now that you have an invention… september 8, 2015 ece 445
TRANSCRIPT
September 8, 2015 ECE 445
Who am I and why am I here?• Steven Wille• Office of Technology Management
• Protect (patent, copyright, trademark) Illinois intellectual property
• Promote (License, apps, publication, sponsored research support, etc) Illinois intellectual property ($ and prestige)
• Talk about IP ownership and patents
September 8, 2015 ECE 445
Who owns your invention?
• Virtually anything invented at University of Illinois is owned by UI
• THIS Senior Design Class has an exemption from this General Rule
• In this class, you own the invention if:• No UI employees contributed• You used ONLY standard ECE 445 resources
• If you invent something in this class and want to make money with it, get an ownership opinion in writing from OTM
September 8, 2015 ECE 445
You will invent something, then what?• If you want to build/market it,• Some inventions will benefit from patent protection• Patents cost money and take time
• $20,000-$70,000 for ONE US patent• US patents cover MAKING and SELLING in the US
• Usually 3-4 years from patent application until USPTO grants/denies
• “Granted” may not mean GOOD claims are granted• Patent rights last 20 years from APPLICATION date• Patentable if NOVEL, NON-OBVIOUS, and USEFUL• Software/math VERY hard to patent with current law
September 8, 2015 ECE 445
What and when do you patent?• You need to choose WHAT to patent and WHEN to
patent• US patent law is now “first INVENTOR to file”• You have 12 months to file a patent application after you
have made an ENABLING, PUBLIC disclosure• (you have ZERO months if you want non-US patents)• You might want to patent the FIRST version of the
invention• But, you may find that your design revisions look nothing
like your FIRST version• You MIGHT be able to file CONTINUATIONS or
CONTINUATIONS-IN-PART of the FIRST version
September 8, 2015 ECE 445
What is the value of a patent?• A patent gives you the right to exclude others from
practicing your invention• There are no patent police to call if somebody infringes• YOU must look for and find infringers• YOU must tell them to stop• YOU may have to take them to court to make them stop
• You can also license your patent rights to others
September 8, 2015 ECE 445
Do you need OTHERS’ patents?• Your patent probably does not cover ALL aspects of
the PRODUCT you will make• Just because you have a patent for part of the
product does not mean you have FREEDOM to OPERATE
• You may need to license somebody else’s patent(s) in order to have FREEDOM to OPERATE
September 8, 2015 ECE 445
The Product Development Process• Idea• Invention• Product• Market• Profit
Patents are important here
September 8, 2015 ECE 445
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.
September 8, 2015 ECE 445
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
September 8, 2015 ECE 445
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
September 8, 2015 ECE 445
Another Example• Deuterium (Lyding and Hess)
prolongs the life of semiconductors
• This IP is being licensed to makers of memory chips and processors
September 8, 2015 ECE 445
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?
September 8, 2015 ECE 445
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
September 8, 2015 ECE 445
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