Intellectual Property (IP) is the basis for research commercialization.

What is Intellectual Property (IP)?› Intrinsic to the work of a university,

intellectual property refers to ideas, processes or inventions that are the products of intellectual endeavor.

› This often intangible form of property can be protected from unauthorized use, and it can be bought, sold or licensed.

Under UPR’s policy (Cert. 132, 2002-03) the University owns IP that is generated through research conducted with the use of its facilities and resources.

All royalties and most fees resulting from the IP are shared between UPR and the individuals involved in its discovery. › 33 1/3 % - inventor(s)› 56 2/3% - inventor’s UPR unit(s)› 10% - UPR special fund› Any remaining amount – will be used to

support additional research and academic programs.

Patents Copyrights Trademarks Trade Secrets

UPR’s Vice President for Research and Technology makes the final decision as to whether to file a patent application or seek another form of protection› With the recommendations made by:

the patent attorney or patent agent the UPR Office of Intellectual Property and

Commercialization, and IP-TTO (in the case of UPRM inventions)

Patents Copyrights Trademarks Trade Secrets

Article 1, Section 8, of the U.S. Constitution states that Congress is empowered 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“

Covered by Federal law (Title 35 of U.S. Code)

It is a grant from the U.S. federal

government:› to the INVENTOR› to EXCLUDE others› from making, using, offering for sale,

selling or importing the invention› into the UNITED STATES

But no protection until applied for and received from government

No rights unless make an application and get it successfully issued

Until patent issued, others can exploit without infringing

They can make, use or sell invention during interim period

In some areas, by time patent issues, invention may be obsolete

Patent does NOT give inventor the right to make, use or sell invention

Only the right to exclude others So, if making invention infringes on

someone else patent or other rights, patent doesn't give inventor the right to avoid the rights of others

Utility Patent – for new and useful process

(method), machine, manufacture,

composition of matter or improvement

Design Patent – for new, original and

ornamental design for an article of

manufacture

Plant Patent – for one who invents or

discovers and asexually reproduces any

distinct and new variety of plant

Useful› Having utilitarian or commercial value

Novel› No one else has done it before› If someone has done it before, even if you

didn't know about it, not patentable

Non-Obvious› To someone having ordinary skill in the art

Mere idea for new invention

› Only concrete embodiment of idea that

meets requirements;

i.e., “reduced to practice”

Formula, or newly discovered law or

principle of nature not patentable

Can't patent if: At time of invention, if invention was

known or used by others in US, or other patented or described in printed publication anywhere

One year prior to application Patented or described in printed publication

anywhere Or, in public use or sale in US Even by inventor himself/herself

If once abandoned invention

Not non-obvious (i.e., is obvious) if

differences to “prior art” would have

been obvious at the time of invention

to “one having ordinary skill in the art

to which said subject matter pertains”

In US, “first to invent” entitled to patent In other countries, “first to file” entitle to

patent

If 2 conflicting claims for “First to Invent”Look to: dates of conception, date or reduction to practice, reasonable diligence of first to conceive, but

not first to reduce to practice

Reduction to Practice Actual and constructive (filing application with

complete disclosure so one with ordinary skill in the art could make it)

Important to create and preserve evidence to prove 3 things1. date of conception2. date of reduction to practice3. diligence between 1 and 2

Crucial to have lab notes/records and disinterested witnesses to bear witness to notes and records

Application filed with US Patent and Trademark Office (USPTO)

http:// www .uspto.gov/

Two ways :› Regular Patent Application

› Provisional Patent Application Protects filing date Need to do regular within one year

Only INVENTORS may apply for patent i.e., conceives or contributed to conception of

invention

Employer is not inventor

Investor is not inventor

Not naming one of the Inventors or adding

someone who didn't invent can invalidate a

patent, even if issued

Can do without patent lawyers or

patent agents (can't litigate before

court)

But requires knowledge of patent law and

PTO practice

Quite stylized document

A utility patent application has four main parts:› The cover page› The drawings› The specification (the written descriptive part)

typically including: Background, Summary, Description of the drawings, and

Detailed description of the embodiments

› The claims

Written in narrative form Should teach the invention to a person

“of ordinary skill in the art” Manner or process of making and using it Best mode contemplated by inventor for

carrying out invention The subsections of the Specification

help satisfy the legal requirements for a patent:› The Field of the Invention describes the

technical field covered by the invention.

 

› The Background explain what the background is of the

invention, and will explain the problem that the invention was designed to overcome.

› The Summary provides a short description of what is

included in the product or method described in the Specification.

› The Description of the Drawings will list each drawing and provide a short

summary of what is shown in each.

 

› Detailed Description of the Preferred Embodiment of the Invention Is an extended narrative that should explain

how the invention works Should use and reference each of the

drawings at one or more points. The “preferred embodiment” is typically the

one that best reflects the new and hopefully patentable properties of the invention

Often the Specification will also describe other embodiments of the invention. These may be ones that were invented during the development process, but were considered to be less favorable than the preferred embodiment.

