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O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY STCU Guidance and Procedures September 27-28, 2005 Judson R. Hightower Associate General.

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Presentation on theme: "O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY STCU Guidance and Procedures September 27-28, 2005 Judson R. Hightower Associate General."— Presentation transcript:

1 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY STCU Guidance and Procedures September 27-28, 2005 Judson R. Hightower Associate General Counsel Oak Ridge National Laboratory

2 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 2 Basic Review of Relevant Intellectual Property Concepts Bundle of rights allowing one to exclude others from unauthorized use of ones creative output Intangible personal property Ownership of intellectual property rights (IPR) separate from ownership of tangible products

3 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 3 Types of Intellectual Property Patents (protect inventions) Utility Design Plant Copyrights Mask works (integrated circuit topographies) Trademarks Trade secrets

4 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 4 Intellectual Property Rights (IPR) under STCU Party Project Agreements Institute holds all rights except for rights in Financing Partys territory Financing Party has ownership of rights in its territory Financing Party and Recipient Entity (Institute) agree on appropriate compensation for inventors and authors Financing Party pays for cost of protecting intellectual property in its territory

5 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 5 Intellectual Property Rights (IPR) under STCU Party Project Agreements….. Each STCU Party and STCU entitled to nonexclusive, royalty-free copyright license in scientific and technical journal articles, reports and books Each non-Financing Party (upon request) may obtain nonexclusive license in its territory on fair and reasonable terms Each STCU Party and STCU granted non- commercial license

6 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 6 Intellectual Property Rights (IPR) under STCU Party Project Agreements….. Inventors and authors entitled to 15% of royalties earned by entity having rights Recipient Entity shall grant rights to background intellectual property necessary to exploit intellectual property arising from project (foreground intellectual property) Recipient Entity and other financing entity can agree to terms different from above

7 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 7 Outline of STCU IPR Guidance and Procedures Handbook Introduction Definitions Procedures for protecting information Identification of Background Intellectual Property Equitable allocation of IPR in Partner projects Protecting inventions Protecting computer software Protecting integrated circuit topographies Project implementation Commercialization Exhibits

8 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 8 Procedures for Protecting Information (Article III) Employee confidentiality agreements STCU nondisclosure agreements (NDAs) Information exchanged between STCU and Institutes Institute nondisclosure agreements Information provided to a third party (Out) Information received from a third party (In) Mutual exchange of information between parties (Mutual)

9 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 9 NEW IDEA Conception Notebook Entry Reduction to Practice Record of Invention Prepare Patent Application [Disclosure to Others] File Patent Application Patent Issues Commercialization 1.License 2.Start-Up 3.Joint Venture 4.Partnership

10 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 10 Employee Confidentiality Agreements (Exhibit 1) Each STCU employee signs as a condition of employment Agreement to protect technical and non- technical information during employment and for five (5) years after termination Documents created by employee are property of STCU and must be left with the STCU upon termination of employment

11 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 11 STCU Nondisclosure Agreements (Exhibit 2) Between STCU and Institutes Protects proposal, invention and business- confidential information exchanged for STCU projects Term in model exhibit is two (2) years and period of obligation to protect information is five (5) years

12 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 12 Institute Nondisclosure Agreements (Exhibit 3) Effective date Identity of parties – legal entities Description of business-confidential information Purpose for exchange Term of nondisclosure agreement Term of secrecy and non-use obligations

13 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 13 Institute Nondisclosure Agreements….. Out Description of Institutes information to be protected should be as general as possible Requirement that information be marked Term of agreement should be as long as possible Obligation to protect Institutes information should be as long as possible

14 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 14 Institute Nondisclosure Agreements….. In Description of information to be protected by Institute should be as specific as possible Requirement that written information be marked Business-confidential and that oral information be reduced to writing, identified as Business-confidential and sent to Institute in timely manner Term of agreement should be as short as possible Institutes period of obligation to protect information should be as short as possible

15 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 15 Why Background Results Should Be Identified in Project Agreements Helps parties distinguish between intellectual property created under project agreement and intellectual property created outside of project agreement – allocation of rights made easier Informs each party whether it will be necessary to license Background Results in order to practice intellectual property created under project (Foreground Results)

16 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 16 Identification of Background Intellectual Property (Article IV) Definitions "Background Results" means Background Information and Background Rights. "Background Information" means information, excluding Foreground Information, owned or controlled by the Recipient in the same or related fields as the research under this Agreement and generated outside the Agreement. "Background Rights " means rights in patent applications, patents, copyrights, plant variety rights and other equivalent statutory rights excluding Foreground Rights, owned or controlled by the Recipient in the same or related fields to the research executed under this Agreement and originating outside this Agreement.

