Intellectual Property
and Commercializing
Technology
Identifying, Protecting, Growing and
Commercializing Intellectual Property in both
Academic and Commercial Environments
Why this Seminar Series?
New Realities
• There are not enough academic positions for all
the PhD holders in the US.
• Companies are cutting back on R&D.
• Funding for all is research is flat or falling.
Academic
• More self funding by leveraging IP
Commercial
• Expectations of monetizing IP as part of
employment
• Creating own employment with start ups, etc.
Preparing for the New Reality
Fall
• Sept. 23
Fundamentals of IP
• Oct. 21
Patents and Patenting
Process
• Nov. 11
Technology
Commercialization and UR
• Dec. 9
How to Find Inventions,
Good Inventions and How
to find Prior Art
Spring
• Jan. 20
Assessing Market
Opportunity of New Tech
• Feb. 10
Working with Third Parties
• Mar. 17
Risk Assessment for Tech
Investments
• April 14
Software and Open Source
Software
12:00-1:00 Wilson Commons, 2nd Floor Gowen Room
Lunch Provided
Fundamentals of
Intellectual Property
Understanding the Classic Areas of
Intellectual Property: Copyrights,
Trademarks, Trade Secrets/Know How,
and Patents
Why does IP matter?
The most important assets, always for academic
institutions, and now also for most commercial
enterprises are:
1. Intellectual Property
2. Intellectual Capital
We are living in the Age of IP
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•
•
GM
Founded 1908
Employees – 212K
in 157 Countries
Factories on 5
Continents
Sold 9M vehicles
Market Cap $56B
WhatsApp
•
•
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•
Founded 2009
Employees – 55
400 million users
Market Cap $19B
What makes Intellectual
Property Different?
1. Intellectual property can be replicated at
little to no cost.
2. Intellectual property can be used by many
people at the same time.
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.
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.
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.
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.
Trademarks
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.
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.
Fields of
Use
The same mark can be used
for different goods and
services
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.
Trade Secrets and Know How
• Business and technical information not
publicly known.
• Value of trade secrets comes from their
confidential nature.
Types of Trade Secrets and
Know How
Business
Technical
Pricing
Processes
Customer Lists
Formulations
Supplier Lists
Software
Program Names
Technical Drawings
Launch Dates
Research
Org. Charts
Process Acronyms
Business Methods
Data
Legal Opinions
Value of Trades Secrets and
Know How
Trade Secrets provide competitive advantages in:
Pricing
Marketing
Technology
Product performance
Product delivery
Market presence
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.
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.
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
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
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.
Patent Requirements
• Novelty – Is it new?
• Non-obviousness – Would the
improvement be obvious to one of
ordinary skill in the art?
The Value of Patents
• Prevents others from using technology.
• Protects technology for your use by barring
others from patenting.
• Provides licensable material.
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).
NEXT!
Attend all the Seminars!
Fall
Spring
• Sept. 23
Fundamentals of IP
• Oct. 21
Patents and the Patenting
a Process
• Nov. 11
Technology
Commercialization and UR
• Dec. 9
How to Find Inventions,
Good Inventions and How
to find Prior Art
• Jan. 20
Assessing Market
Opportunity of New Tech
• Feb. 10
Working with Third Parties
• Mar. 17
Risk Assessment for Tech
Investments
• April 14
Software and Open Source
Software
12:00-1:00 Wilson Commons, 2nd Floor Gowen Room
Lunch Provided