Coming Attractions•Today- Jan 6

•Intellectual Property •Opportunity Recognition•Preparation for Inventor Discussions

•Monday- Jan 11 Inventor Discussions •Tim Fiez (Gartrell Group)- GEONOTES•Alan Fern (OSU- EECS)- Sports Film Analysis Software•Mike Bailey (OSU- EECS)- Ultra sensitive Accelerometer

•Wednesday- Jan 13 Inventor Discussion & Research•Mas Subramanian (OSU Chem Dept)- Novel Blue Pigment•Research Tool Tutorial- Autzen Room, Valley Library

Graded Assignment due SAT, Jan 16th at 11:59 pm. Patent assessment and commercialization potential ranking. More details to come

2010 Class Schedule- Technology Commercialization BA468

1 2 3 4 5 6 7 8 9 10Mon Wed Mon Wed Wed Mon Wed Mon Wed Mon4-Jan 6-Jan 11-Jan 13-Jan 20-Jan 25-Jan 27-Jan 1-Feb 3-Feb 8-Feb

Class Intro (mentors)IP and Opportunity Assessment

* * Inventor PresentationsSelect Patents & Form Teams

Commercialization OptionsLB,MM CW, TBD Databases and Marketing Surveys

SWOT & Genl ApproachThe Pitch

HP TBD Corp Tech Commercialization

11 12 13 14 15 16 17 18 19Wed Mon Wed Mon Wed Mon Wed Mon Wed

10-Feb 15-Feb 17-Feb 22-Feb 24-Feb 1-Mar 3-Mar 8-Mar 10-Mar

Timeline and MilestonesFinances and VC Expectations

BN Investor PerspectivePrepare Commercialization Plans

PG Entrepreneur PerspectivePresent Commercialization Plans

(meet w JT) ^ ^In class Portland BRTReviews Reviews

Intellectual PropertyIntellectual Property

What is intellectual property?What is intellectual property?US IP protection- US IP protection- Patent application processPatent application processWhat does a patent look like?What does a patent look like?Patents in Oregon- how are we doing?Patents in Oregon- how are we doing?Tacit Knowledge, the Inventor, and Tacit Knowledge, the Inventor, and

implications for Tech Commercializationimplications for Tech CommercializationCDA for this classCDA for this class

Physical vs Intellectual Physical vs Intellectual PropertyProperty

FactorFactor Physical Physical PropertyProperty

Intellectual Intellectual PropertyProperty

Multi-UseMulti-Use Use by one firm Use by one firm precludes precludes simultaneous simultaneous use by anotheruse by another

Use by one firm Use by one firm does not prevent does not prevent use by anotheruse by another

Physical Physical depreciationdepreciation

Depreciates, Depreciates, wears outwears out

Does not wear Does not wear outout

Protection and Protection and enforcement enforcement from from encroachmentencroachment

Generally can Generally can enforce and enforce and protect protect ownershipownership

May be difficult May be difficult or expensive to or expensive to enforce and enforce and protect protect ownershipownership

Categories of IPCategories of IPTrademarkTrademarkCopyrightCopyrightPatentPatentTrade secretsTrade secretsOthers…. Others….

Inventors right to IP Protection: Inventors right to IP Protection: The U. S. Constitution !!The U. S. Constitution !!

Article 1, Section 8:Article 1, Section 8: ““The Congress shall have power…”The Congress shall have power…” ““To promote the progress of science and To promote the progress of science and

useful arts, by securing for limited times to useful arts, by securing for limited times to authors and inventors the exclusive right authors and inventors the exclusive right to their respective writings and to their respective writings and discoveries”discoveries”

Parts of a PatentParts of a Patent

Title/Number/Date of Filing/Date of Issue Title/Number/Date of Filing/Date of Issue AbstractAbstractFiguresFiguresBackgroundBackgroundSummary of InventionSummary of InventionDescription of Preferred EmbodimentDescription of Preferred EmbodimentTHE CLAIMSTHE CLAIMS

