1. Intellectual Property Workshop Patents and WPI’s Policies November 12, 2003 William W. Durgin Associate Provost for Academic Affairs Vice President for Research

2. Intellectual Property Workshop - November 12, 2003 2 Patents  Provisional  Utility  Others  Confer rights to owner  Prevent competitors from profiting from the invention defined by the patent claims  Rights can be enforced in court

3. Intellectual Property Workshop - November 12, 2003 3 Rights  A patent does not give the owner a right to make, use or sell the invention.  Rather, it prevents others of so-doing without permission.  The owners’ rights may be limited by patented inventions of others - blocked.  Infringement is the –offer to sell –selling –making –using the invention defined in the claims.

4. Intellectual Property Workshop - November 12, 2003 4 Sample Patent

5. Intellectual Property Workshop - November 12, 2003 5 Elements of a U. S. Patent  1 st Page  Figures  Specification  Prior Art  Ordinary Skill in the Art  Preferred Embodiment  Claims –Means plus function

6. Intellectual Property Workshop - November 12, 2003 6 What’s Patentable? Invention or discovery –New and useful process –New and useful machine –New and useful composition of matter –Or any new and useful improvement thereof

7. Intellectual Property Workshop - November 12, 2003 7 Four Hurdles 1. Patentable subject matter 2. Utility 3. Novelty 4. Non-obvious

8. Intellectual Property Workshop - November 12, 2003 8 Patentable Subject Matter  Process  Machine  Manufacture or composition of matter  New and useful improvements

9. Intellectual Property Workshop - November 12, 2003 9 Utility  Useful  Specific and substantial  Credible  Must actually work

10. Intellectual Property Workshop - November 12, 2003 10 Novelty  New  First to invent  Prior art –Printed publications –Public knowledge –Sale or offer to sell –Description in a patent with a filing date prior to the date of invention

11. Intellectual Property Workshop - November 12, 2003 11 Lose Rights  Abandoned  Invented by someone other than those named  First made by someone elsewhere in the world provided not abandoned, suppressed, or concealed

12. Intellectual Property Workshop - November 12, 2003 12 Non-obvious  Scope and content of prior art at time of invention  Differences between prior art and claimed invention  Level of skill in the art  Other evidence: –Long felt need –Commercial success –Failure of others –Unexpected results

13. Intellectual Property Workshop - November 12, 2003 13 Disclosure  Don’t publish or present until: –Disclosed to WPI –Talked to one of us  Fill out and submit a WPI Disclosure  Get your records in order: –Lab notebooks –Working notes, sketches, drawings –Draft publications  If you have worked on a federally-supported research program, we are legally obliged to notify the government.  If you have worked on a corporate-sponsored project or program, there are probably notification requirements.

14. Intellectual Property Workshop - November 12, 2003 14 You’ve Invented Something - What Next?  Get your records in order  Search the prior art  File a disclosure –WPI owns: We will designate a patent attorney You will need to work with that attorney –You own: We will sign a letter relinquishing any WPI claims You work with your patent attorney  Patent application is prosecuted  Patent Issues

15. Intellectual Property Workshop - November 12, 2003 15 Before you disclose, search the prior art  Textbooks  Journals  Technical magazines  Manufacturers’ catalogs  Patents - www.uspto.gov

16. Intellectual Property Workshop - November 12, 2003 16 Invention Disclosure Form  Fill it out  Get required signatures  Return to: –either Associate Provost/VP for Research or Director of Intellectual Property www.wpi.edu/Admin/Research/Sponsored/Forms/

17. Intellectual Property Workshop - November 12, 2003 17 Contact Information William W. Durgin Associate Provost/VP for Research Boynton Hall, 2 nd Floor 508/831-5065 wwdurgin@wpi.edu Michael B. Manning Director of Intellectual Property Higgins Labs 123 508/831-5834 mmanning@wpi.edu

18. Intellectual Property Workshop - November 12, 2003 18 Intellectual Property Policy  Inventions  Ownership  Royalty division  Copyrights/mask rights/service and trademarks  Appeals  Students, faculty, staff www.wpi.edu/Pubs/Policies/intell.html

19. Intellectual Property Workshop - November 12, 2003 19 Royalty Rule I If WPI pursues the patent, then WPI will absorb the costs and will share royalties on a 50-50 basis with the inventor(s), after the costs of the patent are recovered, or will share royalties in accordance with WPI institutional agreements.

20. Intellectual Property Workshop - November 12, 2003 20 Royalty Rule II If the student(s) wish to pursue the patent, WPI will assign any ownership rights it may have to the student through a jointly signed agreement providing that the student will give 10 percent of net future financial gains from the patent to WPI. The student will absorb the costs of pursuing the patent. Alternatively, if the student wishes to have WPI absorb the costs of pursuing the patent, then Rule I applies.

21. Intellectual Property Workshop - November 12, 2003 21 Royalty Rule III The inventor(s) will pay all costs associated with patenting the invention, and will receive all benefits from the patent.

22. Intellectual Property Workshop - November 12, 2003 22 Student Rule 1 For an invention made by students, on their own time, with their own facilities and resources, and in research/projects not within the stated objectives of their current sponsored research, PLAN projects, or thesis or dissertation research, the invention is owned by the inventor(s). Royalties for such inventions are covered by Rule III.

23. Intellectual Property Workshop - November 12, 2003 23 Student Rule 2 For an invention made by students while employed on a sponsored project (research or educational), including off- campus PLAN projects, the invention is owned by WPI, subject to any other agreements. Royalties for such inventions are covered by Rule I.

24. Intellectual Property Workshop - November 12, 2003 24 Student Rule 3 For an invention made by a student as a part of any project or sufficiency report, thesis, dissertation, course work, directed study, directed research, or examination, the invention is owned by WPI, subject to any other agreements. Royalties for such inventions are covered by Rule II.

25. Intellectual Property Workshop - November 12, 2003 25 Student Rule 4 For an invention made by students without significant use of WPI resources, the invention is owned by the inventor(s). Royalties for such inventions are covered by Rule III.

26. Intellectual Property Workshop - November 12, 2003 26 Student Rule 5 For an invention made by students with significant use of WPI resources, the invention is owned by WPI, subject to any other agreements. Royalties for such inventions are covered by Rule II.

27. Intellectual Property Workshop - November 12, 2003 27 Patent Glossary URLs From UCSD: http://scilib.ucsd.edu/howto/guides/ patsearch/ From the Journal of Metals: http://www.tms.org/pubs/journals/J OM/matters/matters-9609.html Thomsen Derwent Company http://www.thomsonderwent.com/p atinf/terms/

28. Intellectual Property Workshop - November 12, 2003 28 Patent Resources  Intellectual Property: Patents, Trademarks, and Copyright in a Nut Shell, Arthur R. Miller and Michael H. Davis, West Publishing Company, P.O. Box 3526, St. Paul, Minnesota 55165, May 1983.  General Information Concerning Patents, U.S. Department of Commerce, Patent and Trademark Office, Reprinted August 1997.  Patenting, Beth E. Arnold, Foley Hoag Attorneys at Law, One Post Office Square, Boston, MA 02109.