intellectual property 101 - university of new hampshire

© 2011 University of New Hampshire Office for Research Partnerships and Commercialization

Intellectual Property 101

Maria Emanuel Senior Licensing Manager, ORPC

[email protected]


Welcome (and some housekeeping)

• 2011-2012 Innovation Catalyst Seminar Series kick-off

4th Thursday of every month, except for a few

http://www.unh.edu/research/innovation-catalyst-seminar-series

Networking Hour

• 5-7P, Ballard’s on Main Street

• 21! (Must be at least 21 to attend)




Sponsors!

• Much appreciation to our sponsors for this series


America Invents Act


Agenda

• America Invents Acts

• What is Intellectual Property

Patents

• Trade Secrets

Trademarks

Copyrights

• Resources

• Upcoming seminars


What is Intellectual Property?


Some Definitions • Intellectual Property (IP): Intangible products of creative

effort, e.g. technical information, inventions, software, databases, designs, models, methods, literary works, data. Like tangible real or personal property, IP may be bought, sold, or leased.

• Intellectual Property Rights (IPR): Legal protections for different forms of IP, e.g. patents, copyright, database rights, design rights, trademarks

• Know-How: expertise in knowing how to make things work effectively

• Collectively: Intellectual Assets


Patents


Patents • Often considered a contract between government and

an inventor

• A limited and temporary monopoly granted by the government in return for a full disclosure by the inventor of the details of their invention

• Specifically, rights to exclude others from making, using, selling, offering to sell or importing the patented invention (35 USC 271)

• Criteria for patent protection: Novel Non-obviousness Useful


Inventions • Patentable

New processes Machines Compositions of matter Designs Certain plants New and useful improvements

• Non-Patentable Anything occurring naturally

Processes done entirely by human motor coordination

Inventions only useful for illegal purposes

Printed matter that has no unique shape

Non-operable inventions, such as perpetual motion machines


Examples

Utility Patent

Any new and useful process, machine, manufacture, or composition of matter, and new and useful improvements (35 USC 101)

Plant Patent

Any new and distinct, invented or discovered asexually reproduced plants (35 USC 161)

Design Patent

Any new, original, and ornamental design for an article of manufacture (35 USC 171)


Patent Process • At UNH:

File Invention Disclosure with ORPC http://www.unh.edu/research/sites/unh.edu.research/files/ORPC1.pdf

• Provisional Patent Application (PPA)* Holds priority date for 1 year Not examined by USPTO Useful if public disclosure is to occur soon (retain worldwide rights) Can be filed up to 1 year after public disclosure

• Complete Patent Application Must be filed within 1 year of PPA or public disclosure* If filed after public disclosure, not eligible to pursue protection outside of the

U.S. Reviewed by USPTO Application published 18 months after filing (includes PPA filing date) Cannot be filed if invention has been sold or offered for sale

* For now…America Invents Act passed 9/16/2011

http://www.unh.edu/research/sites/unh.edu.research/files/ORPC1.pdf


Why Patent?

• Right to exclude others from making, using selling, offering for sale, or importing the patented invention for the term of the patent

• But:

No guaranteed right to practice invention

Idea can be patentable but dominated by other patents


Cost of Patents

• $$

Patent Search $3K+

Patentability evaluation $3-5K

Prepare patent application $15K+

Filing fees

Office actions

Maintenance payments


Cost of Patents – Other than $$

• Full disclosure of your invention

• Sidebar about trade secrets:

Formulas, processes, and other information that derive economic value from not being generally known AND the owner has attempted to keep the information secret through various mechanisms (including confidentiality provisions, non-competes, processes, systems)

If you need ≥ 20 years of protection, patents probably aren’t the answer!

UNH does not accept trade secrets


What To Do With a Patent

• Treat as real property (bought, sold, traded, or leased/licensed)

• License

• Cross-license to defend against infringement

• Force competitors to design around patent

• Build value of company/university

• Create perception of innovation

• Create prior art against others

• Defend it


Bars to Obtaining Patents • Enabling public disclosure

US is first to invent until March 16, 2013

Rest of world is first to file (and we are, too, after March 16, 2013)

• Statutory bars

On sale bar (includes “offer for sale”)

Publications – includes inventor’s own articles

Public use/disclosure

• Documentation

Lab notebooks vs. Napkins

Invention disclosure forms


Trademarks


Trademarks

• A word, name, symbol or device which is used in trade with goods and services that distinguishes the goods and services from others Letter combinations - ABC, CBS, NBC

Alphanumeric combinations - V-8, 7-ELEVEN

Slogans – “Intel Inside”