Patentable subject matterPatentable subject matter

The The patent claims define what is patenteddefine what is patented

““Anything under the sun Anything under the sun made by man”made by man”

True or false?True or false? You need to be able to build itYou need to be able to build it It needs to It needs to work

““Limited time” is 20 years from first filingLimited time” is 20 years from first filing

Different types of patentsDifferent types of patents

Broad categories of patents:Broad categories of patents:Utility - this is 98% of all patentsUtility - this is 98% of all patentsDesign- for new original, ornamental and Design- for new original, ornamental and

non-obvious designs for articles of non-obvious designs for articles of manufacturemanufacture

Plant patents- e.g. genetically modifiedPlant patents- e.g. genetically modifiedBusiness method patents- “one click” Business method patents- “one click”

buying method is patented by Amazonbuying method is patented by Amazon

Categories of claimsCategories of claimso Method Method (process)(process)

-Common for nanoscale inventions, semiconductor -Common for nanoscale inventions, semiconductor manufacturing, etcmanufacturing, etc

o ApparatusApparatus- Machine, compound, materials- Machine, compound, materials

o ProductProduct made by process made by process- Pharmaceutical drugs, semiconductor devices, etc- Pharmaceutical drugs, semiconductor devices, etc (Lilienfeld, patent #1741745- issued 1928)(Lilienfeld, patent #1741745- issued 1928)

Any patent can mix or match claims from these three Any patent can mix or match claims from these three categoriescategories

Benefit to the PublicBenefit to the Public

Publication- for all to learn and build uponPublication- for all to learn and build uponMust be enablingMust be enablingMust disclose “best mode”Must disclose “best mode”Must file promptly or waive rightsMust file promptly or waive rightsCannot abandon, suppress, or concealCannot abandon, suppress, or conceal

Patent Fast Facts: Valuable Patent Fast Facts: Valuable Prizes to the WinnersPrizes to the Winners

o Average Number of US Patents Issued per day (within a factor of 2) Average Number of US Patents Issued per day (within a factor of 2) About 500!!!About 500!!!

o Typical cost for preparing and filing a patent (within the range specified)Typical cost for preparing and filing a patent (within the range specified)o $10,000-$50,000$10,000-$50,000

o Average cost to defend a patent in courtAverage cost to defend a patent in court $2,600,000 (as of 2006)$2,600,000 (as of 2006)

o Corvallis National Rank in “Patents per capita” (within 2 places)Corvallis National Rank in “Patents per capita” (within 2 places) 44thth (Source- USA Today, 2002) (Source- USA Today, 2002)

Patent Fast Facts: Valuable Patent Fast Facts: Valuable Prizes to the WinnersPrizes to the Winners

o Date and invention of first US patent (within 20 years) Date and invention of first US patent (within 20 years)

July 31, 1790- “July 31, 1790- “Making Pot ash and Pearl Ash by a New Making Pot ash and Pearl Ash by a New Apparatus and Process”, Sam Hopkins, inventorApparatus and Process”, Sam Hopkins, inventor

o Number of US patents issued as of today?Number of US patents issued as of today? (within 100,000) (within 100,000)

7,644,4477,644,447

o Average length of time from application to granting of patent Average length of time from application to granting of patent (within 12 months)(within 12 months)

28 months, but biotech patents average 45 months28 months, but biotech patents average 45 months

Benefit to the PublicBenefit to the Public

Right to exclude for a limited timeRight to exclude for a limited time20 years from first filing date20 years from first filing dateCannot be extendedCannot be extended

A monopoly deprives the public of A monopoly deprives the public of something they had a right to dosomething they had a right to do

A patent contributes something new that A patent contributes something new that no one had beforeno one had before

Fist to file vs first to inventFist to file vs first to invent

““New, useful, and non-New, useful, and non-obvious”obvious”

““Novelty” means new; not done before Novelty” means new; not done before anywhere (publicly accessible)anywhere (publicly accessible)

““Prior art” is publicly accessible by Prior art” is publicly accessible by definitiondefinition

““Publication” need not be printed on Publication” need not be printed on paper…can be electronic, any languagepaper…can be electronic, any language

““Useful” means….?Useful” means….? ““Non-obvious”Non-obvious”

From Invention to Protection From Invention to Protection (Before the USPTO)(Before the USPTO)

The idea!

