Introduction to Intellectual
Property
Nitin Virmalwar
Technology Commercialization Office
City University of New York
555 W. 57th Street, Suite 1407,
New York, NY 10019
1
Agenda
•
•
•
Why we care?
Types of Intellectual Property
How to Identify IP
Protect IP
Commercialize IP
•
Brief Introduction to IP-policy
2
Why We Care?
“ IP make up >70% of the value
of Fortune 500 companies.”
- PricewaterhouseCoopers Ltd.
3
Market Cap
Net Asset Value
= $ 111 Billion
= $ 27 Billion
As of Nov 3, 2008
4
Market Cap
N.A.V.
= $ 65 Billion
= $ 19 Billion
As of Nov 3, 2008
Market Cap
N.A.V.
= $ 89 Billion
= $ 11 Billion
As of Nov 3, 2008
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Constitutional Basis
“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…”
U.S. Constitution, Article I, Section
8, Clause 8.
6
What does Constitution Say?
• Purpose
• Means
: Promote science and useful arts
:
» Grant Exclusive Right
» For a limited period
• Trade Off
:
» Right for Disclosure
• Subject Matter :
»“Discoveries” → Patents
» “Writings”
→ Copyright
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Patents
Source
: Constitution & Patent Law
Purpose : Promote progress of Science
It Confers :
» Right to Exclude others - making, using or selling
» Right is limited in Time (~ 20 years)
Require
:
» Patentable subject Matter
» (a) Novel (b) Non-obvious (c) Useful
» Process, Apparatus, Composition of matter or
Manufacture
8
Types of Patent
• Utility Patents
 Term = 20 years
 Require novelty, non-obviousness, usefulness
• Design Patents
 Term = 14 years
 Require only novelty, protects aesthetics (looks)
• Plant Patents
 Term = 20 years
 Also protected under Plant Variety protection Act
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Back to Constitution
“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…”
U.S. Constitution, Article I, Section 8,
Clause 8.
10
Copyright
Source : Constitution & Copyright Law
Purpose : Promote Progress of Useful Arts
It Confers :
» Right to Exclude others
» Right is limited in Time (~ Life + 70 years)
Require :
» Original
» Work of authorship
» Fixation
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Copyright
“[O]riginal works of authorship fixed in any
tangible medium of expression… includes
literary*, musical, dramatic, pictorial, graphic,
sculptural
works,
motion
pictures,
architectural works…”
17 U.S.C. § 102(a)
(* also includes computer programs)
Qu: Computer programs patent or © ?
12
Copyright
Copyright protection is NOT available to
“idea, procedure, process, system, method of
operation, concept, principle, or discovery…”
17 U.S.C. § 102 (b)
* What about computer programs?
13
Qu: Boston Scientific Group
 Would it be legal to use the general “ideas” of a
copyrighted material (PhD Thesis) ?
 What if we are able to reproduce a device/system
using information provided by a manufacturer on the
web?
 Is it ok to reproduce a device/system and use for
our personal needs and not for marketing and sale?
14
Other Types of IP
• Trademark
Source : Lanham Act & Common Law
Purpose :» Prevent Consumer Confusion
» Identify Source of Goods/Services
» Transfer of Good-will/reputation
Term
Req.
: Possibly for unlimited time
:» Distinct
» Non-descriptive
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Example
16
Example
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Other Types of IP
• Trade Secrets
Source
Purpose
Means
Term
Subject Matter
: Contract Law
: Keep information secret
: Confidentiality Agmts
: As long as kept secret
: Any information
Qu: Can you think of a case where trade-secrets
are more useful than patents?
18
Problem 1 – Identification
Advise ACME Inc. on
commercialization of “Tefal”
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Facts:
ACME Inc. wishes to protect a product comprising a new chemical formula
(Tetrafluorethylene) which when used on, or applied to kitchen utensils has the
characteristics of preventing food in general and eggs in particular from sticking to the
pan.
(1) The company wants to ensure that it has sole use of the formula.
(2) After many unsuccessful attempts, the company developed a method to coat TFE
on to frying pans in the most economical way. How to protect the method?
(3) The company wishes to market the frying pans that are coated with
Tetrafluorethylene under a commercial name –‘Tefal’.
(4) The company also wishes to enhance the sale of its frying pans not only by using
the Tetra formula but also by giving them a more appealing, aesthetic and new
aerodynamic ‘shape’.
(5) The company prepared a TV ad. It wants to make sure that nobody will use the
music or words of the song, nor the short films made for TV.
(6) One of the company employees while working in her home kitchen learned
methods of simplifying cooking using the Tefal frying pans. She wrote a book
describing the Tefal recipes. She wants to sell the recipe book but not share the
profits with Tefal. Can she legally do it?
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Questions?
------ Break ------
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Part II : Obtaining a patent?
Major Steps:
1.
2.
3.
4.
5.
6.
Determining Inventorship & Ownership
Drafting & Filing
Publication
Search & Examination
Grant
Maintenance
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Inventorship