17 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 17 Proposed Model Party Project Agreement Language 8.4 The Institute has indicated that the following Background Results as defined in Article XX of Annex II may be needed and used in the performance of work under this Agreement and may be needed to use any technology resulting from the Agreement: _________________________________. The Institute represents that such Background Results are available for licensing as of the effective date of this Agreement. (Remarks: If there are several owners of the Background Results, the name of owner of each Background Result shall be indicated.)

18 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 18 Proposed Model Partner Project Agreement Language Article Background Results The Recipient and the Partner have identified and agreed that the following Background Results may be used in the performance of work under this Agreement and may be needed to practice any Foreground Results of this Agreement: Recipients Background Results: _________________. Partners Background Results: ___________________. Recipient and Partner represent that the above-identified Background Results are available for licensing as of the effective date of this Agreement.

19 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 19 How to Identify Background Results in Project Agreements Records of Invention, patent applications and issued patents Provide specific record of invention, patent application and patent numbers, filing and issue dates, inventors, title STCU Record of Invention File # 1802, dated July 4, 2003, for Novel Compositions to Dr. A.K. Siminov PCT/UA04/534698, filed Jan. 4, 2004, for Novel Nitrate Compounds to Andrey Velikov U.S. Patent No. 6,238,451, issued Jan. 8, 2004, for Novel Method for Producing Nanoparticles to James Madison

20 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 20 Background Results Identification.…. Copyrights Computer Software: MASTER (Mathematical Application Software for Teaching, Education and Research), copyrighted 2004 – Paton Welding Institute Paton Welding Institute Technical Report # 43 for Experimental Analysis of Iron Alloys, copyrighted 2004

21 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 21 Background Results Identification.…. Know-how, trade secrets, proprietary information Identify the information but do not disclose it Know-how on creating novel antiviral agents in aqueous solutions as described in pages of Merck Corporations Internal Report # 641, dated April 20, 2003.

22 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 22 Protection of Background Results Law Patents Published copyrighted materials Nondisclosure agreements Records of invention, patent applications Know-how, trade secrets, proprietary information Databases, source code, and other unpublished materials, even if copyrighted

23 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 23 Equitable Allocation of IPR in Partner Projects (Article V) Partner, STCU and Institute are parties to Partner Project Agreement STCU Patent Officer (supported by Senior Specialists) responsible for working with Institutes and Partners to achieve goal of equitable IPR allocation; Equitable allocation could include ownership or licenses (exclusive or non- exclusive, limited by field of use and/or territory)

24 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 24 Equitable Allocation of IPR in Partner Projects….. Factors to consider in determining fair and reasonable allocation of IPR Nature of cooperation Contribution of each party, including Background Results Intent, commitment and ability of parties to protect intellectual property created Manner in which parties will commercialize the intellectual property created

25 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 25 Protecting Inventions (Article VI) Maintaining laboratory notebooks Recording and reporting inventions Evaluation of commercial potential Tracking inventions Patent Consideration Committee Patent applications Assignments and invention licenses Compensation of inventors

26 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 26 Maintaining Laboratory Notebooks Useful in resolving future disputes related to invention Should answer: What was done What the results were When it was done Who did it Who knew about it Entries should be in ink in chronological order For more detailed guidance, see:

27 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 27 Recording and Reporting Inventions Institute scientist completes Record of Invention (ROI) Form (Exhibit 4) Institute transmits ROI to STCU within two months of making invention ROI sent to all financing Parties by STCU Transmittal of ROI to STCU and financing Parties is not a public disclosure that prevents patenting since transmittals are under nondisclosure agreements

28 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 28 Recording and Reporting Inventions….. Pertinent parts of ROI (Exhibit 4) Identifying numbers Inventor information Actual and potential uses Existing documents describing invention Background Detailed description Dates of conception and reduction to practice Disclosures of invention outside Institute

