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

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

3. We are living in the Age of IPGM
Founded 1908
Employees – 212K in 157 Countries
Factories on 5 Continents
Sold 9M vehicles
Market Cap $56B
WhatsApp
Founded 2009
Employees – 55
400 million users
Market Cap $19B

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

5. Why does IP matter?
The intellectual capital you apply to a problem, and the intellectual property you generate as part of that process, are your individual, corporate or university assets. Those assets can be used to sustain research, build your reputation, generate income for the individual, businesses, labs and universities.

6. IP for Toxicology
Toxicology IP in Academia In an environment of declining grants, leveraging IP to support continued research is increasingly important. Toxicology IP in the Commercial World Employers now expect employees to understand, create and protect IP as part of their jobs. IP will be a critical part of start ups.

7. 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.

8. 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.

9. 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.

10. 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.
And data, statistics, etc. are not copyrightable subject matter. (Your best protection is confidentiality if possible)

11. 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.

12. Protection continues only as long as the trademark is in use.
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.

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

14. 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.

15. 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.

16. 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

17. 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

18. 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.

19. Patentable Subject Matter
“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
Phenomena of nature, mental processes and abstract intellectual concepts were not patentable.

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

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

22. 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).

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

24. 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

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

26. 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.