Inventor = Conceived the invention
Conception – formation of clear, permanent and definite idea in
mind
One who simply followed instructions and reduced invention to
practice is not an inventor
Two persons can be “joint inventors” even though they did not:




physically work together at the same time;
make the same type or amount of contribution;
each make a contribution to the subject matter of every claim
In case of multiple inventors, each named inventor must have
made a contribution, individually or jointly, to the subject matter of
at least one claim
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Inventorship



Inventorship is different from ‘Authorship’
A patent may be held invalid if the inventorship is
incorrect
In case of multiple inventors, each named inventor
must have made a contribution, individually or jointly,
to the subject matter of at least one claim
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Ownership
o Default: Inventor is the owner
o Exceptions : Obligation to assign




Employment Contracts
Research Agreements
Federal laws (e.g. Bayh-dole)
Shop Rights
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CUNY IP Policy
•
Ownership


•
Revenue Sharing



•
Default : CUNY owns all the IP generated in CUNY labs
Exception : Research collaboration agreements, funding
agency contracts
50% to Inventor(s)
25% to University
25% to Inventor(s) college
Link:- http://web.cuny.edu/research/technology-commercialization-office
(Google: “CUNY + TCO” and follow first link)
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Ownership
•
Ownership under Boston Scientific
Research agreement :
–
–
Old Agmt : Boston Scientific owns all I.P.
New Agmt :
•
•
–
CUNY owns the I.P.
Boston Scientific shall have an “Option” to negotiate a license
Depends on contributions of each side
Qu: What rights/benefits do you get?
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Part II : Obtaining a patent?
Major Steps:
1.
2.
3.
4.
5.
6.
Determining Inventorship & Ownership
Drafting & Filing
Publication
Search & Examination
Grant
Maintenance
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Filing
Patents are territorial
Need to file in every country of interest
Must do it simultaneously
A number of International treaties to
simplify international patent prosecution
Two most important treaties
• Paris Convention
• Patent Co-operation Treaty
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Filing : Paris Convention



