Dr. Marie Talnack,Director, Technology Transfer Office and

Industry Clinic

Conception: the formation in the mind of the inventor of a definite idea that is able to be operational.

In European patent law it is considered the ‘inventive step’.

US Patent Law: one of three criteria for a patent is ‘non-obvious’.

Characteristics of patentable innovations: -new and novel -original and nonobvious -useful

Evolutionary vs Revolutionary New Combinations Industrial use or commercial applications USPTO does not require a prototype Provisional patent does not require claims Reduction to practice—teaching the

invention to someone skilled in the art.

Assistance with Intellectual Property Issues Faculty Decisions: Is Research Patentable? Public Disclosure and Publications Identifying industry partners and working

with them (contracts, grants, licensing, etc.) Collaborative Research at other Institutions Licensing and Sponsored Research Other Grant Opportunities

Used to exchange information that one or both of the parties wants to keep confidential for a specific period of time.

Can be one-way or both parties have NDA’s. Used between industry and universities,

between universities, between universities and other non-profit institutions, etc.

Defines the information being exchanged and the parties receiving/disclosing information.

What is Public Disclosure? (e.g. posting on websites, journal publications, thesis, etc.)

First to Invent vs. First to File Changes Use of the provisional patent process Advise TTO of 3 P’s:

◦ Research Progress◦ Publications ◦ Presentations

“Copyright owner”, refers to the owner of that particular right.

Copyrights cover a wide variety of created materials including some of the following: ◦ Art, Music, Plays, Scripts, Recorded Performances◦ Books, Articles, Lesson Plans, Videos, etc.◦ Presentations such as PowerPoint presentations ◦ Websites? What is covered …..

To perform or display a work “publicly” means—

(1) to perform or display it at a place open to the public or at any place

where a substantial number of persons outside of a normal circle of a family

(2) to transmit or otherwise communicate a performance or display of the work.

Appropriate copyright notice is as follows: “Copyright © 2013, California State Polytechnic University, Pomona and Cal Poly Pomona Foundation, Inc. All rights reserved.”

Copyright notice can be added to software as soon as it is written. Formal copyright registration is not necessary. Add notice to source code files, on each copy of the documentation and on your website.

Copyright infringement includes the unauthorized or unlicensed copying of a work subject to copyright.

Fair Use: “Fair Use”of a copyrighted work includes use for purposes such as criticism, comment, news reporting, teaching, scholarship, or research.

A word, name, or symbol (or any combination thereof) that an organization adopts to

identify its goods or services and distinguish them from the goods and services of others.

Examples: logo, tag line, etc.

Registration enhances the rights acquired through the mere use of a mark.

With other Universities With other Research Institutions (public vs.

private, non-profit, etc.) With Government Agencies (CRADAs) With Non-Governmental Agencies (NGOs) With Multi-Party Projects “Same Rule of Thumb as above, but

different terms, forms, etc.”

Sponsored Research is to conduct research that others have an interest in supporting (e.g. industry, agencies, consortiums, etc.)

At the conclusion of the Sponsored Research project, the University retains the right to pursue licensing with the Sponsor (first rights) or others (e.g. different ‘field of use’)

Other research projects can be converted to Sponsored Research or Licensing… role of the TTO to assist with these other opportunities.

A Materials Transfer Agreement (MTA) is a contract used for the transfer of research or other tangible material for evaluation and experimental use, but does not transfer title or ownership of the materials to the user.

The agreements usually focus on biological materials but can be used for transferring samples of chemical compounds, transgenic animals, other types of tangible research materials and even some types of software.

Dr. Marie Talnack, Director, Technology Transfer Office/Industry ClinicResearch Building 1, Room 222 (909) 869-3771/ ext. #3771 gmtalnack@csupomona.edu or go to TTO website: www.csupomona.edu/~research