Document, date and witness it..

File an invention disclosure

Review by IP

committee

To file or not to file???

From Invention to Protection From Invention to Protection (Filing with the USPTO)(Filing with the USPTO)

Provisional Application

(optional)

Full Application.

USPTO Office actions, rejections, etc

Patent is awarded!!

If patent is awarded, 20 year clock starts from date of first filing

OR

Oregon PatentsOregon Patents

Oregon Patents by Assignee and AreaOregon Patents by Assignee and Area

Patent StrategyPatent Strategy

IP Strategy is an essential function in a IP Strategy is an essential function in a high tech businesshigh tech businessTo file or not to file…To file or not to file…Timing of patent filingTiming of patent filingPortfolio management- “horsetrading”Portfolio management- “horsetrading”Cross licensing with competitorsCross licensing with competitors The IP landscape and “patent trolls”The IP landscape and “patent trolls”

Trade SecretsTrade Secrets Another alternative to filing a patent is to maintain an Another alternative to filing a patent is to maintain an

invention as a “trade secret”, intentionally kept from the invention as a “trade secret”, intentionally kept from the publicpublic

The Coca Cola recipe has been a trade secret for more The Coca Cola recipe has been a trade secret for more than 100 years- supposedly known only by two than 100 years- supposedly known only by two employeesemployees

Under what conditions would a company want to Under what conditions would a company want to maintain IP as a trade secret?maintain IP as a trade secret?

What are the risks in doing so?What are the risks in doing so?

The Reality- “Tacit Knowledge“The Reality- “Tacit Knowledge“

For any technical idea, all the information For any technical idea, all the information relevant to an invention is rarely codified.relevant to an invention is rarely codified.

Even to one “skilled in the art”, an invention can Even to one “skilled in the art”, an invention can often not be reconstructed due to background often not be reconstructed due to background information and knowledge known but not information and knowledge known but not documented by the inventordocumented by the inventor

This background knowledge is referred to as This background knowledge is referred to as “tacit knowledge” and is one of the greatest “tacit knowledge” and is one of the greatest challenges to technology transferchallenges to technology transfer

Remember this!!Remember this!!

The amount of tacit knowledge in an The amount of tacit knowledge in an invention is an important factor in deciding invention is an important factor in deciding whether to form a spin off company or whether to form a spin off company or license it to an established firmlicense it to an established firm

Why?Why?

Small Group ActivitySmall Group ActivityYou are on the IP review committee of a small company. Assuming You are on the IP review committee of a small company. Assuming

there was no prior art, what would you do with the following there was no prior art, what would you do with the following submitted IP?submitted IP?

• A replacement material which can be used to reduce your A replacement material which can be used to reduce your competitors product manufacturing by 50%competitors product manufacturing by 50%

• A new packaging method which preserves product quality at a lower A new packaging method which preserves product quality at a lower costcost

• A new way of manufacturing a drug which reduces the A new way of manufacturing a drug which reduces the manufacturing time by 40% with no impact on product form or manufacturing time by 40% with no impact on product form or effectivenesseffectiveness

• A method of embossing your company logo on the product that A method of embossing your company logo on the product that looks holographiclooks holographic

• A new computer algorithm which works well for on-line real estate A new computer algorithm which works well for on-line real estate purchasespurchases

Opportunity RecognitionOpportunity Recognition

First of all- Should you do it now or wait?First of all- Should you do it now or wait?

