intellectual property and commercializing technology identifying, protecting, growing and...
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Intellectual Property and
Commercializing TechnologyIdentifying, Protecting, Growing and
Commercializing Intellectual Property in both Academic and Commercial
Environments
Why this Seminar Series?New Realities
• There are not enough academic positions for all the PhD holders in the US.
• Companies are cutting back on R&D.• Funding for all is research is flat or falling. Academic• More self funding by leveraging IPCommercial• Expectations of monetizing IP as part of
employment• Creating own employment with start ups,
etc.
Preparing for the New RealityFall
• Sept. 23 Fundamentals of IP
• Oct. 21 Patents and Patenting Process
• Nov. 11Technology
Commercialization and UR• Dec. 9
How to Find Inventions, Good Inventions and
How to find Prior Art
Spring• Jan. 20
Assessing Market Opportunity of New Tech• Feb. 10
Working with Third Parties• Mar. 17
Risk Assessment for Tech Investments• April 14
Software and Open Source Software
12:00-1:00 Wilson Commons, 2nd Floor Gowen Room Lunch Provided
Fundamentals of Intellectual
PropertyUnderstanding the Classic Areas of Intellectual Property: Copyrights, Trademarks, Trade Secrets/Know
How, and Patents
Why does IP matter?The most important assets, always for
academic institutions, and now also for most commercial enterprises are:
1. Intellectual Property
2. Intellectual Capital
We are living in the Age of IP WhatsApp
• Founded 2009• Employees – 55• 400 million
users• Market Cap
$19B
GM• Founded 1908• Employees –
212K in 157 Countries
• Factories on 5 Continents
• Sold 9M vehicles• Market Cap
$56B
What makes Intellectual Property Different?
1. Intellectual property can be replicated at little to no cost.
2. Intellectual property can be used by many people at the same time.
Copyrights -Protects Creative
ExpressionArt worksFilms
PhotographsSculptureTheaterMusic
WritingsManuals
DocumentationSoftware
Technical drawingsMask works
Copyright protects the expression of an idea, not the idea itself.
Copyrights• A grant of an exclusive right to create copies of
the creative expression of the idea (not the idea itself).
It further includes the exclusive right to modify, create derivative works, distribute, etc.
• The protection is only against unauthorized copying, there is no bar to independent
creation.
Copyright Protection• Copyright protection arises at the moment of
creation.• Copyright protection is expanded by
registration of the work.• Protection varies across the world but is
typically life of the author plus a certain number of years.
Copyright Best Practices• Register copyrights with the US copyright
office. (easy, cheap and powerful!)• Don’t use, copy or transfer copyrighted
materials unless you have the correct rights (don’t forget this applies to software).
• Make sure you are obtaining rights in copyrighted materials from developers.
TrademarksTrademarks identify the source of goods or services.
Trademarks have value because of the association of the goods or services with that mark.
In addition the mark conveys associated information about the goods and services, including quality,
image, etc.
Trademarks can lose their identification of source when they become “generic”. Examples of former
trademarks that are now generic are escalator, aspirin, thermos, etc.
Trademark Protection• Trademarks are protected by registering in
trademark offices world wide• Trademarks are only enforceable in the country
where you own the registration• Protection continues only as long as the
trademark is in use.• Trademark protection has no time limit and
continues as long as the mark is in use.
Fields of Use
The same mark can be used for different goods
and services
Trademark Best Practices• Conduct a trademark clearance search prior to
selecting a trademark for your commercialization.• Pick marks that are distinctive and fanciful, not
descriptive or generic.• Do not use other party’s trademarks without
obtaining approval from the trademark holder.• Do not allow other parties to use your trademarks
without your approval. (For example the UR name and logo!)
• Register your mark with the USPTO.
Trade Secrets and Know How
• Business and technical information not publicly known.
• Value of trade secrets comes from their confidential nature.
Types of Trade Secrets and Know How
BusinessPricing
Customer Lists
Supplier Lists
Program Names
Launch Dates
Org. Charts
Business Methods
Legal Opinions
TechnicalProcesses
Formulations
Software
Technical Drawings
Research
Process Acronyms
Data
Value of Trades Secrets and Know How
Trade Secrets provide competitive advantages in:
PricingMarketingTechnology
Product performanceProduct deliveryMarket presence
Trade Secret Best Practices• Maintain confidentiality at all times!
Share the minimum necessary.• Have a CDA (NDA) in place when sharing
with a third party.• Mark all confidential materials with
“CONFIDENTIAL”.• Understand your obligations to keep other
party’s materials confidential.• Warning – Signing an NDA can limit your
ability to do research.
PatentsGrant of a patent is a bargained for
exchange.
Public disclosure of new and non-obvious technical
information in exchange for a period of exclusivity.
Patentable Inventions• Articles of Manufacture• Methods of Manufacture• Chemical Compositions
• Computer Programs (not universal)• Methods of Doing Business (not
universal)• Designs
• Other – Life forms, ?, everything under the sun
The Patent GrantThe patent holder is granted the right to prevent others from making, using, selling, or offering to
sell the claimed invention.
The patent holder is not granted the right to practice the invention.
Patents are territorial, only enforceable in the country of issuance.
Patent
Patents Cont.Patent Term: Period of Exclusivity is typically
20 years from the filing of the Patent Application.
First-to-File: The US is now (mostly) like the rest of the world, the first to file gets the
patent. It is very important to be timely with filing an application.
Public Disclosure: Disclosing an invention publicly before filing destroys all foreign
patent rights and can harm even a US filing.
Patent Requirements• Novelty – Is it new?
• Non-obviousness – Would the improvement be obvious to one of
ordinary skill in the art?
The Value of Patents• Prevents others from using technology.
• Protects technology for your use by barring others from patenting.
• Provides licensable material.
Patent Best Practices• Keep inventions confidential until filed
with the patent office.• Timeliness matters! It is a first to file
world.• Having a patent is not a right to use, just
a right to exclude others.• You must have an agreement in place to
obtain rights in patentable inventions.• Don’t give away your rights, understand
the consequences of agreements (prior to you even inventing).
Attend all the Seminars!Fall
• Sept. 23 Fundamentals of IP
• Oct. 21 Patents and the
Patenting Process• Nov. 11
Technology Commercialization and UR• Dec. 9
How to Find Inventions, Good Inventions and
How to find Prior Art
Spring• Jan. 20
Assessing Market Opportunity of New Tech• Feb. 10
Working with Third Parties• Mar. 17
Risk Assessment for Tech Investments• April 14
Software and Open Source Software
12:00-1:00 Wilson Commons, 2nd Floor Gowen Room Lunch Provided
NEXT!
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