Now that you have an invention…

Who am I

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

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