Entrepreneur Company founded Age at time of start Year of start

Bezos, Jeff Amazon.com 31 1995

Cook, Scott Intuit 31 1977

Dell, Michael Dell 19 1984

Dubinsky, Donna Palm Computing 37 1992

Gates, William Microsoft 20 1976

Hewlett, William HP 27 1939

Hurley, Chad YouTube 29 2005

What creates opportunities?What creates opportunities? Destabilizing influences- “market discontinuities” Destabilizing influences- “market discontinuities”

Changes in technology, style, or economic incentivesChanges in technology, style, or economic incentives

Rapid Growth of the Technology SectorRapid Growth of the Technology Sector Increasing pace of technology developmentIncreasing pace of technology development Increasing pace of information creation. Time for doubling of total world Increasing pace of information creation. Time for doubling of total world

informationinformation 1750-1900 150 years1750-1900 150 years 1967-19731967-1973 6 years 6 years NowNow 1.5 years 1.5 years

Social or Cultural ChangesSocial or Cultural Changes Aging population, personal security, …..Aging population, personal security, …..

Some Technology Trends That Will Some Technology Trends That Will Create OpportunitiesCreate Opportunities

Life Sciences-Life Sciences- genetic engineering, genomics, biometrics genetic engineering, genomics, biometrics Information technology-Information technology- internet, wireless devices, interconnectivity internet, wireless devices, interconnectivity NanotechnologyNanotechnology- Devices 100nm or less for drug delivery, - Devices 100nm or less for drug delivery,

biosensors, and other applicationsbiosensors, and other applications Energy Energy - fuel cells, energy efficient appliances, new heating & - fuel cells, energy efficient appliances, new heating &

cooling methods, energy transmission, “micro-energy” generationcooling methods, energy transmission, “micro-energy” generation Green Technology Green Technology - renewable fuel sources, recycle and reuse, - renewable fuel sources, recycle and reuse,

bioremediation, recognition of the “carbon footprint” bioremediation, recognition of the “carbon footprint” RoboticsRobotics- teams of small coordinated robots for monitoring or safety - teams of small coordinated robots for monitoring or safety

functionsfunctions Security devices-Security devices- personal identification, computer security, “smart” personal identification, computer security, “smart”

cardscards Human/Computer Interface-Human/Computer Interface- speech recognition, improved man- speech recognition, improved man-

machine information transfer and sharingmachine information transfer and sharing EntertainmentEntertainment- available anywhere, anytime, can be personalized - available anywhere, anytime, can be personalized

Some Megatrends That Will Create Some Megatrends That Will Create OpportunitiesOpportunities

Aging of the baby boom generationAging of the baby boom generationIncreasing diversity of the people of the United Increasing diversity of the people of the United

StatesStatesRising middle class of developing nationsRising middle class of developing nationsPervasive influence of media- television, DVD’s Pervasive influence of media- television, DVD’s

internetinternetDecreased “information asymmetry” due to the Decreased “information asymmetry” due to the

internetinternetTwo working parent familiesTwo working parent familiesOthers?Others?

Characteristics of an Attractive OpportunityCharacteristics of an Attractive Opportunity

Timely- a current need or problem

Solvable- can be addressed in the near future with

accessible resources

Important- the customer deems

their problem worthy of being solved

Profitable- the customer will pay for the

solution and allow a profit

Context- a favorable

regulatory, competitor

and industry situation

Small Group ExerciseSmall Group Exercise(Consider the 5 factors presented today)(Consider the 5 factors presented today)

Assess the likely success of a selected patent using the Assess the likely success of a selected patent using the characteristics of attractive opportunities or other factors. characteristics of attractive opportunities or other factors. (10’) (10’)

Yes, No or maybe Yes, No or maybe ????????

Changes you might suggest to make it more successfulChanges you might suggest to make it more successful

Pick a spokesperson, explain your product and Pick a spokesperson, explain your product and reasoning (3-5’ each)reasoning (3-5’ each)