29 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 29 Evaluation of Commercial Potential Process for pursuing Patents on US Party Funded Projects (see diagram) US Government will evaluate commercial potential of invention US Government will have patent applications prepared for inventions it wishes to protect Costs of application paid by US Government Patent applications provide broad coverage Institutes will be provided copies of patent applications prepared for US Government which they can then file in their own countries

30 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 30 Recipient Institute submits Record of Invention to STCU. STCU distributes Record of Invention to USG. STCU Patent Support Program Patent Consideration Committee - Does Committee support Recipient Institutes pursuit of patent (national, PCT, US)? If DOE says Yes to US Patent DOE has patent application prepared & sends it to Patent Consideration Committee for Recipient Institute to use in filing national or PCT patent application. DOE Office of Technology Transfer and Intellectual Property (administers USG rights to IP on behalf of State Departments Science Centers Program) STCU Patent Support Program provides Institute assistance and the DOE patent application for filing national or PCT patent application. DOE reviews invention - Does USG want to file application for U.S. Patent? Yes If DOE says No to US Patent, Consideration Committee and Recipient Institute may still decide to pursue patents After any required grace period, DOE files U.S. Patent application and administers any resulting patent. STCU awards Inventor from US Patent Award Fund (financed by US Party) No STCU Patent Support Program may assist Recipient Institute in filing US, national and/or PCT patent applications

31 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 31 Tracking Inventions Computer tracking system keeps track of inventions from time ROI is received at STCU until patents issue (Exhibit 5) Details of invention identification, ownership, type of application, countries where filed, financing Party, etc. Status at any particular time Due dates (Table VI-1) Dates action taken Responsibility of Patent Officer

32 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 32 Patent Consideration Committee Provides financial support for Institutes to prepare and file patent applications Institutes must submit Patent Application Grant Request Form (Exhibit 7) and Invention Evaluation Form (Exhibit 8) Committee considers the above two forms as well as the ROI in making is decision STCU encourages filing of PCT applications

33 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 33 Patent Applications Institute should file patent application in country invention is made within one year of sending ROI to STCU Copy of patent application sent to STCU Patent Officer sends copy of patent application to financing Party Institute should be diligent in filing patent applications in other countries within required time periods – otherwise, potential patent rights will be lost

34 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 34 Assignments and Invention Licenses Financing Party provided ownership of invention in its territory by assignment Prepared by STCU Patent Officer Signed by Institute STCU Parties and STCU provided non-exclusive, non-commercial license Prepared by STCU Patent Officer Signed by Institute Non-Financing Party non-exclusive, commercial licenses negotiated between Institute and non- Financing Party

35 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 35 Compensation of Inventors Inventors entitled to appropriate compensation from financing Party for invention rights U.S. will pay inventors up to $500 when U.S. decides to file patent application in U.S. Inventors and authors are to receive at least 15% of royalties from licensing intellectual property which they create

36 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 36 Projects Financing Party Non-Financing STCU Parties Patent Rights to Invention Held by Government of Financing Party in its territory (for commercial use) Assignment License Negotiated with government of non- Financing Party (for commercial use) Licensing with Royalties Sub-License Obtained by Company (for commercial use) Sub-License Obtained by Company (for commercial use) Sub-License Obtained by Company (for commercial use) Institute License Obtained by Company (for commercial use) License Obtained by Company (for commercial use) License Obtained by Company (for commercial use) $15% $ 85% $ fair & reasonable $ License Held by Government of any STCU Party (non-commercial) Sub-License (non-commercial) Sub-License (non-commercial) License Held by Government of any STCU Party (non-commercial) Sub-License (non-commercial) Sub-License (non-commercial) License Held by Government of any STCU Party (non-commercial) Sub-License (non-commercial) Sub-License (non-commercial) Royalty-Free Licensing

37 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 37 Computer Software (Article VII) Maintaining computer software notebooks Recording and reporting computer software Procedures similar to those for inventions Critical dates and time periods provided in Table VII-1 Exhibits 9 and 10 specifically for computer software

