP asset such
as applying for the patent, ownership, and disclosure.
 Ensure that the company has taken the necessary steps to
document the ownership and that no other party has a valid
claim to the ownership.

E. Photovoltaic Concentrator
A post-graduate student from the Faculty of Music approaches you with a solar electric
power system that uses multiple reflectors to concentrate sunlight onto a panel of photovoltaic
(PV) cells. For a standard peak power output of 175W, his concentrator provides a 5-fold increase.
He estimates his device can be manufactured for a cost of PhP 200,000. He is employed to tutor
undergraduate students, and so is an employee of the University. His friends told him that the
University is experienced in developing technology, hence, his approach. He is seeking a loan to
separately develop the technology and will repay the money at standard bank rates. He would also
like access to laboratory facilities, which he has been using after hours.

Level of Investigation Basic Due Diligence


 Based on the given information, the background of the post-
graduate is not really that great and the manufacturing cost of
the device is expensive and the patent for the device is unknown.
 The approach on financial consideration for developing the
project is from the loan.
List of Criteria  General background
 Operation
 Financial consideration
 Preliminaries
 Competitive position
 Ownership
 Disclosure/IP protection procedures patents
 Claims, threats, and suits
Recommendation  In this project, based on the background, financial status, and
patentability of the given project is unknown. From an investor
perspective, it is recommended not to invest in this project.
 The power system has already been manufactured and an
estimation of its possible price is suggested. The offer of the
student must be reviewed and it must be ensured that his power
system invention is novel.
 Check if the cost they provide is accurate and ensure that he is
capable of repaying the money he loaned.
 Search for unknown prior art that might invalidate the patents.

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