Now that you have an invention…
Who am I and why am I here?
 Steven Wille
 Office of Technology Management
– Protect (patent, copyright, trademark) Illinois
intellectual property
– License Illinois intellectual property ($ and prestige)
Illinois Intellectual Property
 Virtually anything invented at University of
Illinois is owned by UI
 THIS Sr DESIGN CLASS has an exemption
from this Rule
 If you invent something in this class and want
to make money with it, get an ownership
opinion in writing from OTM
The Product Development Process
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Idea
Invention
Product
Market
Profit
Patents are
important here
Why do you want a patent?
 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.
What is a Patent
• 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
Example of use of Illinois IP
 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
Another Example
 Deuterium (Lyding and
Hess) prolongs the life of
semiconductors
– This IP is being licensed to
makers of memory chips and
processors
And Another Example
 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?
Last Example
 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
Outside UI
 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
Back-up
Another Example
 Dr Scott White and others at UIUC developed
technology to “self heal” coatings and
composites
– This suite of inventions was exclusively licensed to a
start-up funded, in part, by IllinoisVENTURES
– The new company must develop the inventions into
products, then market them and defend them in the
marketplace
Use of Patents at UI
 Prof Nick Holonyak…VCSEL (Vertical Cavity
Surface Emitting Laser)with Native Oxide
– Enables Opticomm industry to transmit data
inexpensively and at high speed. This is the fiber
optic network for short haul and long haul
– VCSEL invention was published by Prof Holonyak and
his group, then many companies made N.O. VCSELS
– UI went to 64 companies and offered them licenses
– This invention is the largest royalty generator at
UIUC
– At largest licensee last week…gathering
infringer data