Intellectual Property and Licensing at RIT Varda N. Main Director, Technology Licensing Office PI Institute – January 16, 2003

RIT Technology Licensing Office Agenda IP at RIT Processes – Inventor’s/Author’s Role – Students and IP Ownership Protecting Intellectual Property Bringing Technology to the Marketplace Federal Funding and University IP IP Considerations When Working With External Sponsors Resources

INTELLECTUAL PROPERTY AT RIT

RIT Technology Licensing Office Intellectual Property at RIT Purpose of RIT IP Policy (C3.0) – Support educational mission of RIT – Enhance reputation of RIT and its faculty – Leverage RIT IP to benefit faculty, staff, students and the Institute Anticipated Outcomes of RIT IP Policy – Encourage faculty and staff to engage in scholarship, research, and special projects – Benefit creators and the Institute

RIT Technology Licensing Office What IP has RIT Created? Educational materials and tools – Videotapes – Software – Instructional guides – Training programs – Plays, artistic works Inventions – Devices – Methods or processes Recent product launches – ASL Video Dictionary and Inflection Guide – C-Print® Pro

RIT Technology Licensing Office The Inventor’s/Author’s Role To promptly and completely disclose creations to RIT To be a team member in assessing the commercial potential of the creation and then in the marketing and actual commercialization To share in resulting licensing fees and royalties – 50% after deducting allowable expenses

RIT Technology Licensing Office You’ve Created Something…..Now What? Disclose it to RIT in a timely manner – There may be requirements to disclose to your funding agency/sponsor – Submit completed Invention Disclosure Form to GCIP – If possible make your disclosure to RIT before making any public disclosures – For copyrighted material mark with © 2003 Rochester Institute of Technology For greater protection also register with US Copyright Office (through TLO) – For trademarks register through Candy Fischbach, Bus Svces

RIT Technology Licensing Office How to Determine Who Owns the IP? Was the work in your annual Plan of Work? Was the work a commissioned work? Did you use RIT facilities and resources? Did RIT or other sponsors fund the work?

RIT Technology Licensing Office Does Bringing Something to the Marketplace Mean I Can’t Publish? NO You can publish research results and protect the IP – It’s a matter of timing and balance – TLO can help you with this

RIT Technology Licensing Office Students and IP Ownership RIT does not own student IP unless: – The student was paid by RIT to perform the work that led to the IP As part of RIT employment Through grant or contract funding secured through RIT

PROTECTING IP

RIT Technology Licensing Office Forms of Intellectual Property Copyrights Trade Secrets Trademarks – Trademark – Service Marks – Trade Name Patents – United States Provisional Full application – International

RIT Technology Licensing Office Trade Secrets Definition – Confidential, unpatented information that is protected by keeping the information secret Factors in determining if it is a trade secret – Extent information is known in industry – Extent measures taken to safeguard secrecy – Value of information to owner and competitors – Ease/difficulty in independent development

RIT Technology Licensing Office Trade Secrets Advantages – Easy to control – Easy and inexpensive (relatively) to protect – Indefinite term (determined by degree of protection) – No patentability requirements to qualify Disadvantages – Limited ability to exploit information Reverse engineering – No protection against independent development – No statute law protecting trade secrets Remedy – Injunction or damages – Onus is on owner to establish case

RIT Technology Licensing Office Patents What is patentable? – Any new and useful art, process, machine, manufacture or composition of matter or any new and useful improvement – Includes software and mask works Key elements: – Novelty – Utility – Non-obviousness

RIT Technology Licensing Office U.S. Patents First to invent vs. first to file in rest of world Term is 20 years from date of application One year grace period for prior disclosure Application published 18 months after filing

RIT Technology Licensing Office Software Patents Software-based inventions Patentability criteria evolving and include: – Produces new/useful data interpretation – Controls device performing new/useful function – Solves computer-related problem – Improves existing computerized process