Images

• Nike swoosh

Colors

• Pink (Owens Corning insulation)

• Purple (AstraZeneca’s Nexium for heartburn)

Musical Notes - NBC chimes


Trademarks

• Trademark rights may be used to prevent others from using a similar mark, but not to prevent others from making the same goods or offering the same services

• ™ or SM used when organization regards name or slogan to be their trademark or service mark

• ® used when trademark or service mark is registered by USPTO


Federal Registration Of A Trademark

• To obtain registration of a trademark:

Goods bearing the mark must have been shipped in interstate commerce or a bona fide intention to do so

Services under the mark must have been rendered in more than one state or a bona fide intention to do so

Perpetually renewable in ten year periods, provided the mark continues to be in use

Cost: ~ $2,500-$3,500, includes search

Mark must first be used in commerce


No Registration If:

• Includes immoral, deceptive, or scandalous subject matter

• Includes a flag, coat of arms, or other insignia of the US or of any state or municipality, or of any foreign nation

• Consists of a name, portrait, or a signature identifying a particular living individual unless by consent

• Resembles another registered mark so as to likely cause confusion among consumers


UNH Trademarks • Bringing in the Bystander™ (Prevention Innovations)

• UNHCEMS® software (Research Computing & Infrastructure)

• UNH Wildcats

Bringing in the Bystander™: Establishing a Community of Responsibility


Copyright


Copyright • Copyright arises automatically the moment an original work

of authorship is fixed in a tangible medium of expression, published or unpublished

• “Original” means that the work was created independently by the author, and that it possesses some minimal degree of creativity

• Independent creation does not mean "novel" as in patent law • Examples

A book written in manuscript form Software code on paper Software code in digitized form E-mail


The Exclusive Rights Of Copyright

• Copyright is a bundle of legal rights of an author, artist, composer, or other creator of intellectual property to control the use of the work by others To copy the copyrighted work To prepare derivative works based upon the copyrighted

work To distribute copies of the copyrighted work to the public To perform the copyrighted work To display the copyrighted work One can license these rights to others

• Can pick and choose what is licensed • Not all or nothing


What May Be Copyright Protected?

Dramatic works

Sound recordings

Audiovisual works

Musical works

Pantomime and choreographic works

Architectural works

Literary works

Pictorial and sculptural works


What Cannot Be Copyright Protected?

• Facts • Ideas • Processes or Procedures • Concepts • Principles • Systems or methods of operation • Discoveries • Works created by an officer or employee of the United

States Government, acting within the scope of his or her official duties.


Differences Between Copyrights and Patents

• Patents protect ideas – Copyrights protect the expression • Copyright protection runs for the life of the last surviving author plus

70 years while patents are for 20 years from “full” application • Patents prohibit anyone from making, using, or selling whereas

copyrights prohibit anyone from copying the expression • Costs for registering a copyright are $35 and patent costs can

exceed $20K for a US patent (application filing, prosecution, maintenance fees)

• US Patent Law allows the inventor to file a patent application within 1 year of public disclosure and Copyright permits an author to register their work at any time (no time limit)

• Patent Pending can only be used if application filed whereas Copyright can use © without registering with US Library of Congress


Copyright Ownership

• Vests in the author the moment the work is fixed in a tangible medium of expression

• Vests in employer if work created by employee within scope of employment

• Work-for-hire

• Can be governed by agreement

• UNH policy states that ownership rests with the author for “exempted scholarly works”


Duration Of Copyright

• Life of author plus 70 years

Measured from death of last surviving author

• Works-for-hire

95 years from the year of first publication, or

120 years from the year of creation


Registration And Notice Requirements

• Registration is not required but is a requirement to file a copyright infringement suit

• Copyright notice is recommended:

Informs the public that a work is protected by copyright

Prevents an infringer from using the innocent infringer defense


Copyright Notice

• © , “Copyright”, “COPR.”

• Year of first publication

• Name of copyright owner

© 2011 University of New Hampshire


Copyright Considerations

• “I found the text on the Internet, so I can just copy it.”

• “I copied this graph from a journal article and don’t need to seek permission because I’m using the information for an educational seminar.”

• “I gave out my students’ portfolios from last year as an example for this semester. I don’t need their permission because this was work created for my course.”




True, only if the information is in the Public Domain






True, only if the information is in the Public Domain


True, only if use of the graph falls under Fair Use



Fair Use

• “Fair use” permits certain limited reproduction of copyrighted works for educational or research purposes without the permission of the copyright owner.

• Not all copying or reproductions by an educational institution qualifies as fair use.


