Intellectual Property
March 4, 2015
Don Keach
Director, Intellectual Property Development and
Technology Transfer Office
Copyright University of Kentucky 2015
Patent Decision Process
IPD-TTO
Pursue
Drop
Provisional
Application
Utility
Application
Drop
Patentability
Assessment
Utility
Application
Drop
Patentability Opinion
• A patentability opinion is a summary and
discussion of the prior art that might affect
the patentability of a disclosure. The
patentability opinion provides the patent
attorney’s opinion as to whether patent
coverage would be available and, if available,
the likely scope of that coverage.
Patents
• A patent is a constitutionally authorized grant
of ownership made by the federal government
to inventors conveying and securing to them
the exclusive right to exclude others from
making, using and selling an invention for a
period of 20 years from the application filing
date.
•
The Congress shall have power…to promote the progress of science and useful
arts, by securing for limited times to…inventors the exclusive right to their
discoveries. U.S. Const., Art. 1, Sec. 8
Patentability Criteria
• In order to be patentable a discovery must
meet three criteria:
– It must be useful
• Lacking - New compound with no real world purpose
• Sufficient - New compound with therapeutic activity in cultured cells
– It must be novel
• Not patentable if each and every element of the invention previously known
– It must be non-obvious
• Not patentable if, considering the prior art that existed at the time of invention, the
invention would have been obvious to a person of ordinary skill in the art
• All elements found in a combination of prior art references and a reason to
modify/combine to obtain the claimed invention
Disclosure Requirement
• Written Description
– Sufficient description to inform a skilled artisan that the applicant was in possession of
the claimed invention as a whole at the time the application was filed
– Example - Discovery of a new target in a biochemical pathway; contemplate method for
treating disease by inhibiting activity; no example of inhibitors
• Enablement
– Sufficient description to inform a skilled artisan how to make and use the claimed
invention without undue experimentation
– Example - Discovery of a compound having anti-cancer activity for one type of cancer;
contemplate class of compounds for treating cancer
Patent Eligible Subject Matter
Not Patent Eligible
Patent Eligible
Product of Nature
Isolated Genes (naturally occurring
sequence)
Artificial/Enhanced Product
cDNA
Methods involving principle, without
adding significantly more (correlation
between biomarker & outcome; certain
diagnostic methods)
Certain diagnostic methods making use of
novel regents, novel methods, and/or
adding something significantly more to
natural principle
Abstract Ideas
Algorithms
Certain Business Methods Software?
Preserving Patent Rights
• What actions can limit or destroy the ability to
obtain patent protection?
– Public Use
– Public Sale
– Publication
– Offer for Sale
Publication = Publically Accessible
• Has the information been made “Publically
Accessible”?
• Factors:
– Length of time the information was exhibited,
– Expertise of the target audience,
– Existence of reasonable expectation that the
information would not be copied, and
– Simplicity or ease with which the information
displayed could have been copied.
Examples of Publications
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Journal articles
Grants or studies made publicly available
Dissertation catalogued in a university library
Public dissertation defense
Poster presentation
Oral presentation
Pretty much anything put on the internet
except where password protected
Provisional Patent Applications
• Provides a priority date
• Must be converted to a utility application
within one year or the priority date is lost
• Does not require claims
Developments in Patent Law
• America Invents Act
– Change from “First to Invent” to “First to File”
– Changes to inventor’s own publication “exception”
• One year grace period may be affected
– Technical changes to reexamination rules
• Ex parte reexamination
• Inter Parties Review
• Post Grant review
Commercialization I
• A major purpose of university tech transfer is
to make the results of research available for
the public good. In order to fulfill that
mandate universities have to work with
commercial partners.
Commercialization II
• Intellectual Property Development and
Technology Transfer, like other university tech
transfer offices, relies heavily on the inventors
to identify potential commercial partners.
This is in large part because the inventors are
publishing, attending conferences and
networking with colleagues, all activities that
can lead to contact with interested potential
partners.
What is in it for Inventors?
• After patent expenses are recouped the
royalties are distributed as follows:
– 40% divided among the inventors
– 20% to the inventor’s department(s)
– 20% to the inventor’s college(s)
– 20% to the university
MTAs & CDAs
• Material Transfer Agreement
– Use when sending or receiving research materials
• Confidential Disclosure Agreement
– Use when confidential/proprietary information
will be shared with or by another party (university,
company, individual, etc.)
– a.k.a. nondisclosure agreement and secrecy
agreement
MTAs and CDAs
• Forward to the IPD-TTO for review and approval
– Contact Natasha Jones,
ASTeCC A140
ph. 218-6554
tasha.jones@uky.edu
Authorized signatory:
IPD-TTO Director
Not faculty, staff or
students