38 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 38 Integrated Circuit Topographies (Article VIII) Maintaining integrated circuit (IC) topography notebooks Recording and reporting IC topographies Procedures similar to those for inventions Critical dates and time periods provided in Table VIII-1 Exhibits 11 and 12 specifically for IC topographies

39 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 39 Process for Transferring IP to U.S. Commercial Entities (see diagram) U.S. company expresses interest in U.S.- funded developed technology Project completed Licenses technology from DOE Project not completed Company commits to become STCU Partner U.S. Party amends project agreement to give its rights to Institute to negotiate with Company

40 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 40 U.S. company interested in US-Funded STCU-developed technology: Sub-License From USG? Exploit technology via Commercial Partnership with Recipient Institutes? Company Negotiates with DOE for License Company commits to become a STCU Partner and funds Partner Project related to the Intellectual Property in the Regular Project (IP division agreed to in Partner Project Agreements) US Party may amend the Project Agreement to give its IP rights to Recipient Institute to facilitate the future commercial partnership DOS Science Centers Program and DOE make public possible opportunities for U.S. companies to exploit results from USG-funded ISTC/STCU projects Nonexclusive License - Royalty arrangement negotiated with DOE - Licensee commits to pay 85% of royalties to Recipient Institute/Inventor and 15% to USG - USG retains march-in rights Exclusive License - DOE publishes intent to award exclusive license in Federal Register -Royalty arrangement negotiated with DOE -Licensee commits to pay 85% of royalties to Recipient Institute or Inventor, 15% to USG - USG retains march-in rights Is the STCU project completed? Or is it still active or not yet started? Active/Not yet started Completed (Must License from USG)

41 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 41 Project Implementation (Article IX) Handling project reports Senior Specialists review to determine if any portions have been marked as business- confidential or invention information If marked, take special precautions to protect Review of proposed publications Premature public dissemination can prevent patenting Patent Officer will review to ensure patent protection not lost

42 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 42 In Summary: Phase I: Recording & Reporting Inventions Phase II: Tracking Inventions Phase III: Patent Applications Phase IV: Assignments & Licenses

43 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 43 PO=Patent Officer; ROI=Record of Invention * See separate diagram for US evaluation of commercial potential InstituteFinancing PartiesSTCU Review (PO) Institute Letter: File Number NNN, No State Secrets Record of Invention (in Russian, Ukrainian or English) Record of Invention (in English) ROI File Number XXX Record of Invention EU Canada USA*USA* STCU File Number & Interest in Protecting Invention in this Partys Territory Phase I: Recording & Reporting Inventions Invention blank Patent Application Request Form

44 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 44 STCU Invention Evaluation Form Patent Application Grant Request ROI=Record of Invention; PCC=Patent Consideration Committee * See separate diagram for US evaluation of commercial potential InstituteFinancing PartiesSTCU Review (PCC) USA*USA* Interest in Protecting Invention Phase II: Tracking Inventions Notification of Intent to File Patent Application naming specific countries) USA- prepared patent application* Optional STCU Decision If yes, then $ ROI File Number XXX EUCanada

45 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 45 ROI=Record of Invention; PA=Patent Application ** In Ukraine, patent application cannot be shared until security review completed; assume 3-month wait. InstituteFinancing PartiesSTCU Phase III: Patent Applications Primary Patent Application filed where invented ROI File Number XXX Primary Patent Application filed where invented PA File Number XXX ROI Primary Patent Application** English translation Projects Financing Party Provide Notice if Patent Application Filed Secondary Patent Application/s Filed in territories other than that of financing party PA File Number XXX Receipt from Patent Office Secondary Patent Application/s Filed in other countries/ territories Receipt from Patent Office

46 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 46 Phase IV: Assignments & Licenses InstituteFinancing PartiesSTCU Generat e Proper Forms Projects Financing Party Desire to License Signature-ready Documents License Non-exclusive, irrevocable, non- commercial, with right to sub-license Assignment of Invention From Institute to Financing Party Signed Documents License*** Non-exclusive, irrevocable, non- commercial, with right to sub-license Assignment of Invention From Institute to Projects Financing Party License Assignment of Invention STCU Party not involved in Project Request to license, proposing fair & reasonable terms Acceptance/modification of proposed terms License Assignment of Invention Optional: *** See separate diagram for US sub-licensing process

47 O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 47 Back-Up Slides


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