Think Ahead About IP

Eric GiegerichOffice of Intellectual Property

& Industry Research Alliances (IPIRA)

Science, Technology & Engineering Policy Group

UC Berkeley

March 16, 2011

Think Ahead -- Overview

Questions about inventions, commercial interest, and intellectual property ("IP") strategy are often contemplated late in a research project when an exciting new discovery emerges.

“I think we have something here! Now what?”

Think Ahead – Overview 2

In this seminar, we’ll explore a few questions to help guide your research planning.

Some questions can be asked early, even in planning a new research project.

Snags to Avoid

Things We Sometimes See…• Did you publish before protecting IP? Bar to patentability.• Does your discovery rely on encumbered background

technology?• Did that software or data license have strings attached?• Did your free 3rd party software have reach-through

obligations? (Like GPL) • Did those incoming materials have strings attached?• Did you promise the same results to multiple parties?• Did you want to license the invention and collect

royalties?• Do you want to start a company?

Think Ahead…Some Questions

• How do you envision commercializing or disseminating the technology?– Protect IP and license (exclusively, non-exclusively)– Open dissemination, defensive publication

• Who are the researchers are on your project?– Who might your co-inventors / co-creators be?– What is the culture of your college / department / PI?– Any university background IP

• Use it or design around it?

• How is your research funded? – Sponsored research agreement (contract, grant)– Gift

• What implications?– Any third party rights from research agreement, MTA, software license,

incorporating free code with reach through…?– Any confidentiality agreements restricting sharing of certain information?

• What is the commercial landscape?– What industry requirements exist for innovation uptake?– What do VCs require to make an investment?

Problems Now Reframed as Questions…

Think Ahead1. IP Frameworks to Consider

• Articulate your IP strategy early

• Consider a full menu of IP Frameworks– Exclusive IPR– Non-exclusive IPR– Open Source– Public Domain / Defensive Publication

• Manage project toward your IP strategy

Think Ahead2. Research Agreements

• If you seek a company to fund your proposal, IAO negotiates and signs a Research Agreement.

• Common Issues:– Intellectual Property Rights– Materials, Data, Software– Freedom to publish– Confidentiality– Control of research, academic integrity

• UC typically offers a first right to negotiate a license to resulting Inventions and Works

Think Ahead 3. Other agreements…and implications

• Confidentiality Agreements• Material or Data Transfer Agreements• Software Licenses (incoming)• Industry Affiliate Programs• Fellowship Agreements• Visiting Industrial Fellow Agreements• Federal or state grants• Subwards

Think Ahead 4. Starting up a company

• If you plan to launch a company using your university invention, make sure…– Manage toward the IP rights Start-up / VC needs– IP rights don’t get encumbered by other agreements

(MTA, software licenses…)• Doesn’t mean don’t use them; just be aware of terms

– Disclose your invention to the university– Talk early with the Office of Technology Licensing– Seek patent / copyright protection before publishing

Think Ahead about IP

Some questions can be asked early, even in planning a new research project.

ContactEric Giegerich

Industry Alliances Office

University of California, Berkeley

510-642-5850

egiegerich@berkeley.edu