Introduction to IP & TLC

Tony von SadovszkySoftware Commercialization Manager

February 6, 2009

How to contact me….

Tony von Sadovszky

Software Commercialization Manager

von-sadovszky.2@osu.edu 614-247-7354 614-292-1315 (main office) http://tlc.osu.edu

Overview

Intellectual Property - IP 101 Laws, policies and other considerations The TLC Office Q &A

What is Intellectual Property?

Know how – what’s in your head…. Trade secrets – just that Trademarks TM, SM, ® – protect the identity/source of goods

& services Patents – protect ideas Copyrights – protect expression of an idea

No different than tangible property - combined with contracts, laws and policies, these are business tools

What is Intellectual Property? Know how – what’s in your head…. Trade secrets – just that Trademarks – protect the identity of goods & services Patents – protect ideas Copyrights – protect expression of an idea

Patents Things that are patentable – “process, machine,

manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent”

Novel, Useful & Non-obvious (NUN) 20 years of exclusivity to use, make, sell, import or export Cost for a US Patent ~$30,000 - and goes up from there There is no “fair use” or “research exemption” for patents

http://www.google.com/patents

Public Disclosure An enabling communication (not under a CDA/NDA)

Journal article Conference presentations, proceedings or abstracts Poster paper Dissertation publication Defense Funded grant application Discussion with a visitor (on or off campus) Offer for sale

Patent or Publish? This is not an either or choice! Requirements to publish do not preclude the exercise of

intellectual property rights

What is Intellectual Property? Know how – what’s in your head…. Trade secrets – just that Trademarks – protect the identity of goods & services Patents – protect ideas Copyrights – protect expression of an idea

What is Covered by Copyright? Any content you create

Your To-Do list at home Your monthly report Your email message Your child’s art work Your notes from this presentation Your software Your website Your home movies Etc.

Once fixed in a tangible form

What is NOT covered by Copyright?

Facts Ideas Lists Names Short phrases Website URLs “Public Domain” materials Etc.

What Rights does the Copyright Law provide?

Right to Reproduce Right to Prepare Derivative Works Right to Distribute Right to Display Publicly Right to Perform Publicly

And the right to transfer or authorize others to exercise any or all of these rights

Don’t I have to register?

No! Copyright protection is automatic One can register with the U.S. Copyright Office

http://www.copyright.gov You also may provide a Copyright notice

© 2009 The Ohio State University

© 2009 The Ohio State University Research Foundation

© 2009 Joe Bago Doughnuts

CopyrightsWork for Hire - I

Work done by an “employee” Work done by an independent contract (as long as)

Both parties sign an agreement, and….

CopyrightsWork for Hire - II

The work is: A contribution to a collective work Part of an audiovisual work A translation A “supplementary work” (e.g. forwards, appendices, etc.) A compilation An instructional text Test and test answer materials An atlas

Open Source Free redistribution Source code Derived works Integrity of the Author’s source code No discrimination against persons or groups No discrimination against fields of endeavor Distribution of license License must not be specific to a product License must not restrict other software License must be technology-neutral

Keep in mind…..it’s a license.

Overview

Intellectual Property - IP 101 Laws, policies and other considerations The TLC Office Data Sharing Q &A

What framework governs IPrelated issues & activities?

International treaties & laws Federal laws State laws Employer policies Contractual obligations Standards of practice Societal norms

Three Key Property Issues

Ownership – legal title Creatorship - Inventorship/Authorship Control

Your responsibility is to understand these in the context of your work, and clearly communicate these

considerations to those with which you work

Rule of Thumb

Data and intellectual property created in ones capacity as an employee of the Institution, or generated using significant Institutional resources, or as a product of sponsored research belongs to the Institution

This typically includes, lab notebooks, software, databases, research materials, etc.

Traditional Scholarly Works

Journal articles Textbooks Lecture notes Sculptures Musical compositions Dance choreography Architectural renderings Etc.

OSU IP Distribution PolicyRevenue up to $75,000

1/2 1/2

Creators and their heirs

1/3

1/4

Revenue Over $75,000

5/12Creators and

their heirs

Office of Research

Creators’ Colleges & Departments

$

General Patent Fund

Author’s Rights???

OSU Libraries’ Copyright Help Center

688-5649

libcopyright@osu.edu

http://library.osu.edu/sites/copyright

Overview

Intellectual Property - IP 101 Laws, policies and other considerations The TLC Office Q &A

TLC Mission at OSU

Foster an entrepreneurial culture Catalyze faculty and staff innovations Assist in maximizing the value of OSU research

developments Accelerate the transition of OSU developments into

products, services and job creation for the public benefit

The nuts & bolts….

IP cultivation, assessment & prosecution Commercial options & licenses Faculty & staff startups (UTCCs) Confidential Disclosure Agreements (CDA/NDAs) Material Transfer Agreements (MTAs) Inter-Institutional Agreements (IIAs) Sponsored Research Agreements (SRAs) Collaboration agreements (e.g. model rights agreements) Proposal review Letters of support Etc.

Best time to call TLC…

…the earlier the better!

Before giving a seminar At the point of submitting a manuscript or abstract Before making a “public disclosure”

Anytime you have an Intellectual Property question

Subsequent steps…

Brief chat Asked to submit an “invention report” Face-to-face meeting Preliminary business assessment (i.e. sniff test) Detailed business assessment Development of commercialization and related IP strategy Do great things.…

Routes to Commercialization

Non-OSU Start-up OSU Start-up(UTCC)

Large Company Small Company

Established Companies New Companies

Licensing

Overview

Intellectual Property - IP 101 Laws, policies and other considerations The TLC Office Data Sharing Q &A

Contact information

Tony von Sadovszky

Software Commercialization Manager

von-sadovszky.2@osu.edu 614-247-7354 614-292-1315 (main office)

http://tlc.osu.edu