September 8, 2015 ECE 445

• Steven Wille
• Office of Technology Management
• Protect (patent, copyright, trademark) Illinois intellectual property
• Promote (License, apps, publication, sponsored research support, etc) Illinois intellectual property ($ and prestige)
• Talk about IP ownership and patents
September 8, 2015 ECE 445

• Virtually anything invented at University of Illinois is owned by UI
• THIS Senior Design Class has an exemption from this General Rule
• In this class, you own the invention if:
• No UI employees contributed
• You used ONLY standard ECE 445 resources
• If you invent something in this class and want to make money with it, get an ownership opinion in
writing from OTM
September 8, 2015 ECE 445

• If you want to build/market it,
• Some inventions will benefit from patent protection
• Patents cost money and take time
• $20,000-$70,000 for ONE US patent
• US patents cover MAKING and SELLING in the US
• Usually 3-4 years from patent application until USPTO grants/denies
• “Granted” may not mean GOOD claims are granted
• Patent rights last 20 years from APPLICATION date
• Patentable if NOVEL, NON-OBVIOUS, and USEFUL
• Software/math VERY hard to patent with current law
September 8, 2015 ECE 445

• You need to choose WHAT to patent and WHEN to patent
• US patent law is now “first INVENTOR to file”
• You have 12 months to file a patent application after you have made an ENABLING, PUBLIC disclosure
• (you have ZERO months if you want non-US patents)
• You might want to patent the FIRST version of the invention
• But, you may find that your design revisions look nothing like your FIRST version
• You MIGHT be able to file CONTINUATIONS or
CONTINUATIONS-IN-PART of the FIRST version
September 8, 2015 ECE 445

• A patent gives you the right to exclude others from practicing your invention
• There are no patent police to call if somebody infringes
• YOU must look for and find infringers
• YOU must tell them to stop
• YOU may have to take them to court to make them stop
• You can also license your patent rights to others
September 8, 2015 ECE 445

• Your patent probably does not cover ALL aspects of the PRODUCT you will make
• Just because you have a patent for part of the product does not mean you have FREEDOM to
OPERATE
• You may need to license somebody else’s patent(s) in order to have FREEDOM to OPERATE
September 8, 2015 ECE 445

September 8, 2015 ECE 445

• Idea
• Invention
• Product
• Market
• Profit
Patents are important here
September 8, 2015 ECE 445

• Most people think…I have a cool invention, I need a patent
• Instead, you should be thinking…I have a cool solution to a real problem, I am going to try to market it, and I may need market protection via a patent.
September 8, 2015 ECE 445

• The US government grants an entity a 20 year monopoly to defend it’s IP, as long as it teaches the IP via the patent
• The government does not defend the patent
• Defending usually means law suit
• A US patent costs applicant about $40K to file and prosecute
• Usual patent granting (denial) time is 3-4 years
• To be patentable, the invention must be:
• Novel (never done before)
• Non-obvious (combining other inventions is obvious)
• Useful
• One year to file a US patent application after an enabling public disclosure, otherwise you will lose right to patent
• In March, 2013, US became “first inventor to file” country, grace period effectively shrinks
September 8, 2015 ECE 445

• Diagnostic Photonics is an
Illinois start-up based on
Optical Coherence
Tomography innovations from UI (Boppart and Carney)
• IP is used to diagnose breast cancer resection margins
DURING surgery
September 8, 2015 ECE 445

• Deuterium (Lyding and Hess) prolongs the life of semiconductors
• This IP is being licensed to makers of memory chips and processors
September 8, 2015 ECE 445

• Current Licensee requests termination of License to a portfolio of Illinois’ patents. They say the annual minimum payments are too high.
• Licensee websites suggests they are selling products made using these patents.
• What does UI-OTM do about this?
September 8, 2015 ECE 445

• Trademark troll
• UI Licensee obtained a trademark (TM type, not ® type)
• Licensee gets a cease and desist letter from troll lawyer
• Lawyer offers to sell the ® to Licensee
September 8, 2015 ECE 445

• Corporate patent budgets steady, foreign component decreasing
• Many companies cross license to key competitors
• Patents are used to block competitors out, and to stake market claims
September 8, 2015 ECE 445