Intellectual Property and Commercializing Technology 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. Companies are cutting back on R&D. Funding for all is research is flat or falling. Academic More self funding by leveraging IP Commercial Expectations of monetizing IP as part of employment Creating own employment with start ups, etc.

Preparing for the New Reality Fall Sept. 23 Fundamentals of IP Oct. 21 Patents and Patenting Process Nov. 11 Technology Commercialization and UR Dec. 9 How to Find Inventions, Good Inventions and How to find Prior Art Spring Jan. 20 Assessing Market Opportunity of New Tech Feb. 10 Working with Third Parties Mar. 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

Fundamentals of Intellectual Property Understanding the Classic Areas of Intellectual Property: Copyrights, Trademarks, Trade Secrets/Know How, and Patents

Why does IP matter? The most important assets, always for academic institutions, and now also for most commercial enterprises are: 1.Intellectual Property 2.Intellectual Capital

We are living in the Age of IP WhatsApp Founded 2009 Employees – million users Market Cap $19B GM Founded 1908 Employees – 212K in 157 Countries Factories on 5 Continents Sold 9M vehicles Market Cap $56B

What makes Intellectual Property Different? 1.Intellectual property can be replicated at little to no cost. 2. Intellectual property can be used by many people at the same time.

Copyrights - Protects Creative Expression Art works Films Photographs Sculpture Theater Music Writings Manuals Documentation Software Technical drawings Mask works Copyright protects the expression of an idea, not the idea itself.

Copyrights A 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.

Copyright Protection Copyright 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.

Copyright Best Practices Register 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.

Trademarks Trademarks 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.

Trademark Protection Trademarks are protected by registering in trademark offices world wide Trademarks are only enforceable in the country where you own the registration Protection 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.

Fields of Use The same mark can be used for different goods and services

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.

Trade Secrets and Know How Business and technical information not publicly known. Value of trade secrets comes from their confidential nature.

Types of Trade Secrets and Know How Business Pricing Customer Lists Supplier Lists Program Names Launch Dates Org. Charts Business Methods Legal Opinions Technical Processes Formulations Software Technical Drawings Research Process Acronyms Data

Value of Trades Secrets and Know How Trade Secrets provide competitive advantages in: Pricing Marketing Technology Product performance Product delivery Market presence

Trade Secret Best Practices Maintain 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.

Patents Grant of a patent is a bargained for exchange. Public disclosure of new and non-obvious technical information in exchange for a period of exclusivity.

Patentable Inventions Articles of Manufacture Methods of Manufacture Chemical Compositions Computer Programs (not universal) Methods of Doing Business (not universal) Designs Other – Life forms, ?, everything under the sun

The Patent Grant The 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. Patent

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.

Patent Requirements Novelty – Is it new? Non-obviousness – Would the improvement be obvious to one of ordinary skill in the art?

The Value of Patents Prevents others from using technology. Protects technology for your use by barring others from patenting. Provides licensable material.

Patent Best Practices Keep 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).

Attend all the Seminars! Fall Sept. 23 Fundamentals of IP Oct. 21 Patents and the Patenting Process Nov. 11 Technology Commercialization and UR Dec. 9 How to Find Inventions, Good Inventions and How to find Prior Art Spring Jan. 20 Assessing Market Opportunity of New Tech Feb. 10 Working with Third Parties Mar. 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 NEXT! a