 

Most important part of patent because define the invention

Set what courts look at when they make infringement determinations

Recite all features of the invention which distinguish it from prior art

Claims need to show novelty and patentability

Need one or more claims pointing our and claiming the subject matter of the invention

If you describe an invention in the specification (the narrative part of the patent application) but do not cover that invention in the claims, the patent does not protect that invention

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• A system claim

• A sensor calibration system comprising:

– an image capture sub-system including a line sensor;

– an image generating sub-system capable of generating two dimensional image data from said line sensor;

– a processing sub-system capable of analyzing the two dimensional image data and generating calibration information; and,

– an output sub-system capable of displaying results of said analysis; wherein the results of said analysis are used to calibrate the line sensor.

Preamble

1st Limitation

2nd Limitation

3rd Limitation

4thLimitation

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Must convince another that you have created the claimed invention

Must enable another to perform or make the claimed invention (with some experimentation)

Must describe the best mode (at the moment of writing) of the claimed invention

Requirements the same for both utility and provisionals

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A provisional patent application has to include› The specification (the written descriptive

part) typically including: Background, Summary, Description of the

drawings, Detailed description of the embodiments

› The drawings

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A provisional patent application expires after 1 year from filing. It must be converted to a utility or it goes abandoned

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1 year to commercialize or get funding Low cost ($100 filing fee for small

entity)

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You create an invention-make a product You offered the invented product for sale There is a one-year period to file a patent You (and your patent attorney) file a quick

provisional patent application The provisional patent application sits

unexamined in the Patent Office Exactly 1 year from the provisional, you

file a full patent (utility) application

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Your patent is granted Five years later, an infringer copies your

patented invention You sue for infringement The infringer looks up your provisional

application The provisional application does not

provide a written description of the claim asserted

The infringer invalidates the patent Infringer goes scot-free, you have no

patent!!

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Moral of the story-› Have some broad claims in mind when you

write the provisional patent application› Include as complete a description as you

can

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Each claim of the patent is compared to a potentially infringing product

A product must have all the limitations of a claim in order to infringe the claim (make claims with few limitations!! Less is more in this case)

Utility: 20 years from date of filing

Design: 4 years from date of issue

Maintenance fee is due: 3 ½ years

7 ½ years

11 ½ years

Lose patent if don't pay maintenance fees

before deadlines (including grace periods)

Yes, and it’s your job and the job of others. The public benefits when new products are

developed. Development usually requires patent

protection to enable companies to take necessary financial risks.

Patent prosecution can always be (and often is) abandoned - but cannot be (re)started when it’s too late and disclosures have been made.

Won't it interfere with sharing of my reagents? (It need not!)

What about the culture of publish or perish? (Can have both patents & publications!)

Provides means getting innovative products to the market for public benefit

Commercial & public recognition of important technologies

Attracts new R&D resources & partnerships for University

Obtains return on investment

Stimulates economic development

TECHNOLOGY TRANSFER

BUSINESS DEVELOPMENT

ATTORNEYS

Discovery Intellectual

Property

Technology

Transfer

Financial

Capital

Corporate

Partnership

R&D

Clinical trials

Regulatory

Manufacturing

Sales &

Marketing

Product Commercialization: From Lab Bench to Customer

University evaluate inventions for patenting University work closely with inventors Work with law firms and management of

patents Identify and negotiate with a commercial

partner for license or collaboration agreements

Managing relationship with commercial partners

Answer - yes and no! Academic & Federal labs share license

and royalty payments with individual inventors.

There are payment caps or restrictions on the level of commercial involvement at most institutions.

Largest rewards (and risks!) and level of involvement come from entrepreneurial activity separate from the lab.

New and emerging companies founded by researcher/entrepreneurs have driven the development of innovative products.

Funding & training scientists (especially at academic research centers) can provide the next wave of innovative small companies in the U.S. or elsewhere.

Business & entrepreneurial training programs can provide the spark for such developments.

Scientific knowledge & research alone will not generate economic prosperity.

New ideas from research are complex & not always understood and commercialized by existing firms.

Often entrepreneur is needed to facilitate development of new ideas from research labs.

Entrepreneurship enables investment to seed new knowledge & a means of harvesting research results.

Commercialization leads to news firms & industries, job creation and economic growth.

“Ivory Tower-only" image of scientists changing.

Now “local heroes of the global village”. Difference between U.S. and many other

countries.Source: Kauffmann Foundation

Not due to geographic origin (many not native U.S.).

More about institution, legal and organizational support for entrepreneurship.

Bayh-Dole Act seen as stimulus for commercializing federally-funded research in U.S.

Grants a proven engine for entrepreneurship.

25% of NCI grant recipients from 1998-2003 started their own company.

SBIR grants foster the kind of research that translates new science findings into product opportunities.

Incubators, technology parks, start-up programs, entrepreneurial training programs, social networks all have assisted the process.

Source: Kauffmann Foundation; Washington Post

Keep accurate lab notebooks - bound lab notebooks are essential - dated and signed.

Disclosure - abstracts, meeting talks, publications online all constitute disclosure, you risk loss of non-U.S. rights!

Work with tech transfer office staff, law firm and commercial partners.

CDAs/MTAs (Confidential Disclosure Agreements / Material Transfer Agreements) - are essential for the transfer of information and reagents - don’t aim to please interested third parties without first contacting your tech transfer office.

Increasing integrated into program goals of the research enterprise.

Can increase public impact of your research.

Institutional staff available to support commercialization of your inventions.

Highest opportunity for control and/or reward come from entrepreneurial activity away from the lab.