Joseph M. Noto
jnoto@nixonpeabody.com
(585) 263-1601
REASONS TO SEEK
PROTECTION FOR YOUR
RESEARCH DISCOVERIES
January 12, 2012
• Research discoveries, typically referred to as
Intellectual Property (IP), can be protected in
a variety of ways, such as by patents,
copyrights, trade secrets, and trademarks.
While the requirements may vary depending
upon which mode of protection is chosen, the
reasons to seek protection are generally
applicable to all. For the purposes of this
presentation, we will focus on patent
protection.
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1) Increase The Opportunity For Funding Your
Research
A. Supports University ability to attract funding
from external sources. (federal, corporate,
state & local govt., foundations).
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B. Government Funding
NIH considers innovation (is the research
novel?) and significance (useful to address
an important problem or critical barrier to
progress in the field?) as two of the five
scored review criteria in determining
allocation of grant funding. Both of these
are also criteria in determining patentability,
i.e., novelty and usefulness.
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• 35
U.S.C. 101 Inventions patentable.
• 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.
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C. Sources for additional sponsored research
through Corporate licensees.
• Commercial value of exclusive rights
valuable to business.
• Companies interested in licensing
technology protected by patents.
• Patents critical to start-ups to attract
investors.
• 60% of University licensees have
connection with inventor.
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D. University Technology Development Fund provides
capital to support researchers commercialization of
their discoveries.
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2. Support maintenance of strong research
funding base
• Invention Disclosure entered into database
tracking system.
• The University owns the IP developed by
inventors employed or otherwise financially
supported by the University or developed with
substantial use of University resources.
University Policy on IP and TT sections 1.5, 1.6, 2.1.1,2.4
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• IP developed under externally sponsored
research typically provides sponsors with
certain rights. Office of Research and Project
Administration (ORPA) together with OTT are
charged with monitoring compliance with
these obligations.
University Policy on IP and TT section 1.7
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• University is mandated under Federal Law to
report the creation of inventions from
federally sponsored grants to the U.S.
Government and grant the government a
non-exclusive royalty free license to the
invention.
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Publication vs. Patent
• Broad dissemination and
access to information
• Control access and use
of information
• Not necessarily mutually exclusive.
• Primarily issue of timing, apply for a patent before
publication.
• Preserve the benefits of patent protection while
disseminating information.
• Commercial application drives funding, no patent no
product.
• Patent control of technology is limited by the scope of
the claims.
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• Although patent rights can be lost if patent
applications are not filed in a timely manner,
The University will rarely delay publication to
pursue intellectual property protection.
University Policy on IP and TT Section 3.2
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Patent vs. Publication
• Publish prior to or without filing for patent
application, lose potential for additional
funding. Submission of an abstract for
seminar can qualify as prior art publication.
• Public disclosure – implications under new
rules
› Can’t swear behind 3rd party prior publication.
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For Applications Filed Before
March 16, 2013
• First to Invent: The first party to conceive of
an invention and:
a) Have an Actual Reduction to Practice without
Abandonment, Concealment or Suppression
before the other party filed; or
b) Worked diligently from just before the other
party filed until there was a “Reduction to
Practice” wins.
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For Applications Filed Before
March 16, 2013
• A public disclosure by inventor made 1 year
or less before the effective filling date of the
claimed invention does not bar the U.S.
application.
• Any priority dispute with 3rd party is resolved
by determining the first to invent. Potential to
swear behind 3rd party prior publication.
• However, inventor prior public disclosure
forfeits rights in absolute novelty countries.
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For Applications Filed on or After
March 16, 2013
• First Inventor to File:
› Similar to First to File but retains certain
concepts such as it would be unfair if first
person to file derived the invention from
someone else.
› Derivation proceedings and a limited exception
for prior disclosures by at least one of the
inventors.
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For Applications Filed on or After
March 16, 2013
• A public disclosure by Inventor made 1 year or
less before the effective filing date of the claimed
invention does not bar the U.S. application.
• An intervening filing or public disclosure by a 3rd
Party will bar the U.S. application in the event that
the application is not fully supported under 35
U.S.C. 112 (written description and enable how to
make and use) by the public disclosure.
• However, inventor prior public disclosure forfeits
rights in absolute novelty countries.
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But How Often is the Public Disclosure That
Similar to the Filed Application?
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For Example:
•
•
•
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You publicly disclose that compound A inhibits
angiogenesis (the induction of blood-vessel
growth, often in association with a particular
organ or tissue, or with a tumor).
You later file an application claiming a method of
treating cancer by administering compound A
(which inhibits angiogenesis).
An intervening publication by a 3rd Party
discloses a genus of compounds which includes
compound A for use in a method for treating
cancer.
• In order to overcome the Third Party
disclosure you have to argue that your initial
disclosure is enabling for cancer treatment.
• It depends on what is in your initial
disclosure, however, more than likely you
will have to amend your claims to a method
of inhibiting angiogenesis.
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3) Opportunity for grad students to learn about
industry before leaving the university.
• In 2008, over 48,000 doctorates were awarded
in the United States (THE CHRONICLE) but there are
not nearly so many new faculty positions a
year. In fact, as the attached graph shows, only
about 51 percent of doctoral candidates sought
employment in academia in 2008, including
postdoctoral research positions. (GradShare)
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• Commercial value of exclusive rights valuable
to business
› Graduate students and post docs have value to
business providing technical expertise on
research in start-up or licensee company.
› Opportunity for grad students and post docs to
expand knowledge:
– Gain
awareness of the marketplace,
– Learn
about the industry and commercial aspects
of the technology
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– Resources
on campus to get introduced to
business side of industry.
•
Start-ups OTT/HTR/Center Entrepreneurship
•
Simon Business school/Center Entrepreneurship
– Understand
– Stepping
– Who
business model of small companies.
stone for employment.
better to continue to promote the technology
than your students.
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4) Royalties distributed to inventors,
department, school or college, IP pool
according to royalty distribution rules.
For intellectual property disclosed on or after February 1, 1997
1st cumulative $50,000
Inventors
50.0%
Department
20.0%
School or College
10.0%
IP Pool
20.0%
$50,001 to $250,000
Inventors
40.0%
Department
20.0%
School or College
15.0%
IP Pool
25.0%
$250,001 and above
Inventors
35.0%
Department
20.0%
School or College
20.0%
IP Pool
25.0%
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• What you need to do to support the process
› Fill out OTT invention disclosure form.
› Include working example, brief description of
invention, and practical application.
› Length of time of patent procurement
– Application
– Office
preparation (up to several months).
action responses (issued years later, can
take several years to issue).
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• OTT – available to help
› Answer questions.
› Determine if disclosure to OTT is required or
not.
› Facilitate commercialization of University
discoveries.
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Summary
• The University strives to foster economic
development of the IP generated from its
research enterprise. Maintaining a strong
research funding base, generating funds to
support future research, attracting and retaining
talented faculty, commercializing tech, increasing
academic programs and upgrading research
facilities.
• All of these objectives are furthered by obtaining
protection for research developed IP.
• Submit Invention Disclosures to OTT early and
often.
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