University of Oklahoma
Norman, Health Sciences Center, and Tulsa
http://www.otd.ou.edu
Regina K. McNabb
Technology Transfer Administrator
Norman, HSC, and Tulsa Campuses
405/325-3800
rmcnabb@ou.edu
Mission Statement
The mission of the University of Oklahoma
Office of Technology Development (OTD) is
to stimulate the creation of intellectual
property and manage the resulting assets in
support of the mission of the University of
Oklahoma.
What is
Intellectual Property?
TRADE SECRETS
KNOW-HOW
Almost any subject
matter qualifies, but
must be SECRET
COPYRIGHTS
Ads, Labels, Brochures,
Software, Manuals
TRADEMARKS
PATENTS
Machines, Products,
Processes,
Compositions
Words, Slogans,
Logos, Shapes
DESIGN PATENTS
Ornamental Features of
Manufactured Products
Intellectual Property
Patent – Form of protection provided to an
Invention; Novel, Non-obvious, Useful
Copyright – Form of protection provided to
authors of “original works”
Trademark – Form of protection for a word,
name, symbol, or device that is used in trade
of goods
Trade Secret – Form of protection to not share
outside of company/university
Know-How – The expertise of the inventor(s)
Life of a Technology
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Discovery Process
Disclosure Process
Triage/Assessment Process
Protection Process
Commercialization Process
Discovery Process
• Identify Invention – Inventor(s)
• Document Discovery – Lab Notebooks
• Prior Art Search – Inventor(s)
• Publications?
• Question how novel is the idea?
• Official Disclosure to OU – Disclosure Form
Identify
Identify
Identify
Identify
Identify
Identify
Identify
Office of Technology Development
University of Oklahoma
Life of a Technology – Phase I
Technology
from
Sponsored Research
Disclosure Form
Completed by Inventor(s)
Answers questions on technology
Intellectual Property (IP)
www.otd.ou.edu
Technology
created from
Basic Research
Filed with the
Office of Technology
Development (OTD)
Identify
Identify
Identify
Identify
Identify
Identify
Identify
University of Oklahoma
Intellectual Property Policy
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Ownership
Disclosure
Processes
Royalties
University of Oklahoma
Royalty Distribution
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•
Inventor(s)
35% (before exp.)
Expenses deducted from balance
Percentages
College/Department
31%
based on
President’s Office
7.5%
Royalties
Vice Pres. for Research 7.5%
received less
Inventors’
OTD
23%
share and
Growth Fund
31%
Expenses.
Disclosure Process
• OTD website: www.otd.ou.edu
• Completion of Disclosure Form
• Short Form/Full Disclosure
• Disclosure Form signed and sent to OTD
Assess
Assess
Assess
Assess
Assess
Assess
Assess
Assess
Assess
Office of Technology Development
University of Oklahoma
Life of a Technology – Phase II
Resolve
Ownership
Triage
Technology
Marketing
Analysis
3rd Party
Validation
Assess
Assess
Assess
Assess
Assess
Inventor
Contacts
Assess
Assess
Assess
Assess
Triage/Assessment Process
• Decision Time
– Market under a Non-Disclosure Agreement
– Pursue Protection
– Defensive Publication
• Questions to Consider
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–
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Publication Bar?
Apply for patent protection?
Copyright/Trademark registration?
Keep as Trade Secret?
• Commercialization Aspects
– Is this a platform technology or not?
– Do we want to start-up a company?
– If so, are the requisite elements available?
Action Action Action Action Action Action Action Action Action
Office of Technology Development
University of Oklahoma
Life of a Technology – Phase III
Platform
Technology
Start Up Company
Management
Resources
No
Commercialization
Single
Technology
License to
For-Profit Company
Publish
Return to Inventor
Action Action Action Action Action Action Action Action Action
Technology Protection
• Patent
• Copyright
• Trademark
• Trade Secret
Protection Process
Determination of protection needed:
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Patent application - protection of an invention;
Trademark registration - protection of a word,
phrase, symbol or design;
Copyright registration - protection of an
original artistic or literary work; or
Maintenance of a Trade Secret.
