Taking Research from the Lab
to the Real World
Mark G. Turner
Associate Professor
Aerospace Engineering
University of Cincinnati
November 9, 2012
Thomas A. Edison (1847 – 1931)
“Genius is one per cent inspiration, ninety-nine
per cent perspiration.”
Spoken in 1903, published by Harper’s Monthly, 1932.
“None of my inventions came by accident. I see a
worthwhile need to be met and I make trial after
trial until it comes. What it boils down to is one
per cent inspiration and ninety-nine per cent
perspiration.”
Statement in a press conference in 1929.
Thomas A. Edison (1847 – 1931)
1,093 US patents in his name
His major innovation was the first industrial
research lab in Menlo Park, NJ
Outline
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Acknowledgments
My background
Money
Publishing
Approvals: FDA, FAA, FCC
IP, invention disclosures, and patents
Wrap up
Acknowledgments
• Geoffrey Pinski, J.D.
– Director
– Office of Entrepreneurial Affairs
&Technology Commercialization
– University of Cincinnati
– Many slides from his Introduction to IP
presentation
Mark G. Turner
• Associate Professor in Aerospace
Engineering
• Licensed Professional Engineer in the
State of Ohio in Mechanical Engineering
• At UC since 2001
• Worked at GE Aviation for 20 years prior
to coming to UC
Mark G. Turner
• Research integrated into Aerodynamic
Design Process at GE
• 2 patents while at GE
• Submitted about a dozen invention
disclosures while at UC, two have been
provisional patents, no patents at UC
I am not a patent expert!
Real World means Money
• Save Money
– Even ideas for the “common good” in
the real world must save money
• Make Money
“Edison's true success, like that of his friend
Henry Ford, was in his ability to maximize profits
through establishment of mass-production
systems and intellectual property rights.”
Wikipedia article on Thomas Edison
Presentations and Publishing
• Posters and presentations at conferences
allows work to get seen by people who may
apply it.
– GE has engineers attend conferences and ideas
can be used directly
• Journal articles are seen world wide
• Websites allow for data, codes and other
information to be shared
Money is still required at some stage
Federal Approvals
• US Food & Drug Administration
• Federal Aviation Administration
• Federal Communications Commission
– Anything that can interrupt radio frequencies
• UL approved: Underwriters Laboratories
– Tests for consumer safety
iBOT 4000
• Developed by DEKA
– Dean Kamen’s company
– Also developed Segway
• Jim Turner developed
the software and helped
to obtain the FDA
approval
FAR’s for jet engines
January 15, 2009, Both engines on an Airbus A320 had a bird strike. All on-board
survived in the Miracle on the Hudson. The engines shut down, but were contained.
FAR’s for Jet Engines
• Engines are tested to
withstand bird strikes
– Keep flying with small birds
– Contain the engine for large
birds
– Very detailed rules
• Tests use air cannons where
dead birds are fired at running
engines
• Humorist Dave Barry found
this amusing
Boeing 787 Dreamliner
• All composite aircraft
• 20% less fuel than a
Boeing 767
• Over two years late
in flight tests and
delivery
• Costing Boeing
Billions!
Introduction to IP
Geoffrey Pinski, J.D.
Director
Office of Entrepreneurial Affairs &Technology
Commercialization
University of Cincinnati
Intellectual Property (IP)
• What is it?
• What can you do with it?
– How does it work at a University?
Types of IP
• Trade Secrets
• Trademarks
• Copyrights
• Patents
Trade Secrets
• Definition:
– is not generally known to the public
– confers some sort of economic benefit on its holder
(where this benefit must derive specifically from its
not being generally known, not just from the value
of the information itself)
– is the subject of reasonable efforts to maintain its
secrecy.
• Rights Granted:
– Ability to stop others from unfairly taking
How do you gain Trade Secret
protection?
• Keep your secret secret.
Examples
Trademarks
• Definition:
– A distinctive sign or indicator used to identify
that the products or services originate from a
unique source, and to distinguish its products
or services from those of other entities
• Rights Granted:
– Ability to stop others from unfairly using
How do you gain Trademark
protection?
• Use your mark on a product
• Register [Optional, but recommended]
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File a registration
Wait
Respond to an office action (if necessary)
Wait
Repeat Steps 3 & 4 (if necessary)
Have registered trademark status ®
Examples
Copyrights
•
Defintition
– Copyright protection subsists in original works of authorship fixed in any tangible
medium of expression, now known or later developed, from which they can be
perceived, reproduced, or otherwise communicated, either directly or with the aid
of a machine or device.
•
Rights Granted:
– Ability to stop others from
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Making copies
Prepare derivative works
Distribute
Perform publicly
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Motion
Audio
Display publicly
How do you gain Copyright
protection?
• Put the work in a tangible media
• Register your copyright [Optional]
Examples
Who owns my copyright?
•
Copyrights
– Written works belong to the author.
– Copyright protection lasts for life of
author plus 70 years (“Mickey Mouse
Copyright Protection Act”)
Who owns my copyright?
Exception: “Work for Hire Doctrine”
1. Works created by employees are owned
by the employer.
2. Works created by independent
contractors are property of the writer,
unless (1) the work is specially ordered or
commissioned [as part of one of 11
categories of work] and (2) the parties
agree in writing that the work is a “work
for hire.”
