Weimin Kaufman, Ph.D., M.B.A.

August 8, 2016

Objectives

• Introduction to Intellectual Property • Introduce UR Ventures

What is Intellectual Property? -creations of the mind

• Patents

• Copyright

• Trade Secrets

• Trademarks

What is Patentable Invention?

• Processes

• Machines

• Compositions of Matter

• Any new or useful improvement to the above

Patent Requirements • Novelty : Is it new? • Useful : Does it provide some identifiable

benefit and is capable of use? • Non-Obviousness : Would the improvement

be obvious to one of ordinary skill in the art?

A Granted Patent • The patent holder is granted

the right to prevent others from making, using, selling, or offering to sell the claimed invention.

• The patent holder is not granted the right to practice the invention.

• Patents are territorial, only enforceable in the country of issuance.

Why to Apply for Patents

• Monopoly • Patenting makes the technology more

marketable • Patents are marketed for license to companies

for commercial use • Part of the scheme of Bayh Dole/federal law

and policy

Copyright - Coverage Protects original works of authorship • Photos, software, charts, written prose • Not ideas, or facts; only their expression • Does not cover works in the public domain and

government works • Exists automatically when work is fixed in a tangible medium

– Registration unnecessary, although useful

• Gives exclusive rights to copyright owner (reproduction, display, performance, eg.)

• Rights last for a limited time – but a long one Currently - life of author plus 70 years

• Copyright duration of older works is complicated; most of what you are likely to use is probably still protected

Copyright - Rights

Trade Secret • A trade secret’s protection by virtue of secrecy

– Business and technical information NOT publically known.

– Value is derived from confidential nature

• May provide a competitive advantage • No finite term for trade secret • No associated cost

Trademarks • Trademarks identify the source of

goods or services. • Trademarks have value because of the

association of the goods or services with that mark.

• Trademarks can lose their identification of source when they become “generic”. Examples of former trademarks that are now generic are escalator, aspirin, thermos, etc.

Trademark Value Trademark Value

Apple $145.3B

Microsoft $69.3B

Google $65.6B

Coca-Cola $56B

IBM $49.8B

McDonald’s $39.5B

Samsung $37.9B

Toyota $37.8B

GE $37.5B

Facebook $36.5B

Trademark Protection • Trademarks are protected by registering in trademark

offices world wide • Trademarks are only enforceable in the country

where you own the registration • Protection continues only as long as the trademark is

in use. • Trademark protection has no time limit and

continues as long as the mark is in use.

15

http://www.rochester.edu/ventures/

Some Perspective and a Brief History • 1850 – The University of Rochester was founded

• 1980 – Technology Transfer functions began

• 2001 – A separate Office of Technology Transfer was created

for the Medical Center

• 2013 – Both OTTs were combined and rebranded as UR

Ventures

Why We Exist • University Mission

– Encourage practical development of ideas

– Incentivize company sponsored research

• Bayh-Dole Act (1980) • Motivate and Retain Faculty

– Royalty Sharing – Lab Funding

• Income Generation – Royalties and Licenses – Startup companies

Who We are • Patent Attorneys and Paralegals • Licensing Managers • Director of New Ventures and Technologies • Contract Admin, Finance Admin

What We Do

Patent

Technology

Business Development

- Taking Discoveries from Lab Bench to the Marketplace

What We Do • Licensing Professionals who analyze marketplace, develop

business plans, and understand patent/licensing issues • Attorneys to help with patent application process • Startup formation, assists in seeking venture/angel capital • Campus-based “accelerators,” incubators and proof-of-

concept programs to help advance technology and boost fledgling start-up companies

• Resources for connecting people and/or companies looking for new technology inventions; helping faculty further develop the technology pipeline.

The Working Process • Invention disclosure filed with UR • Meet and discuss • Evaluate patentability and commercial

potential • Patent protection • Market and licensing strategies • Negotiate and sign agreements

Invention and the University • University pays for all

associated costs • University owns the patent • Inventor receives share of

revenue from that invention after deduction of legal expenses

• Legal Expenses (US alone) – Provisional patent: $500-$8,000 – Full patent examination: >$15k – Maintenance Fees: $12k

IP Output

128 132 140 155

171 170

240

205

27 26 31 50

0

50

100

150

200

250

300

2011 2012 2013 2014

Invention DisclosuresPatent ApplicationsUS Patents Granted

Positive Impact

22 21

13

31

0

5

10

15

20

25

30

35

2011 2012 2013 2014

New License/Option Agreements 41.8

39.4

29.4 25.6

0

5

10

15

20

25

30

35

40

45

2011 2012 2013 2014

Revenue in $M

A Collaborative Effort OTT

Researchers

Research Administrators

Faculty

Staff

Department Chairs

ORPA

Patent Counsel

Other Universities And Institutions

Investors and Entrepreneurs

Business and Community

Leaders

University Leadership

URV

Technology Development Fund • The TDF funds projects into the “De-risking” phase of

development not typically funded by research grants • Awards range from $50K - $100K • Typically used for Animal Testing, Prototyping, and other

Proof of Concept studies • Funded 19 projects over past 3 years; 16 are moving forward

with increased funding and interest

Research IP Protection

Develop & De-risk

Technology Licensing

Questions?