Patent and Trademark Office
• Article 1, Section 8 of the United States Constitution
provides the basic role of the Patent and Trademark
Office (PTO). It has remained the same for over 200
years: to promote the progress of science and the
useful arts by securing for limited times to inventors
the exclusive right to their respective discoveries.
• Any person who “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” subject to the conditions and
requirements of the law.
Patent Process
• Provisional Patent
– Benefits
• Low Cost
• Fast Protection against Publication
– Negatives
• Provides Limited Protection
• Only what is described in the patent application is
covered
• Good for One (1) Year
• Regular Patent – Utility, Design, Plant
– Claims
– Prior Art
Patent Process, cont.
• Timing Issues
– Prior Art
– Public Disclosure or Use
– Publication(s)
• Patent and Trademark Office
– What you can expect
– www.uspto.gov
– Patent Attorney/Agent
• Costs
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Provisional: $1-2k
Regular (Utility): $10-20k
Foreign PCT: $3-4k Over 50 countries
Each Country: $2-10k
Plus Translations
Trademark
• A trademark is a word, phrase, symbol or
design, or a combination of words, phrases,
symbols or designs, that identifies and
distinguishes the source of the goods of one
party from those of others.
• A service mark is the same as a trademark,
except that it identifies and distinguishes the
source of a service rather than a product.
Trademark Registration
• Establishes rights in a mark based on
legitimate use of the mark
• Provides notice to the public
• Legal presumption of the registrant's
ownership of the mark and the registrant's
exclusive right to use the mark nationwide on
or in connection with the goods and/or
services listed in the registration
Trademark Registration, cont.
• Ability to bring an action concerning the mark in
federal court
• Use of the U.S registration as a basis to obtain
registration in foreign countries
• Ability to file the U.S. registration with the U.S.
Customs Service to prevent importation of
infringing foreign goods
Trademark Registration, cont.
• TM, SM - Any time you claim rights in a mark, you may
use the "TM" (trademark) or "SM" (service mark)
designation to alert the public to your claim, regardless
of whether you have filed an application with the
USPTO.
• ® - You may use the federal registration symbol "®" only
after the USPTO actually registers a mark, and not while
an application is pending. Also, you may use the
registration symbol with the mark only on or in
connection with the goods and/or services listed in the
federal trademark registration.
Trademark Registration, cont.
• United States Patent and Trademark Office www.uspto.gov
• File your application directly over the Internet through Trademark Electronic Application
System (TEAS) at
http://www.uspto.gov/teas/index.html
Trademark Registration, cont.
• Can be filed by mail, as well; no faxes
• No attorney or agent needed
• Can be renewed on line
• Can be renewed forever
Copyright
• Protects “original works of authorship”, such as
writings, music, and works of art that have been
tangibly expressed - including literary, dramatic,
musical, artistic, and certain other intellectual works,
both published and unpublished
• The 1976 Copyright Act generally gives the owner of
copyright the exclusive right to reproduce the
copyrighted work, to prepare derivative works, to
distribute copies or phonorecords and to perform or
display the copyrighted work publicly
• U.S. Code Title 17
Copyright Registration
• United States Copyright Office (not PTO) –
Library of Congress http://lcweb.loc.gov/copyright/
• Copyright Registration lasts for the life of the
author plus 70 years
• Protects the form of expression rather than the
subject matter of the writing
Copyright Registration, cont.
• Registration requires a completed application
form, the filing fee, and a “sample” of the work
mailed to the Library of Congress Copyright
Office
• Copyright protection subsists from the time
the work is created in fixed form. The
copyright in the work of authorship
immediately becomes the property of the
author who created the work. Only the author
or those deriving their rights through the
author can rightfully claim copyright
Copyright Registration, cont.
• In the case of works made for hire, the employer
is considered to be the author
• Mere ownership of a book, manuscript, painting,
or any other copy or phonorecord does not give
the possessor the copyright
• Copyright registration is a legal formality intended
to make a public record of the basic facts of a
particular copyright
Copyright Registration, cont.