RIT Technology Licensing Office What Can One Copyright? Protects manner of expression; not the idea, process or concept Precludes actual copying Exists automatically on creation of work – Legal registration enhances protection Term – author’s life + 70 years; – lesser of 95 years from first publication or 120 years from creation for works for hire Creations and works of art drawings/prints musical workstext architectural plansmotion pictures software multimedia worksinternet-distributed content

RIT Technology Licensing Office Copyright Owned by RIT as “work for hire” of RIT employee RIT policy gives ownership to authors for scholarly articles CREATE by authorship DESTROY only by express dedication to public

RIT Technology Licensing Office Trademarks Definition – Identifying mark, word, logo or symbol used by someone in commerce to identify or distinguish their goods and services from all others – Sometimes confused with “tradename” which is the company name under which business is conducted.

BRINGING TECHNOLOGY TO THE MARKETPLACE

RIT Technology Licensing Office When is the Right Time to Bring a Product to Market? When it is ready for use in the marketplace When we have done as much development as makes sense for us to do ourselves When is the window of opportunity for the product or service?

RIT Technology Licensing Office How Does RIT Decide What to Bring to the Marketplace? Invention Disclosure/patenting review process Marketability assessments performed by TLO with the inventor

RIT Technology Licensing Office Options for Commercializing Technologies License Distributor Publisher Direct sales Start-up company

RIT Technology Licensing Office Licensing: The View on the Other Side of the Table Perception of business risk. Who’s bringing what to the table? What are the 3 points of difference for the technology/opportunity? What would make a user switch to this product/process/service? What is needed to bring this to the commercial marketplace? Price to purchase vs. cost to develop

FEDERAL FUNDING AND UNIVERSITY IP

RIT Technology Licensing Office Universities and the Bayh-Dole Act Stipulates that all IP developed by a university using federal funding is owned by the university – Includes flow through funds

RIT Technology Licensing Office US Government and Use of Federally-Funded Technologies The Government funds technology development – To meet government needs for a technology solution to a problem – To assist in economic development by helping bring new technologies to the marketplace – To provide a return to the US taxpayer from the technology through: Job creation in the US Substantial manufacturing in the US Net economic benefit to the US

RIT Technology Licensing Office US Government and Use of Federally-Funded Technologies The government wants to encourage use of new technologies in the marketplace – Agreement terms encourage/expect technology owners to bring technologies to the marketplace The government wants to encourage further R&D – IP protection (e.g. patents and copyright) permit technology owners to disclose their technologies without losing value in the marketplace

RIT Technology Licensing Office Required Terms in US Grants Government Use Rights – The government gets a non-exclusive, royalty-free right to use technologies developed with federal funds for all government purposes – This includes the ability of the government to grant licenses to government contractors to use the technology when doing work for the government

RIT Technology Licensing Office Required Terms in US Grants Government March-In Rights – As the government wants to see technologies brought to the marketplace it can require the owner of a technology funded with federal dollars to license out that technology if the owner is not actively bringing the technology to the marketplace

IP CONSIDERATIONS WHEN WORKING WITH EXTERNAL SPONSORS

RIT Technology Licensing Office IP Considerations When Working with External Sponsors What does the sponsor need? – Rights to use IP? – Ownership of IP? – Limitations on RIT publications and presentations? – Limitations on types of personnel who can work on project? Students allowed? – Undergraduates? Graduates? Citizenship and export control considerations?

RIT Technology Licensing Office IP Considerations When Working with External Sponsors Will the sponsor sign a NDA? – Contamination considerations Can involved students sign a NDA? – Employment contracts take precedence Can you do future work in this area? – RIT by itself? – With other sponsors?

RIT Technology Licensing Office “To share an asset, usually it must first be divided. But knowledge is one of the few assets that multiplies as it is shared.”..... Indian proverb

RIT Technology Licensing Office Resources US Patent and Trademark Office – US Copyright Office – Good IP Site – Technology Licensing Office Varda N. Main, Director 2011 Louise M. Slaughter Building (Bldg. 78)