Right of claiming priority
Equal treatment
Almost every country is a member
US
UK
AU
CN
Priority
Date
KR
12 Months
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Patent Co-operation Treaty
•
•
•
•
Almost every country is a member
Delays Patenting Expenses
Streamlines International Patenting
Comprise of:
 International Phase
 National Phase
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<- First 12 Months ->
>
>
Month 30
I
N
H
I
P
U
B
L
I
C
G
H
E
S
T
V
A
L
PCT/Foreign Budget:
~ $80 - $150K
U
E
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© 2007 JMaslow
$10-20K
+
Plus $20-30K
+
Plus $50-100K
Lets Assume ACME Inc. Filed A
US Utility Patent Application. What
next?
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Part II : Obtaining a patent?
Major Steps:
1.
2.
3.
4.
5.
6.
Determining Inventorship & Ownership
Drafting & Filing
Publication – 18 months from filing
Search & Examination
Grant
Maintenance
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Patent Search & Examination
Require:» Patentable subject Matter
» Novel
» Non-obvious
» Useful
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(a) Patentable Subject Matter
“ …anything under the sun made by man…”
Diamond v. Chakrabarty, 447 U.S. 303 (1980)
• What did Chakrabarthy invent?
»
Oil eating bacteria.
Exclusions:
»
»
»
Laws of Nature
Abstract Ideas
Natural Phenomenon
36
Question?
•
•
Could Einstein patent his celebrated law
E = mc2?
No
Could Einstein patent a nuclear reactor which
optimizes energy output by using the formula
E=mc2.
Yes
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(b) Novelty
• Prior publication 1
– Alloy containing : Cu + Sn
• Invention –
– Alloy comprising : Cu + Sn + Mn
Question: Is the invention novel?
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(b) Novelty
• Prior publication 2
– Alloy comprising : Cu + Sn + Mn + Al
• Invention –
– Alloy consisting of : Cu + Sn + Mn
Question: Is the invention novel?
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(c) Non-obviousness
 Test differ in US and rest-of-the world
 Broad sense: “Would a person ordinarily
skilled in the art, at priority date, after
reading the prior art documents) be lead
to the claimed invention?”
 Yes (obvious)
 No (non-obvious)
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Example
•
Prior art –
– Mobile Phone
– Camera
•
Invention – Mobile phone with
integrated camera
Non-obvious ? Patentable?
41
Analysis




Patentable Subject Matter
Novel
Non-obvious
Useful
42
Part II : Obtaining a patent?
Major Steps:
1.
2.
3.
4.
5.
6.
Determining Inventorship & Ownership
Drafting & Filing
Publication
Search & Examination
Grant
Maintenance
43
Questions?
------ Break ------
44
Commercialization
A 100 acre land including 3 house and
huge apple tree plantation. How to
make $$$ ?
»
»
»
»
»
»
Sell everything
Rent everything
Sell things separately
Rent things separately
Rent for a while and then sell
Take a loan on the property and invest in stock
market
45
Commercialization
•
•
•
•
I.P. is like real property
Sell or Rent
Sell : Assignment
Rent: License
46
Commercialization for Tefal?
•
•
Assignment
Part-assignment
–
•
License
–
•
Field of use, term, territory
Field of use, term, territory
License
–
–
Exclusive License
Non-Exclusive License
47
Technology Commercialization Office
 Identify commercializable inventions
 Protect CUNY IP
 Market the technology/patents to commercial
partners for licensing
 Negotiate, execute and monitor licenses
 Facilitate collaborations with corporate sponsors
 Other Agreements (CDA, MTA, etc.)
48
Qu: Boston Scientific Group
 What if we are able to reproduce a device/system
using information provided by a manufacturer on the
web?
 Is it ok to reproduce a device/system and use for
our personal needs and not for marketing and sale?
49
Qu: NASA Group
•
•
•
•
•
•
•
•
•
•
Is it possible to have one’s name associated with a device they helped design without owning
it? (Economic v. Moral rights)
Is it considered patent infringement if a patented design is copied and the subject is created,
used but not sold? (Duke v. Madey)
I know it is possible to re-engineer a design that it is a new enough idea to be patented, even
though it was inspired by a patented idea. Yes.
Does the student/sponsor need to pay the patent owner if they are implementing the patent in
their design, assuming the patent is still within the active period? Maybe
Who has the right to the patent of the student design, the sponsor (NASA) or CCNY?
Do you have a law degree?
–
How is it helpful to have an undergraduate degree in a technical subject when pursuing a
degree in patent law?
Are the students legally bound to confidentiality even though nothing has been designed? Yes
–
How can one own something that doesn’t yet exist? – Explain the question.
What are some recent/famous patents that came out of CCNY? – Prof. Robert Alfano
Has CCNY ever sold any patents to private companies? – No. Against federal law.
Are there currently any private companies sponsoring CCNY research?
–
How do the college and company share the rights to the research? – As per IP policy
50
Contact
Nitin Virmalwar
Associate, Technology Commercialization Office
555 W. 57 Street, Suite 1407,
New York, NY 10019
T: 646-758-7906
F:646-758-7907
nitin.virmalwar@mail.cuny.edu
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