• Copyright law provides several advantages
for registration
– Registration establishes a public record of the
copyright claim
– Before an infringement suit may be filed in court,
registration is necessary for works of U. S. origin
– If made before or within 5 years of publication,
registration will establish prima facie evidence in
court of the validity of the copyright and of the
facts stated in the certificate
Copyright Registration, cont.
• Advantages of registration, cont.
– If registration is made within 3 months after
publication of the work or prior to an infringement
of the work, statutory damages and attorney's fees
will be available to the copyright owner in court
actions. Otherwise, only an award of actual
damages and profits is available to the copyright
owner
– Registration allows the owner of the copyright to
record the registration with the U. S. Customs
Service for protection against the importation of
infringing copies
– Registration may be made at any time within the
life of the copyright
Trade Secret
• Information that companies keep secret to
give them an advantage over their
competitors – can be just about anything
• Disclosed technology is not shared outside
the parameters of the company or the
University (in our case)
• The formula for Coca-Cola is the most
famous trade secret
State of Oklahoma
State Questions 680 and 681
State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma
State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma
State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma
State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma
Sponsored Research
• Companies – For-Profit
• Non-Profit Organizations – ACS
• State Entities – ODOC
• Federal Agencies – NSF, NIH, NOAA
• Office of Research Services
Federal Regulations
• United States Code
– Title 17 – Copyrights
– Title 35 – Patents
• Sections 200 to 212 – Patent Rights in Inventions
made with Federal Assistance
• 37 CFR 401
• Bayh-Dole Act of 1980
Application of Intellectual
Property Using Federal Funds
Bayh-Dole Act of 1980
• Provides Grantee Organizations/Contractors title to
Inventions arising from federal funding agreements
• Requires pursuit of technology transfer opportunities
• Grantee/contractor must meet commercialization
milestones
• Requires reporting of all inventions and patents that
involve federal funds
• Government retains limited rights to invention
• Royalty-free license to practice the invention
Invention Reporting Requirements of
Grantee/Contractors – University
Administrative Requirements (per 37CFR 401.14)
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Implement Employee Agreements – as needed
Disclose Each Invention – within 60 days
Resolve Election or Waive of Title – within 2 years
File Regular Patent – within 1 yr. of election
Provide License to the Govt. – upon title election
Indicate Govt. Support on Patent – with patent appl.
Share Royalties With Inventor – when available
License Small Businesses – where feasible
Product Manufacturing in U.S. – required
Report on Invention Utilization – annually
OU/NSSL Agreement
DOC/NOAA-OU Cooperative Agreement
University of Oklahoma’s Treatment of IP
with Respect to NOAA Weather Partners
(University Memo)
Points of IP Treatment
• Government – non-exclusive, irrevocable,
non-transferable, royalty-free license for
governmental purposes
• OU – retains rights, title and interest in and
to the IP if OU employees are sole
creators
• Task I and II inventions – Joint Inventions
owned by OU and NOAA/DOC; either
rights may be transferred or assigned
Points of IP Treatment, cont.
• Joint Inventions – Revenues shared by
inventorship
• Copyrights – Government entities cannot
initiate; OU will initiate copyright and
provide a mechanism to transfer a portion
of the joint copyright to the Government
• CRADA’s – OU may negotiate a license
with the 3rd party where 3rd party would
receive same rights as if made by Gov’t
employee under CRADA
Results
• Agreements
– Licenses
– Sponsored Research Agreements
• Royalties
• Funded Research
Effects on NSSL Employees
• OU Employees
– Must notify OTD in accordance with IP Policy
– Benefit of Royalties and Sponsored Research
• Federal Employees
– Benefit of Royalties and Sponsored Research
– Recognition in patents and copyrights
Regina K. McNabb
Technology Transfer Administrator
Norman, HSC, and Tulsa Campuses
405/325-3800
rmcnabb@ou.edu