Four Factors Of Fair Use

• There are four factors to be considered when determining fair use: The purpose and character of the use.

• Is it for commercial use or for nonprofit educational purposes? • To what extent has the original work been transformed by the new

work? Examples of transformation include parody, criticism, and commentary.

The nature of the copyrighted work. • Subjective evaluation of the worthiness of copyright protection for

the original work. The amount and substantiality of the portion used relative to the

copyrighted work as a whole. The effect of the use on the potential market for or value of the

copyrighted work.


Four Factors Of Fair Use

Credit: University of Minnesota Libraries




True, only if the information is in the Public Domain • “I copied this graph from a journal article and don’t need to seek

permission because I’m using the information for an educational seminar.”

True, only if use of the graph falls under Fair Use • “I web-posted my students’ portfolios from last year as an example

for this semester. I don’t need their permission because this was work created for my course.”

Each student owns the copyright for any work that they created; in this example, the instructor needs to seek permission from each student in order to continue to use their work


IP Resources: UNH • Office for Research Partnerships & Commercialization

• http://www.unh.edu/research • Intellectual Property Policy

• http://usnholpm.unh.edu/UNH/VIII.Res/D.htm • USNH General Counsel Office

• http://www.usnh.unh.edu/fac/offices/counsel.shtml • Printing Services http://www.printing.unh.edu/copyright.html • Primer on Copyright Law and Recommended Resources

• http://www.library.unh.edu/loan/loan/reserves_edit/pdfforms/UNH%20Copyright%20Primer.pdf

• Digital Millennium Copyright Act (DMCA) Implementation at UNH • http://www.unh.edu/cis/dmca/

• Library http://www.library.unh.edu/about/polreg/copyright.shtml • Research Policies and Procedures www.unh.edu/orps/policies.html

http://www.unh.edu/research

http://usnholpm.unh.edu/UNH/VIII.Res/D.htm

http://www.usnh.unh.edu/fac/offices/counsel.shtml

http://www.printing.unh.edu/copyright.html

http://www.library.unh.edu/loan/loan/reserves_edit/pdfforms/UNH Copyright Primer.pdf



http://www.unh.edu/cis/dmca/

http://www.library.unh.edu/about/polreg/copyright.shtml

http://www.unh.edu/orps/policies.html


IP Resources: Other • U.S Patent and Trademark Office www.uspto.gov • U.S. Copyright Office www.copyright.gov • What is Copyright Protection? www.whatiscopyright.org • U.S. Works In the Public Domain www.unc.edu/~unclng/public-d.htm • Copyright Website www.benedict.com • Copyright Clearance Center www.copyright.com • Stanford University Library: Copyright and Fair Use webpage fairuse.stanford.edu/ • United States Copyright Office: Reproduction of Copyrighted Works by Educators

and Librarians • www.copyright.gov/circs/circ21.pdf

• The Association of American Universities, the Association of Research Libraries, the Association of American University Presses, and the Association of American Publishers: Campus Copyright Rights and Responsibilities: A Basic Guide to Policy Considerations

• www.acenet.edu/AM/Template.cfm?Section=Search&section=Legal_Issues_and_Policy_Briefs1&template=/CM/ContentDisplay.cfm&ContentFileID=1332

http://www.uspto.gov/

http://www.copyright.gov/

http://www.whatiscopyright.org/

http://www.unc.edu/~unclng/public-d.htm

http://www.benedict.com/

http://www.copyright.com/

http://fairuse.stanford.edu/

http://www.copyright.gov/circs/circ21.pdf

http://www.acenet.edu/AM/Template.cfm?Section=Search&section=Legal_Issues_and_Policy_Briefs1&template=/CM/ContentDisplay.cfm&ContentFileID=1332

http://www.acenet.edu/AM/Template.cfm?Section=Search&section=Legal_Issues_and_Policy_Briefs1&template=/CM/ContentDisplay.cfm&ContentFileID=1332


Fall 2011 Seminar Schedule

• Thursday, 27 October 2011

Non-dilutive Capital for Small Businesses – SBIR/STTR Funding and the NHIRC

• Thursday, 17 November 2011

Dilutive Capital for Small Businesses – Venture Funding and the NH-ICC


Office for Research Partnerships and Commercialization

Marc Sedam, Executive Director Maria Emanuel, Ph.D., Senior Licensing Manager

Gretchen Smith, Program Coordinator Paige Smith, Sr. Program Support Assistant

Lynn Szymanski, Intern

Gregg Hall 35 Colovos Road

Durham, NH 03824 862-4125

www.unh.edu/research @UNHInnovation

http://www.unh.edu/research