Identifying 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 ID: 249179
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Intellectual Property and Commercializing Technology
Identifying, Protecting, Growing and Commercializing Intellectual Property in both Academic and Commercial Environments Slide2
Why this Seminar Series?New RealitiesThere 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 IPCommercialExpectations of monetizing IP as part of employment
Creating own employment with start ups, etc.Slide3
Preparing for the New RealityFallSept. 23
Fundamentals of IPOct. 21 Patents and Patenting ProcessNov. 11 Technology Commercialization and UR
Dec. 9 How to Find Inventions, Good Inventions and How to find Prior Art
SpringJan. 20 Assessing Market Opportunity of New TechFeb. 10
Working with Third PartiesMar. 17 Risk Assessment for Tech InvestmentsApril 14 Software and Open Source Software
12:00-1:00 Wilson Commons, 2nd Floor Gowen Room
Lunch ProvidedSlide4
Fundamentals of Intellectual Property
Understanding the Classic Areas of Intellectual Property: Copyrights, Trademarks, Trade Secrets/Know How, and PatentsSlide5
Why does IP matter?The most important assets, always for academic institutions, and now also for most commercial enterprises are:
Intellectual PropertyIntellectual CapitalSlide6
We are living in the Age of IPWhatsAppFounded 2009
Employees – 55400 million usersMarket Cap $19B
GM
Founded 1908
Employees – 212K in 157 Countries
Factories on 5 Continents
Sold 9M vehicles
Market Cap $56BSlide7
What makes Intellectual Property Different?Intellectual property can be replicated at little to no cost. 2. Intellectual property can be used by many people at the same time.Slide8
Copyrights -Protects Creative Expression
Art worksFilmsPhotographsSculptureTheaterMusic
WritingsManuals
DocumentationSoftwareTechnical drawingsMask works
Copyright protects the expression of an idea, not the idea itself.Slide9
CopyrightsA 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
. Slide10
Copyright ProtectionCopyright 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.Slide11
Copyright Best PracticesRegister 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.Slide12
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. Slide13
Trademark ProtectionTrademarks are protected by registering in trademark offices world wide
Trademarks are only enforceable in the country where you own the registrationProtection 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.Slide14
Fields of UseThe same mark can be used for different goods and servicesSlide15
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.Slide16
Trade Secrets and Know HowBusiness and technical information not publicly known.
Value of trade secrets comes from their confidential nature.Slide17
Types of Trade Secrets and Know HowBusiness
PricingCustomer ListsSupplier ListsProgram NamesLaunch DatesOrg. Charts
Business MethodsLegal Opinions
TechnicalProcessesFormulationsSoftwareTechnical DrawingsResearch
Process AcronymsDataSlide18
Value of Trades Secrets and Know HowTrade Secrets provide competitive advantages in:
PricingMarketingTechnologyProduct performanceProduct deliveryMarket presenceSlide19
Trade Secret Best PracticesMaintain 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.Slide20
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. Slide21
Patentable InventionsArticles of Manufacture
Methods of ManufactureChemical CompositionsComputer Programs (not universal)Methods of Doing Business (not universal)DesignsOther – Life forms, ?, everything under the sunSlide22
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.
PatentSlide23
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.Slide24
Patent RequirementsNovelty – Is it new?
Non-obviousness – Would the improvement be obvious to one of ordinary skill in the art?Slide25
The Value of PatentsPrevents others from using
technology.Protects technology for your use by barring others from patenting.Provides licensable material.Slide26
Patent Best PracticesKeep 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).Slide27
Attend all the Seminars!FallSept. 23
Fundamentals of IPOct. 21 Patents and the Patenting Process
Nov. 11 Technology Commercialization and URDec. 9
How to Find Inventions, Good Inventions and How to find Prior ArtSpringJan. 20
Assessing Market Opportunity of New TechFeb. 10 Working with Third PartiesMar. 17 Risk Assessment for Tech Investments
April 14 Software and Open Source Software
12:00-1:00 Wilson Commons, 2
nd
Floor
Gowen
Room
Lunch Provided
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