Intellectual Property What is intellectual property? What is intellectual property? US IP protection- US IP protection- Patent application process Patent application process What does a patent look like? What does a patent look like? Patents in Oregon- how are we doing? Patents in Oregon- how are we doing? Tacit Knowledge, the Inventor, and implications for Tech Commercialization Tacit Knowledge, the Inventor, and implications for Tech Commercialization CDA for this class CDA for this class

Physical vs Intellectual Property Physical vs Intellectual Property Factor Physical Property Intellectual Property Multi-Use Use by one firm precludes simultaneous use by another Use by one firm does not prevent use by another Physical depreciation Depreciates, wears out Does not wear out Protection and enforcement from encroachment Generally can enforce and protect ownership May be difficult or expensive to enforce and protect ownership

Categories of IP Patent Patent Trademark Trademark Copyright Copyright Trade secrets Trade secrets Others…. Others….

Inventors right to IP Protection: The U. S. Constitution !! Article 1, Section 8: Article 1, Section 8: “The Congress shall have power…” “The Congress shall have power…” “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries” “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”

Patentable subject matter The patent claims define what is patented The patent claims define what is patented “Anything under the sun made by man” “Anything under the sun made by man” “Limited time” is 20 years from first filing “Limited time” is 20 years from first filing Broad categories of utility patents: Broad categories of utility patents:

Different types of patents Utility - this is 98% of all patents Utility - this is 98% of all patents Design- for new original, ornamental and non-obvious designs for articles of manufacture Design- for new original, ornamental and non-obvious designs for articles of manufacture Plant patents- e.g. genetically modified Plant patents- e.g. genetically modified Business method patents- “one click” buying method is patented by Amazon Business method patents- “one click” buying method is patented by Amazon

Categories of claims o Method (process) -Common for nanoscale inventions, semiconductor manufacturing, etc o Apparatus - Machine, compound, materials o Product made by process - Pharmaceutical drugs, semiconductor devices, etc (Lilienfeld, patent # issued 1928) (Lilienfeld, patent # issued 1928) Any patent can mix or match claims from these three categories Any patent can mix or match claims from these three categories

Benefit to the Public Publication- for all to learn and build upon Publication- for all to learn and build upon Must be enabling Must be enabling Must disclose “best mode” Must disclose “best mode” Must file promptly or waive rights Must file promptly or waive rights Cannot abandon, suppress, or conceal Cannot abandon, suppress, or conceal

Patent Fast Facts: Valuable Prizes to the Winners o Average Number of US Patents Issued per day (within a factor of 2) About 500!!! o Typical cost for preparing and filing a patent (within the range specified) $10,000-$50,000 o Corvallis National Rank in “Patents per capita” (within 2 places) 4 th (Source- USA Today, 2002) 4 th (Source- USA Today, 2002)

Patent Fast Facts: Valuable Prizes to the Winners o Date and invention of first US patent (within 20 years) July 31, “ Making Pot ash and Pearl Ash by a New Apparatus and Process”, Sam Hopkins, inventor o Number of US patents issued as of today? (within 100,000) 7,174,570 o Average length of time from application to granting of patent (within 12 months) 28 months, but biotech patents average 45 months

Benefit to the Public Right to exclude for a limited time Right to exclude for a limited time 20 years from first filing date 20 years from first filing date Cannot be extended Cannot be extended A monopoly deprives the public of something they had a right to do A monopoly deprives the public of something they had a right to do A patent contributes something new that no one had before A patent contributes something new that no one had before

“New, useful, and non- obvious” “Novelty” means new; not done before anywhere (publicly accessible) “Novelty” means new; not done before anywhere (publicly accessible) “Prior art” is publicly accessible by definition “Prior art” is publicly accessible by definition “Publication” need not be printed on paper…can be electronic, any language “Publication” need not be printed on paper…can be electronic, any language “Useful” means….? “Useful” means….? “Non-obvious” “Non-obvious”

From Invention to Protection (Before the USPTO) The idea! Document, date and witness it.. File an invention disclosure Review by IP committee To file or not to file???

From Invention to Protection (Filing with the USPTO) Provisional Application (optional) Full Application. USPTO Office actions, rejections, etc Patent is awarded!! If patent is awarded, 20 year clock starts from date of first filing OR

Parts of a Patent Title/Number/Date of Filing/Date of Issue Title/Number/Date of Filing/Date of Issue Abstract Abstract Figures Figures Background Background Summary of Invention Summary of Invention Description of Preferred Embodiment Description of Preferred Embodiment THE CLAIMS THE CLAIMS

Oregon Patents

Oregon Patents by Assignee and Area

Trade Secrets Another alternative to filing a patent is to maintain an invention as a “trade secret”, intentionally kept from the public Another alternative to filing a patent is to maintain an invention as a “trade secret”, intentionally kept from the public The Coca Cola recipe has been a trade secret for more than 100 years- supposedly known only by two employees The Coca Cola recipe has been a trade secret for more than 100 years- supposedly known only by two employees Under what conditions would a company want to maintain IP as a trade secret? Under what conditions would a company want to maintain IP as a trade secret? What are the risks in doing so? What are the risks in doing so?

The Reality- “Tacit Knowledge“ For any technical idea, all the information relevant to an invention is rarely codified. For any technical idea, all the information relevant to an invention is rarely codified. Even to one “skilled in the art”, an invention can often not be reconstructed due to background information and knowledge known but not documented by the inventor Even to one “skilled in the art”, an invention can often not be reconstructed due to background information and knowledge known but not documented by the inventor This background knowledge is referred to as “tacit knowledge” and is one of the greatest challenges to technology transfer This background knowledge is referred to as “tacit knowledge” and is one of the greatest challenges to technology transfer

Remember this!! The amount of tacit knowledge in an invention is an important factor in deciding whether to form a spin off company or license it to an established firm The amount of tacit knowledge in an invention is an important factor in deciding whether to form a spin off company or license it to an established firm Why? Why?

Small Group Activity You are on the IP review committee of a small company. Assuming there was no prior art, what would you do with the following submitted IP? Method for measuring thickness of films very precisely. This is important in making a new nanostructure which is one of your highest revenue products Method for measuring thickness of films very precisely. This is important in making a new nanostructure which is one of your highest revenue products A new packaging method which preserves product quality at a lower cost A new packaging method which preserves product quality at a lower cost A cow magnet which the inventor claims will radically improve automobile gas mileage A cow magnet which the inventor claims will radically improve automobile gas mileage A method of embossing your company logo on the product that looks holographic A method of embossing your company logo on the product that looks holographic A new computer algorithm which allows internet customers to bid on-line (like e-bay but better) A new computer algorithm which allows internet customers to bid on-line (like e-bay but better)