technology transfer wyoming research products center tony nevshemal, kelly lynn haigler cornish,...
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Technology Transfer
Wyoming Research Products Center
Tony Nevshemal, Kelly Lynn Haigler Cornish, Davona Douglass, Peter
Timbers
History
• UW and the WBC recognized the need to increase its transfer of Wyoming-generated technology into the marketplace to foster economic development
• The Research Products Center (RPC) was launched in October 1999
• RPC jointly funded by UW and WBC
• RPC serves inventors statewide
RPC – What We Do
Work with Wyoming entrepreneurs and inventors to identify, protect and commercialize intellectual property.
i.e. Facilitate technology transfer
Technology Transfer Process
Research
IntellectualProperty
Protection
License
EvaluationDisclosure
MarketingNegotiation
Invention DocumentationThe Research NotebookA record of ideas, experiments, and dataA bound book with consecutively numbered pages
Entries must be made in ink and in chronological order – rules apply to blank lines, results taped in book, etc.
A complete notebook entry indicates what was done, when, who did it, and who knew about it.
Countersigned and dated by disinterested, competent colleague
Consider notary
What Can An Invention Be?
Process, machine, article of manufacture, or compositions of matters, or improvement thereof.
"Anything Under the Sun that is Made by Man" (U.S. Supreme Court, 1980)
Technology Transfer Process
Research
IntellectualProperty
Protection
License
EvaluationDisclosure
MarketingNegotiation
Considerations Regarding DisclosureDisclosure is OK if done correctly
Concerns – protect patentability
• U.S. – allows one year grace period
• Other countries – require absolute novelty (patent office must be first to know)
Considerations Regarding Disclosure• Proper disclosures demonstrate
that you are protecting the confidentiality of your idea
• Confidentiality agreement
Technology Transfer Process
Research
IntellectualProperty
Protection
License
EvaluationDisclosure
MarketingNegotiation
Evaluation - Is Invention Patentable?Statutory – what type of inventionUtility - is the invention useful;Enabled - is the invention disclosed and
described by the inventor in such a way as to enable others to make and use it.
Novel - is there public prior art (inventions) which preceded the invention in identical form;
Nonobvious - does the invention represent a nontrivial extension of what was known;
Evaluation - Is Invention Patentable?
RPC’s evaluation – biggest concern is novelty/nonobviousness
A question of what is in the prior art• Survey USPTO patent database
• Review Internet
Report results to inventor
The 7-Step Strategy1. Index to the U.S. Patent Classification (USPTO Web)
Begin with this alphabetical subject index to the Manual of Classification. Look for common terms describing the invention and its function, effect, end-product, structure, and use.
2. Manual of ClassificationLocate class and subclass numbers in the Manual.
3. Classification Definitions Read the definitions to establish the scope of class(es) and subclass(es) relevant to the search.
4. Browse Patent Titles and Abstracts Check if you are on the right path; retrieve and browse through titles of patents.
5. Retrieve Subclass Listing Once you have identified the relevant classes and subclasses, obtain a list of all patent numbers and all published applications for every class and subclass to be searched.
6. Official Gazette - Patent Section Go to the Gazette and look for exemplary claim(s) and a representative drawing for all patents on the list(s) to eliminate patents unrelated to the invention.
7. Complete Patent Document Search the complete text and drawing(s) of closely related patents to determine how different they are from the invention. (Years of coverage vary with format).
Professional Search Firm
We Can Help You Review Your Inventions
Mere advisement!“Please keep in mind that the results of
our services serve as a mere advisement and are by no means conclusive on the issue of whether you should pursue protection for your invention or not. Only an attorney can give you a formal patentability opinion. We can provide contact information for patent attorneys, if you desire.”
Technology Transfer Process
Research
IntellectualProperty
Protection
License
EvaluationDisclosure
MarketingNegotiation
Intellectual Property Protection
Patents (utility, design or plant)
The right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States for 20 years.
New and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof.
Fees$3,000
Search$1,500
Prep & File$8,000
Prosecute$4,000
Per country patent cost average:$12,000 - $18,000(more with translation fees)
Intellectual Property Protection
Copyrights
The exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.
“Original works of authorship” Literary works; musical works; dramatic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works.
Intellectual Property Protection
Trademark/Service Mark
Word, symbol, design, or slogan, that identifies and distinguishes the source of the goods or services.
Mark must be used in commerce.
Can last indefinitely
Symbols: TM, SM, or ® indicate ownership of the mark.
Intellectual Property Protection
Technology Transfer Process
Research
IntellectualProperty
Protection
License
EvaluationDisclosure
MarketingNegotiation
Technology Transfer Process
Research
IntellectualProperty
Protection
License
EvaluationDisclosure
MarketingNegotiation
Technology Transfer Process
Research
IntellectualProperty
Protection
License
EvaluationDisclosure
MarketingNegotiation
Technology and RPC - Making A Difference
Inventions and Technologies Received By RPC
4
1418 17
23
39
25
0 03
14
3
52 53
0
10
20
30
40
50
60
FY1999 FY2000 FY2001 FY2002 FY2003 FY2004 FY2005 YTD
Fiscal Year (Jul 1-Jun 30)
UW Wyoming (non-UW)
Wyoming Stats
How can you work with us?
Go to our website www.uwyo.edu/rpc
Information there about:•Recent news/success stories
•Confidentiality Agreement
•Invention Disclosure Form
•How to keep an Inventor’s Notebook
•Descriptions of intellectual property
•And more!
Thank You
Wyoming Research Products CenterDepartment 36721000 E. University Ave.Laramie, WY 82071www.uwyo.edu/rpc
Tony Nevshemal – [email protected]
Kelly Lynn Haigler Cornish, Davona Douglass, and Peter Timbers