now that you have an invention…. who am i and why am i here? steven wille office of technology...
Post on 26-Dec-2015
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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
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
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
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