intellectual property primer stephen auvil [email protected] assistant vice president for research...
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Intellectual Property Intellectual Property PrimerPrimer
Stephen [email protected]
Assistant Vice President for ResearchUniversity of Maryland, Baltimore County
What is Intellectual Property?
Property:
Something that is owned or possessed.
Merriam-WebsterIntellectual Property:
A product of the intellect that has commercial value.
American Heritage Dictionary
Types of Intellectual Property
Patents Copyrights Trademarks (Service
Marks) Trade Secrets
Others: Mask Works Plant Variety Protection Trade Dress Know-how
Patents
Protects:A new and useful process, machine, manufacture, or composition of matter
Rights:Make, use, sell, have made, import/export
Period of Protection:20 years from filing for autility patent
# 5,205,473
Copyrights
Protects:Original works of authorship fixed in a tangible medium of expression
Rights:Reproduce, prepare derivative works,distribute, perform, and display
Period of Protection:Life of the author + 75 years and up to 120 years from the date of creation for some works
© 2009 University of Maryland
Trademarks
Protects:Word, symbol, design, or combination word and design, slogan, or sound that identifies and distinguishes the goods and services of one party from another
Rights:Use with a product or service
Period of Protection:Life of the product or service
™ ®
Trade Secrets
Protects:Secret ingredients, processes, or methods
Rights:Protection from corporate espionage
Period of Protection:Life of the secret
More on Patents
Purpose of a Patent System:To share ideas
Rights:Right to exclude others, NOT to practice
First to Invent System:First to Invent versus First to FileImportance of documentation(This could change soon!)
More on Patents
Types of Patents:
Utility Design Plant
Plant Variety Protection
More on Patents
Requirements for a Patent:
Enabling Description Useful Novel Non-obvious
More on Patents
Inventorship:
Someone who has made an intellectual contribution to the conception of the invention
The contribution must be covered by one of the claims
More on Patents
Obtaining a Patent:
Provisional Application (1 year)
PCT Application (30 Months) Utility Application
(Examined)
Patents must be filed by the inventor or on the inventor’s behalf by a registered patent attorney or patent agent.
More on Patents
Costs of Filing a Patent:
National Phase
PCT
Utility
Provisional
$110
$10-25K
$25-100K+12 Months 30 MonthsEffective Filing Date
More on Patents
Considerations for Filing a Patent:
Prior Art Density & Dominating Patents Margin of Improvement/Platform
Technology Product vs. Fundamental Invention –
Designing Around Return on Investment Software – Patent vs. Copyright
More on Patents
Parts of a Patent:
Specification Drawings Claims
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First Page: Patent #Issue Date
Title
Inventor
Search Fields
References Abstract
Filing Date
Owner
Application #
More on Patents
Drawings:
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Specification:
Field of the Invention
Background
Summary of the Invention
Brief Description of the Drawings
Detailed Description of the Invention/ Drawings
More on Patents
Claims:
“What is claimed is:”
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Claims:
Determines the scope of the patent
Specific language Elements & Limitations Independent & Dependent
More on Patents
Special Considerations for Software:
Patent versus Copyright Life of the Technology “Work for Hire” issues
More on Patents
Patenting Process:
Patent Search
Draft App.
File App.Examiner Review
Office ActionReview OA
Response & Amendment Amendment
Issued Patent
USPTO
Inventor
More on Patents
Patent Searching:
USPTO Website – www.uspto.gov Google Patents – www.google.com
Text searches Class/Subclass Patents referenced & Patents
referenced By
PAT.T
ime
References
Referenced By
Necessary for (a) background/patentability, (b) IP landscape, and (c) right to use.
More on Copyrights
Levels of Protection:
Do nothing Notice - © 2009 Stephen
Auvil Registration
More on Copyrights
Works for Hire:
The author owns the work unless the author is employed, in which case, the employer owns the work.
Consulting might not constitute an employer-employee relationship. Ensure that ownership is addressed in consulting contracts.
More on Copyrights
Examples of copyright protected works:
Books, journal articles, websitesSongs – lyrics, music, singing voice, etc.Art – Sculpture, oils, recorded performanceComputer iconsVideos
More on Copyrights
Derivative Works & Ownership:
Creator 1
Creator 2
95% Authorship
5% Authorship
Creator A
100% Authorship
All rights to copy & publish the work.
Limited rights to copy & publish the work.
Solely Owned:
Jointly Owned:
What is Technology Transfer?
Commercialization of Intellectual Property Created in Academic Research
Two General Mechanisms:
Licensing Start-up Companies
Technology Transfer Products
Gatorade U of Florida
Lycos Search Engine Carnegie Mellon University
Stannous Fluoride U of Indiana
Vitamin D in Milk U of WisconsinSynthesizer Keyboards
Stanford University
Technology Transfer Products
OnePump
Scientific Products & Systems
BioGMP
SPi Bullet Drill Bit
Black & Decker
CellStation
Fluorometrix G-Mark Test Std.
Aurora Analytics
StepMetrix
Bou-Matic
T2 Process
Invention Disclosure
Invention Assessmen
t
Patent Filing
Decision
IPMarketing
Return to Inventor
License Agreement
NO YES
Invention Disclosure
Invention Disclosure Form:
Enabling Description Inventors Publication Information Sponsor Information Market Information
Note on Publishing
It creates a bar to filing for a patent:
Immediately in Foreign Countries
Starts a One-Year Clock in the U.S.
Invention Assessment
Evaluation Criteria: Patent Budget Constraints Translation of the Invention
into a Product or Service Market Size State of Development –
Time to Product or Service Strength of IP Position &
Enforceability Marginal Utility & Competition
Good Science Good Invention!!!
IP Marketing
OTD Marketing Methods:
Web Pages Direct Mail OTD Contacts Inventor Contacts
Most Licenses Result from Contacts the Inventor has with Industry.
Confidentiality
Talking about your Invention:
Non-Disclosure Agreement Confidentiality Agreement Secrecy Agreement
Confidentiality Non-use Exception Language Five years
License Agreement
Typical Terms:
Up-front Fees or Equity Royalties Annual Payments Milestone Payments Diligence Requirements
Royalty Distribution
General Royalty Distribution Policy:
Inventor’s Share Laboratory Share Department Share University Share
Reality Check
100 Invention Disclosures
50 Patents Filed
20 License Agreements
10 Licensed Product Sales
1 – 2 Generate Significant Revenue
Questions