University Intellectual Property:What Students Need to Know

Presented by: Daniel Kory

Director, Technology Transfer November 15, 2007

What do the following things have in common?

• Retractable seat belts• Saccharin • Insulin• Nicotine patch • Pap Smear• CEA immunoassay for colon cancer• FreeStyle® blood glucose monitoring

system

How about:

• Allegra®

• Taxol®

• Google®

• Hepatitis B vaccine• Cisco Systems®

• Gatorade®

University inventors:

• Contribute to saving lives • Enhance the quality of life• Increase economic productivity• Create totally new business

enterprises

Definition

Technology transfer is the process of transferring discoveries or innovations derived at a university into products and services that benefit all mankind

Intellectual Property

• Intangible property including:– Copyrights– Trademarks– Trade Secrets– Patents

What is a Copyright?• A copyright is a form of protection

for authors of “original works of authorship”, which provides the authors the exclusive ability 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.

Copyrights• Certain rights to works granted to an author• Protect against copying, not the subject matter• “Fair use” provides for limited copying based on:

the character, nature, amount and effect of use.• Includes: Literary, musical, dramatic,

choreographic, audiovisual, and sound recordings• Lifespan is life of the author plus 70-years or, if

work for hire, 95 to 120-years

How do you get a copyright?

• Automatically obtained when the work is fixed in a tangible medium

• Show © and date at front of work• Registration with Copyright Office is

optional• Must register prior to filing suit• Registration is $50 on-line Library of

Congress

Who owns the copyright?

• Independent creator• If controlled employee, company owns• University adheres to academic convention• Presumption in favor of independent

creator• Overcome by signed document• Significance of “Work for hire”

What is a Trademark?

• A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods/services. The mark is used to distinguish the goods/services produced by one enterprise from those of other enterprises.

Function of Trademarks

• Designates the source or origin• Protects the public from confusion or

deception• Denotes a particular quality• Cost $1000 to $2500• State and Federal registration• Lifespan: Indefinite as long as in use

What is a Trade Secret?

•A trade secret is a formula, process, device or other information that is kept confidential in order to maintain a competitive advantage over competitors.

Trade Secrets

• Secret formula, pattern, device or information

• Used to provide a competitive advantage• Owner has option to patent or retain as

a secret• Trade secrets can be more valuable that

patents

How to protect a trade secret

• Keep it secret and, if protected, can last indefinitely

• Limit accessibility in a secure location• Require employees and other to sign

Agreements• Label documents

What is a Patent?

• A patent is a right granted by the federal government to exclude others from making, using, offering for sale, selling, or importing the invention into the United States for a term of 20 years from the date of filing.

Basis for Patents

“To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”

U.S. Constitution Article 1, Section 8, Clause 8

Types of Patent Applications• Provisional Patent Application

– Are relatively inexpensive to file and provide an additional year of protection..

– Must “convert” to a Utility, Design, Plant or PCT Application within one year of the filing date.

• Utility Patent Application– Used to claim the functional aspects of the invention.– Process, method, machine, product, or composition of matter

• Design Patent Application– Used to claim the ornamental aspects of the invention.

• Plant Patent Application– Used to protect a distinct and new variety of plant.

• PCT (Patent Cooperation Treaty) Patent Application– Used to protect the invention internationally.

Patentability Requirements

In order to patent an invention the invention must be:– New (Novel), – Useful, and – Non-obvious

• An invention must be not obvious to one skilled in the art of the relevant prior art or trade.

– Fully Disclosed

Disclosure Requirements

• Fully Enabled• Written Description• Best Mode

Duty of candor

Patent Information

• Right granted by the federal government in exchange for full disclosure and enablement

• Limited monopoly to exclude others for 20-years• First-to-invent vs. first-to-file• Cost for UT in U.S.: ( $7,000 to $12,000) (X 2)• Maintenance fees: 3.5, 7.5 & 11.5 years from issue• Time for US issue: Generally 3 to 5-years

What is patentable subject matter?

• Patentable: “Anything under the sun that is made by man”.– Oil eating bacteria– Methods producing a tangible result (business

methods)

• NOT Patentable– Algorithms in themselves– Physical phenomena – Laws of nature

Patenting timeline

Upon a public disclosure:All foreign rights are lost

One year bar data is set to file a patent or all rights are lost in the US

Am I an Inventor?• You are an inventor if you contributed materially to the

conception of at least one of the patent claims

• If your name is listed on the patent as an inventor and you did not contribute to the conception of the invention, the patent could ultimately be invalidated.

– You are not an inventor if:

• you simply follow the instructions of another in performing experiments, or

• you merely suggest how to realize the invention.

Co-Inventors

• Are not the same as co-authors• Each must materially contribute to the

conception of at least one claim• Contributions need not be equal• Co-inventors need not physically work

together• Legal determination

IP Lifetime Summary

• Trademarks: Indefinitely if used properly

• Copyright: Life plus 70-years• Trade Secrets: Indefinitely until

disclosed or invented by another• Patents: 20-years from the first filing

Should I wait to publish my results?

If the article you are publishing contains information about a patentable invention, you should wait to publish the results of your research .

What Constitutes Publication?

An invention is not novel if it is published and forms “part of the state of the art”. In US patent law, the state of the art is defined as “everything made available to even one member of the public anywhere in the world by means of a written or visually displayed oral description, by use, or in any other way”.

Examples of Publications

• Learned Papers, Journals and Magazines• Abstracts• Theses• Job Interviews• The Internet• Poster Displays• Corridor Presentations• Exhibitions• Oral and Casual Disclosures outside the

institution

Laboratory Notebooks

• You need to keep accurate laboratory notebooks if you want to protect your invention.

• Good and reliable laboratory records are beneficial during patent prosecution and are invaluable if the validity of the patent is challenged.

Material Transfer Agreements• Material Transfer Agreements (MTA’s) are agreements

between a supplier and user of a research materials and govern the use of the materials.

• MTAs are used to protect the rights of the provider and

advance academic research.• Signed by the VP for Research• Many MTAs include language that can cause the recipient

to lose the rights to their creations or inventions. Additionally, these agreements can include language that may prevent you from publishing. Accordingly, it is vital that you never enter into an MTA on your own behalf.

Confidentiality Agreements

• Agreements between a supplier and receiver of confidential information that govern the use of that information

• To protect confidential information from unauthorized use

• To retain US and foreign patenting rights

• Signed by the VP for Research

Six Ways to Protect Your IP• Keep asking if your research results are patentable

(i.e. novel, useful, and non-obvious).• Keep accurate and thorough laboratory notebooks.• Contact the Office of Research before you send or

receive research materials from outside The University of Toledo.

• Contact the Office of Research to arrange the execution of a confidential disclosure agreement before you disclose your intellectual property to anyone outside The University of Toledo.

• Report any patentable inventions or results to the Office of Research.

• Contact the Office of Research anytime to discuss patenting or other intellectual property matters.

Thank You

Questions?

Stephen Snider

The University of Toledo

Office of Research Development, MS0134

Toledo, Ohio 43614

Phone: 419-383-6963

Fax: 419-383-3216

Email: stephen.snider@utoledo.edu