Intellectual Property
and
Technology Transfer
Ron Huss, Ph.D., Associate Vice President of Research and Technology Transfer
Michael Brignati, Ph.D., J.D., Associate General Counsel
What is Intellectual Property?
• Intellectual Property is:
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Copyrights
Patents
Trademarks
Trade Secrets
Intellectual Property 101
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Copyrights
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Protects works of authorship that is fixed in a tangible medium
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Term: Life of the author + 70 years
Patents
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A patent secures for a limited time the right to exclude others from making, using, or selling an invention in the US
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Process, machine, article of manufacture, or a composition of matter
Term: 20 years from filing date
Trademarks
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A patent DOES NOT give the inventor the right to make and sell his invention
Contract between the US government and an inventor – NOT A MONOPOLY
What can be patented? “Anything under the sun made by man.”
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Examples: Articles, books, software code, music, works of art, engineering drawings and schematics
Word, name, symbol, or device that identifies the source of good or services
Term: Lasts as long as the mark is continuously used in commerce
Trade Secrets
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Any type of information that:
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is not commonly known or available to the public;
derives economic value from not being generally know; and
is the subject of reasonable efforts to maintain its secrecy
Term: Trade secrets do not expire so long as they remain a secret
How Does Penn State Define Intellectual Property?
• Policy IP01
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“Research intellectual property” is the term used to describe the discoveries, inventions and creations
with potential commercial value that result from research activities. Most research intellectual
property developed at the University can be protected by patents, but some University research
intellectual property (i.e. software) is more appropriately protected by copyright. Although some
research intellectual property may be protected by trademark or trade secret, it is rare for the
University to utilize these methods of protection.
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Subject to the Intellectual Property Agreement
“Instructional intellectual property” is the term used to describe materials produced for instruction in
any format, including (but not restricted to) print materials, video recordings, audio recordings, and
digital materials.
“Scholarly intellectual property” is the term used to describe materials resulting from scholarly,
literary, and artistic work such as journal papers, books, essays, poems, paintings, sculpture, musical
scores, etc. in any format, including (but not restricted to) print materials, video recordings, audio
recordings, and digital materials.
• Sponsored Research Agreement ¶ 1.2
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“Intellectual Property” shall mean those inventions and/or discoveries conceived or reduced to
practice in performance of this Project and resulting patents divisions, continuations, or substitutions
of such applications and all reissues thereof, upon which a University employee of agent in the named
inventor.
Sponsored Research Agreement ¶ 9
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Sponsor has the right to take ownership of Intellectual Property. University reserves the right to
file a provisional patent application to protect Intellectual Property in circumstances where
University has an expedited need to publish or present results. University will promptly disclose
Intellectual Property to Sponsor in writing. Sponsor has ninety (90) days from the receipt of the
disclosure to request University to assign ownership to Sponsor. In consideration for assigning
ownership, Sponsor shall reimburse University for any patent protection costs incurred. Sponsor
agrees to pay a 1% royalty on net sales of products or processes utilizing Intellectual Property
when annual sales of such products or processes exceed $20 million. University retains the right
to use Intellectual Property for non-commercial research and educational purposes. In the event
University background intellectual property is required to practice Intellectual Property, University
will negotiate an option or license to the extent such rights are available.
Sponsor has the right to take ownership of the IP
• All researchers must agree with this approach
• It is OK for researchers to disagree with this approach
• It is OK for researchers to ask questions and discuss this approach
• There is a process for assigning IP to Sponsor
• Assignment is transfer of ownership
• Need to clearly define IP being assigned to Sponsor
• Do not accept “Penn State hereby assigns” language in research agreement
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IP has not been clearly defined
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Consequently, Penn State does not own IP at this point
• Sponsor has choice AND researchers have a choice
• Researchers should be aware that assigning IP to the Sponsor will most likely preclude using this
assigned IP as a basis for future research projects with other companies
University reserves the right to file patent applications
• Why would Penn State file a patent application if we intend to assign ownership to
Sponsor?
• If Penn State files a patent application, then Penn State will offer to assign patent
rights to Sponsor.
• How many times has Penn State filed a patent application under these circumstances?
• If Penn State does not file a patent application, then Penn State will offer to assign the
invention disclosure to Sponsor.
University will promptly disclose IP to the Sponsor in writing
• Researchers prepare and submit an invention disclosure to college research office
• College research office forwards invention disclosure to Office of Technology
Management (OTM)
• OTM contacts Sponsor to discuss assignment of IP
• OTM collaborates with the Office of General Counsel (OGC) to assign IP to Sponsor
Sponsor has 90 days to request assignment of ownership
• Sponsor has choice:
• To take ownership of IP from Penn State
• To decline to take ownership of IP – then Penn State will continue to own IP and treat it like any
other invention disclosure
• The process for assigning IP to Sponsor
• Researchers help to clearly define IP by completing/submitting an invention disclosure to college
research office
• Intellectual Property Agreement - researchers promise to assign IP ownership to Penn State
• Researchers assign IP to Penn State
• Penn State assigns IP to Sponsor
• How many times has Penn State assigned IP to Sponsors?
If assigned, Sponsor shall reimburse patent costs
• If Penn State filed a patent application and it is assigned to
the Sponsor, then Sponsor will reimburse Penn State for
its out-of-pocket patent expenses
• Out-of-pocket patent expenses are typically $2000 - $3000
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Can be as high as $10,000 to $15,000
Sponsor agrees to 1% royalty on sales exceeding $20M
• If the Sponsor is wildly successful in commercializing IP assigned by Penn State (i.e., net
sales in excess of $20 million), then the Sponsor will pay a 1% royalty in these sales
share filed a patent application, which will shared among Penn State and the inventors
• The “Bonanza” clause
• Normally, Penn State and its researchers will not benefit financially form the Sponsor’s
use of the assigned IP.
• How many times have Sponsors shared financial benefit with Penn State and its
researchers?
University retains rights for non-commercial research & education
• Penn State always retains these rights in all of its agreements.
• This is accomplished in the Assignment Agreement
Sponsor has option to license “background” IP
• Sponsor has the right to know upfront if any Penn State “background” IP will be
required for the Sponsor to practice new IP developed during the research agreement
• If available, Penn State will license background IP to Sponsor on favorable terms
• How many times has Penn State licensed background IP to Sponsors?
Penn State Industry and Private Research Expenditures
Feedback on Penn State’s IP Sponsored Research Policy
• Feedback from Sponsors?
• Feedback from Faculty?
• Feedback from Negotiators?