Intellectual Property Basics: What Rules Apply to Faculty, Staff, and Student Work Product?

Dave BroomeVice Chancellor and General Counsel

October 15, 2015

Agenda

• What is Intellectual Property?

• Overview of basic types of IP protection

• Why should I care?

What is Intellectual Property (IP)

• Intellectual Property (IP) is a group of legal rights that provides protection over things people create or invent.

• Typical methods of protection:• Trade Secrets• Copyrights• Trademarks• Patents

Why I Should I Care About IP

• University Policy

• Protection from liability

• Deter others from stealing your or the University’s work / ideas.

Methods of Protecting IP

• Contracts

• Copyrights

• Trademarks

• Trade Secrets

• Patents

Copyright

• “Expression”• Art, Writing, Music, Movies, etc…

• Any “work” reduced to a tangible medium of expression

Copyright• Free and Automatic

• Protection is automatic as soon as the work is reduced to a tangible medium of expression

• Registering Copyright

• Aspects of Protection• Scope - Narrow• Term

• Life of authors + 70 years• Corporate (Work for Hire) - 120 years or 95 years from 1st publication,

whichever come first.

• Commercial Benefits• Supports entire industries

• Music• Movies• etc.

Trademark

• Identification of Source• Any word, name, symbol, or device or any combination thereof used in

commerce or which a person has a bona fide intention to use in commerce• Examples:

• Nike® • Coke®• Color Brown (UPS)• Sounds – Windows Start-Up, NBC Chimes, etc.

• Symbols • ® - a Registered Trademark• ™ -brands a product• ℠ -brands a service

Trademark

• Relatively inexpensive to obtain • Protection lasts as long as the mark is used in commerce

• Use it or lose it…

• Commercial Benefits• Powerful barrier to entry• Price support

• Can lose rights if name becomes “generic” or used by unlicensed entity• Must police use

Trade Secret• Information that not known outside of an organization

that provides a competitive advantage

• Examples:• Coca-Cola • KFC• WD-40

• Guarded in a bank vault• Company mixes the formula in only three facilities

to maintain the secret

Trade Secret

• Relatively low cost to gain protection• Must take precautions to maintain secrecy

• Protection lasts as long as the secret remains a secret

• Enforcement…• Enforcement complicated by variation in law from state to

state

Patent

• Protects implementation of ideas• Article of Manufacture • System • Composition of Matter• Process (e.g., process of making or using)

• Types of Patents• Utility • Design • Plant

Patent• Relatively expensive to obtain

• Initial filing • Prosecution

• Limited term of protection• 20 years from filing (generally)

• Commercial Benefits• Exclusivity• Monopoly Pricing• Licensing

Patent

• What is the standard for getting a patent?• New• Useful• Non-obvious

• What do you get if you meet the standard?• Right to exclude others from the invention for a limited time• Not a right to use the invention

• What do you give up by getting a patent?• Your patent must teach others how to make and use the invention

• What do you risk by not patenting?• Someone else can patent it and exclude you from using it.

Patent• Damages for Infringement

• Injunction

• Lost Profits

• Reasonable Royalty

• Cost of Litigation• Huge

University Policies

• University Policy 301, Patent Policy http://legal.uncc.edu/policies/up-301

• University Policy 315, Copyright Policy http://legal.uncc.edu/policies/up-315

UNC Charlotte Patent Policy• Policy applies to employees and students as a Condition of

Employment/Enrollment

• University owns inventions by faculty, staff and students• Resulting from University Research, or• Involving use of University time, facilities, staff or

materials

• “Own time” inventions• Disclosure required• Office of Technology Transfer• Royalty Revenue Sharing

UNC Charlotte Copyright Policy

• Faculty/EPA Non-Faculty• Traditional or Non-Directed work

• Author-owned, unless Exceptional Use of University Resources

• Shop Right• Some multi-author works= university ownership

• Directed Works= University Ownership

• Sponsored/Externally Contracted works.• If K requires University ownership=University owns• Otherwise, Author-owned; University Shop Right

UNC Charlotte Copyright Policy

• SPA Employees• Work for Hire• University Owned

• Student Works• Student owns• Shop Right

Fair Use• The purpose and character of the use, including whether the use is

a commercial nature or is for nonprofit educational purposes;

• The nature of the copyrighted work;

• The amount and substantiality of the portion used in relation to the copyrighted work as a whole;

• The effect of the use upon the potential market for or value of the copyrighted work.

Works Subject to Both Copyright and Patent Policies

• OTT Decides whether to protect as Patent

• If so, Author assigns copyright to UNC Charlotte

QUESTIONS?