intellectual property and commercializing technology identifying, protecting, growing and...

Intellectual Property and

Commercializing TechnologyIdentifying, Protecting, Growing and

Commercializing Intellectual Property in both Academic and Commercial

Environments

Why this Seminar Series?New Realities

• There are not enough academic positions for all the PhD holders in the US.

• Companies are cutting back on R&D.• Funding for all is research is flat or falling. Academic• More self funding by leveraging IPCommercial• Expectations of monetizing IP as part of

employment• Creating own employment with start ups,

etc.

Preparing for the New RealityFall

• Sept. 23 Fundamentals of IP

• Oct. 21 Patents and Patenting Process

• Nov. 11Technology

Commercialization and UR• Dec. 9

How to Find Inventions, Good Inventions and

How to find Prior Art

Spring• Jan. 20

Assessing Market Opportunity of New Tech• Feb. 10

Working with Third Parties• Mar. 17

Risk Assessment for Tech Investments• April 14

Software and Open Source Software

12:00-1:00 Wilson Commons, 2nd Floor Gowen Room Lunch Provided

Fundamentals of Intellectual

PropertyUnderstanding the Classic Areas of Intellectual Property: Copyrights, Trademarks, Trade Secrets/Know

How, and Patents

Why does IP matter?The most important assets, always for

academic institutions, and now also for most commercial enterprises are:

1. Intellectual Property

2. Intellectual Capital

We are living in the Age of IP WhatsApp

• Founded 2009• Employees – 55• 400 million

users• Market Cap

$19B

GM• Founded 1908• Employees –

212K in 157 Countries

• Factories on 5 Continents

• Sold 9M vehicles• Market Cap

$56B

What makes Intellectual Property Different?

1. Intellectual property can be replicated at little to no cost.

2. Intellectual property can be used by many people at the same time.

Copyrights -Protects Creative

ExpressionArt worksFilms

PhotographsSculptureTheaterMusic

WritingsManuals

DocumentationSoftware

Technical drawingsMask works

Copyright protects the expression of an idea, not the idea itself.

Copyrights• A grant of an exclusive right to create copies of

the creative expression of the idea (not the idea itself).

It further includes the exclusive right to modify, create derivative works, distribute, etc.

• The protection is only against unauthorized copying, there is no bar to independent

creation.

Copyright Protection• Copyright protection arises at the moment of

creation.• Copyright protection is expanded by

registration of the work.• Protection varies across the world but is

typically life of the author plus a certain number of years.

Copyright Best Practices• Register copyrights with the US copyright

office. (easy, cheap and powerful!)• Don’t use, copy or transfer copyrighted

materials unless you have the correct rights (don’t forget this applies to software).

• Make sure you are obtaining rights in copyrighted materials from developers.

TrademarksTrademarks identify the source of goods or services.

Trademarks have value because of the association of the goods or services with that mark.

In addition the mark conveys associated information about the goods and services, including quality,

image, etc.

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 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.

Fields of Use

The same mark can be used for different goods

and services

Trademark Best Practices• Conduct a trademark clearance search prior to

selecting a trademark for your commercialization.• Pick marks that are distinctive and fanciful, not

descriptive or generic.• Do not use other party’s trademarks without

obtaining approval from the trademark holder.• Do not allow other parties to use your trademarks

without your approval. (For example the UR name and logo!)

• Register your mark with the USPTO.

Trade Secrets and Know How

• Business and technical information not publicly known.

• Value of trade secrets comes from their confidential nature.

Types of Trade Secrets and Know How

BusinessPricing

Customer Lists

Supplier Lists

Program Names

Launch Dates

Org. Charts

Business Methods

Legal Opinions

TechnicalProcesses

Formulations

Software

Technical Drawings

Research

Process Acronyms

Data

Value of Trades Secrets and Know How

Trade Secrets provide competitive advantages in:

PricingMarketingTechnology

Product performanceProduct deliveryMarket presence

Trade Secret Best Practices• Maintain confidentiality at all times!

Share the minimum necessary.• Have a CDA (NDA) in place when sharing

with a third party.• Mark all confidential materials with

“CONFIDENTIAL”.• Understand your obligations to keep other

party’s materials confidential.• Warning – Signing an NDA can limit your

ability to do research.

PatentsGrant of a patent is a bargained for

exchange.

Public disclosure of new and non-obvious technical

information in exchange for a period of exclusivity.

Patentable Inventions• Articles of Manufacture• Methods of Manufacture• Chemical Compositions

• Computer Programs (not universal)• Methods of Doing Business (not

universal)• Designs

• Other – Life forms, ?, everything under the sun

The Patent GrantThe 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.

Patent

Patents Cont.Patent Term: Period of Exclusivity is typically

20 years from the filing of the Patent Application.

First-to-File: The US is now (mostly) like the rest of the world, the first to file gets the

patent. It is very important to be timely with filing an application.

Public Disclosure: Disclosing an invention publicly before filing destroys all foreign

patent rights and can harm even a US filing.

Patent Requirements• Novelty – Is it new?

• Non-obviousness – Would the improvement be obvious to one of

ordinary skill in the art?

The Value of Patents• Prevents others from using technology.

• Protects technology for your use by barring others from patenting.

• Provides licensable material.

Patent Best Practices• Keep inventions confidential until filed

with the patent office.• Timeliness matters! It is a first to file

world.• Having a patent is not a right to use, just

a right to exclude others.• You must have an agreement in place to

obtain rights in patentable inventions.• Don’t give away your rights, understand

the consequences of agreements (prior to you even inventing).

Attend all the Seminars!Fall

• Sept. 23 Fundamentals of IP

• Oct. 21 Patents and the

Patenting Process• Nov. 11

Technology Commercialization and UR• Dec. 9

How to Find Inventions, Good Inventions and

How to find Prior Art

Spring• Jan. 20

Assessing Market Opportunity of New Tech• Feb. 10

Working with Third Parties• Mar. 17

Risk Assessment for Tech Investments• April 14

Software and Open Source Software

12:00-1:00 Wilson Commons, 2nd Floor Gowen Room Lunch Provided

NEXT!

a