An Introduction to Intellectual PropertyDavid Dickson, IP & Licensing ManagerOffice for Commercialization and Corporate Development

What is Intellectual Property (IP) and why does it exist?

• “Creations of the mind”

• Confers actual property rights (i.e., exclusivity and transferability)

• Incentivize innovation

• Bring inventions into the public record

Types of IP

1. Patents

2. Copyright

3. Trademark

4. Trade Secret

IP rights are in our Constitution!

• Article 1, Section 8:

• “The Congress shall have the power… 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”

Who owns the IP?

• The creator, author, or inventor • The person(s) who actually developed the IP

• The assignee• Entity which has ownership of rights.

• Example: OSU is the assignee of inventions developed by its employees within the scope of their job duties.

Understand your rights. OSU IP policy for students:http://oregonstate.edu/research/occd/sites/default/files/IPGuidelinesforStudents.pdf

Keep detailed notes!• What you did• When you did it• Very detailed• Sign and date every page

Non-confidential summaries

Formal IP• Copyright• Trademark• Patent• Trade Secret

Agreements

• Confidentiality (or Non-Disclosure)

• Memorandum of Understanding

• Material Transfer

• License

How do I protect my ideas?

Trademarks

• Commercial marks Brand recognition

Trade Secrets

• Just that, it’s secret!

• Coke formula• Mrs. Fields Chocolate Chip Cookies• Kentucky Fried Chicken• NYT Best-Seller list• WD-40• Krispy Kreme Doughnut recipe• Big Mac Special Sauce• Thomas’ English Muffins• Google search algorithm

• Protection for the author/owner of “original works of authorship”

• Creator owns that “expression”

• Literary - books, periodicals, software• Musical – including accompanying

words• Dramatic – plays, musicals• Pictorial, graphic, sculptural, Photo’s• Motions pictures, audiovisual• Sound recordings• Architectural designs

• No Protection for:• Ideas• Facts• Lists, i.e., Recipes• Public Domain Materials

Copyright Basics

Copyright requirements

• Work must be Original: Independently created by author

• Fixed in a Tangible Medium: So the work can be “perceived, reproduced or otherwise communicated.”

• Minimal level of creative expression

• Protection is AUTOMATIC, but… registration needed before filing for infringement

© = copyrighted ® = registered copyright

Rights under a Copyright

• In general, copyright gives the copyright owner the exclusive right to do, and authorize others to:

• Reproduction (copy)

• Derivative Works

• Distribution

• Public Performance and Display

• Digital Audio Transmissions of Sound Recordings

• Limited Moral Rights (Visual Artists Rights Act of 1990, 17 USC §106A)

• United State Copyright Office, part of the Library of Congress• http://www.copyright.gov/

OPEN SOURCE: Special considerations

• Publicly available source code, which is copyrighted• Linux, Apache, Drupal, Mozilla, etc.

• Intent: Enable collaborative development

• Licensee (you) is allowed to copy, modify, and redistribute w/o royalties or fees, provided you abide by terms in license

Open Source licenses

© The Regents of the University of MinnesotaAuthor: Chris Ghere

Patent Basics

• Protects a “process, machine, manufacture, or composition of matter

• Government-granted monopoly in exchange for full disclosure to the public record

• Incentivizes innovation

What is patentable?

• Patentable:• New ways to make semiconductor nanoparticles (process)• New bipedal robot for emergency response (machine)• New engineered bacterium that produces butanol (manufacture)• New solar absorber material (composition of matter)

• Subject must be: Novel, Useful, and Non-Obvious

• NOT patentable• Scientific principles or fundamental phenomena• Mathematical algorithms or equations• Naturally occurring material• Abstract ideas

• Utility Patent (most common)

• Design Patent

• Plant Patent

• Other forms of patent filings:

• Provisional patent application

• Patent Cooperation Treaty (PCT) application

Types of Patents

More Information: Visit the USPTO websitehttp://www.uspto.gov/

• You can patent an idea

• Patents are cheap

• Patents stop infringers

• Patents give you freedom to practice your invention

• Patents are secret

• Patents are quick

• Employers automatically own patent rights of employees

• Patent law is stable

• A US patent gives international rights

Common patent misconceptions

• Assignment:

• Transfer of ownership rights

• Includes declaration of originality by inventors

• Inventorship does NOT change

• Gives Assignee right to manage asset

• LEGALLY BINDING!

• License

• Grants rights to practice IP for commercial activity

• May include royalties (~1/3 of which go back to OSU inventors)

• Exemptions for academic activity

• LEGALLY BINDING!

Assignments and Licenses

Confidentiality, or Non-Disclosure Agreements

• Agreement to share confidential information (any form of IP) for a variety of reasons

• Usually includes: • Requirement of “due care” • Fair recourse for breach• Reasonable duration • Clear exemptions and termination• A few other common legal clauses

• LEGALLY BINDING!

• Example language at NOLO.com

How many of you have licensed IP rights?

“For content that is covered by intellectual property rights, like photos and videos (IP content), you specifically give us the following permission, subject to your privacy and application settings: you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (IP License). This IP License ends when you delete your IP content or your account unless your content has been shared with others, and they have not deleted it.”

Thanks!!!

IP Questions? Please contact David Dicksondavid.dickson@oregonstate.edu(541) 737 3450

Other resources:• Austin Lab: http

://business.oregonstate.edu/programs/aep/weatherford-garage• Advantage Accelerator: http

://advantage.oregonstate.edu/advantage-accelerator