Patents
• Requirements:
– Novelty
• Subject matter must be new - not published; not in public use; not offered for
sale.
• In the US there is a one-year grace period; outside the US, there is no grace
period.
– Utility
• You must demonstrate that the invention is useful.
– Non-obviousness
• The subject matter must not be "obvious to one skilled in the art" - i.e., a
person trained in the relevant technical area.
What rights are granted?
• Ability to stop others from
– Making
– Using
– Offering for sell
– Selling
– Importing
How do you obtain a Patent?
• 1. Draft a patent (4 to 8 weeks)
• 2. Wait (2 to 4 years)
• 3. Respond to first office action (3 to 6
months)
• 4. Wait (3 to 6 months)
• 5. Repeat Steps 3 & 4 (if necessary)
• 6. “Hopfeully” have issued patent
Examples
Velvet Type
Fabric and
Method of
Producing the
same
Velcro
Examples
Incadescent Lamp
Edison
Examples
Gameboard
(i.e. Monopoly)
Examples
Airborne
Enhancement
Device
Examples
Method of
concealing
partial baldness
Who owns my patent?
• Patents
– A US patent application must be filed in the
name of the inventor(s).
– A US patent provides protection for 20
years from the date of filing.
Who are the Inventors?
• Sole Inventor
• Teams of Inventors
– The inventors are those who made a
creative contribution - not “pairs of hands.”
– Inventorship is defined under patent law.
– Sometimes can’t be determined until the
patent application is written.
– May change during prosecution.
Who are the Inventors?
• In the US, inventorship is determined on
the basis of a creative contribution to the
invention being claimed, not on the
basis of the amount of work performed.
• A patent is granted only to the actual
inventors. Naming the wrong inventors,
or not naming all the true inventors, can
lead to an invalid patent.
Who are the Inventors?
• Who gets the patent if two applications
are submitted?
– In most countries, priority goes to the first to
file a patent application.
– In the US, priority goes to the first to invent,
provided he/she was diligent. This may be
favorable to the inventor but is often hard to
prove. This rule expands the job market for
patent attorneys in the US.
Who owns my patent?
• Assignments
– An assignment is a formal transfer of
ownership from one party to another.
– When a patent is assigned, the transfer is
recorded in the US Patent Office.
– Employers will typically require an
assignment for any employee invention.
Cost of a Patent
• $330 filing fee if a the inventor files as a
small inventor
• UC will spend $15,000 - $20,000 for
filing a patent in the US
– $10,000 - $20,000 to keep patent
– Foreign Patents will also be about $15,000
to $20,000
Inventing at UC
• Average 110 invention disclosures/year
– Split between Engineering and Medicine
• 40-50% of these become provisional
patents
– Low cost
– Allows for publishing
– Protects for a year
• 10% of provisional patents will become
patents
University Policy on IP
• This policy applies to all discoveries, inventions or patents
that result from research or investigation conducted
– By any person, whether employee, student or volunteer, in
any experiment station, bureau, laboratory, research facility,
or other facility of the university or with funding, equipment, or
infrastructure provided by or through the university; or
– By an employee of the university acting within the scope of
his or her employment, regardless of the location of the
research or the nature of the funding, equipment or
infrastructure used.
What can you do with IP?
• Stop others
• Let others use it
Stop Others
What does UC do with IP?
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Disclose
Assess
Protect
Market
License
Reward
Disclose
http://www.ipo.uc.edu/index.cfm?fuseaction=home.forms
Assess
• What is the Invention?
• What other products are out there?
– Commercial or otherwise
• How is this product different than the other products?
– Advantages and disadvantages
• How do you protect it?
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Patent
Copyright
Trademark
Trade Secret
Market
• Exactly who wants to buy this product?
• Are there other uses which this product
can be used for?
• Who else does this? How
does their product
compare?
License
• Licensing = selling
– A license agreement is in its simplest form
a sale
• The goal is to find the interested parties
who want the product and meet the
valuation of the product
Reward
• The University’s primary goal in
licensing a product is in obtaining a
return on the investment made
• Policies exist for licensed items to
reward the creators/inventors for their
contributions
http://www.ipo.uc.edu
Contact Information
Geoffrey Pinski, J.D., Director
Address:
University of Cincinnati
Office of Entrepreneurial Affairs &Technology Commercialization
51 Goodman Dr., Suite 240
Cincinnati, Ohio 45221-0829
Phone:
Email:
(513) 558-5696
Geoffrey.Pinski@uc.edu
Rules for Revolutionaries
by Guy Kawasaki
• Heavier-than-air flying machines are impossible. – Lord Kelvin,
1895
• The “telephone” has too many shortcomings to be seriously
considered as a means of communication. The device is
inherently of no value to us. -- Western Union internal memo,
1876
• I think there is a world market for about five computers. -Thomas Watson, IBM, 1943
• There is no reason for any individual to have a computer in their
home. – Ken Olsen, DEC, 1977
• 640K ought to be enough for anybody. – Bill Gates, 1981
Wrap Up
• Going from the lab to real world takes
perspiration and money
• Patents provide the IP protection to
prevent others from stealing ideas
• ipo.uc.edu is web site at UC
Submit an invention disclosure with your advisor if you
have an idea that should get protected