WPI Intellectual PropertyThe next great invention?

Todd KeillerDirector, Technology Transfer

WPI Intellectual PropertyThe next great invention?

Todd KeillerDirector, Technology Transfer

12/6/12

12 Inventions that changed the world

• Airbag Safety System• Area Rule of High-Speed Aircraft Design• First Unbreakable Cryptosystem• Internal Grinding Machine for Engine Manufacture• Negative Feedback Theory• Stainless Steel• The Catalytic Converter• The First Commercial Radio Station• The First Liquid-Fueled Rocket• The First Portable Drug Infusion Pump• The Parallel-Wire Strand System for Suspension Bridges• Traffic Engineering

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Intellectual Property (IP)Intellectual Property (IP)

Define what it isHow it is protectedHow does WPI manage IPWhat are your obligations

What Is IP?

• Data• Materials• Know-how• Curricula• Ideas• Technologies

How Do You Protect IP?

• Trade and Service Marks• Trade Secrets• Patents• Copyright• Publications• Material Transfer Agreements (MTA)• Confidential Disclosure Agreements (CDA)

Technology Transfer

• 1980 – Bayh – Dole Act– Prior to 1980, government retained title to

inventions– Bayh- Dole created a uniform patent policy among

the agencies– Provided incentives to those who received federal

funding– Fostered partnership with government, academia,

and industry

Technology Transfer

• When presented with a new idea that may be a patentable invention:

• Is there a product?• Who can commercialize that product?

You May Have an Invention – What Next?

• Contact TTO early re: disclosure matters• Identify & document invention – identify inventive

activity and keep good records: – Lab notebooks– Working notes, sketches, drawings– Draft publications– Date, sign, & witness lab records as feasible

• Review technical, product, and patent literature (“prior art” awareness) regularly

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Basics About Disclosing

• Public, Private, & Institutional Disclosures– Public: publications, presentations, media interviews,

posters, internet, etc. - publicly accessible record– Private: restricted access discussions, meetings, etc.– Institutional: formal university document with sign-

offs, etc. compliant with federal req’ts.

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Institutional Disclosure Process • WPI Invention Disclosure Procedure– http://www.wpi.edu/Admin/Research/Sponsored/Handbook/

invention.html

• Don’t publish or present invention details until:– Discussion with WPI IP Office of prospective invention

disclosure

• Research, prepare, & submit a WPI Disclosure Form if indicated– N.B.: FILING WPI DISCLOSURE FORM DOES NOT PROTECT

INVENTION - PTO APPLICATION FILING IS NECESSARY.

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Prior Art Search

• Primary search by technically cognizant inventor is essential – active researchers, related patents, applications, key words, etc.– Textbooks– Journals– Technical magazines– Manufacturers’ catalogs– Patents - www.uspto.gov– Google/patents

• Gordon Library Reference Resources

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Post-WPI Disclosure Form Submission• Evaluation of Disclosure Form information (e.g. complementary

search, market assessment, etc.) for patentability, commercial potential, and WPI “fit”– WPI owns:• We will designate a patent attorney• You will need to work with that attorney

– You own: • We will sign a letter relinquishing any WPI claims• You work with your patent attorney

• Patent application is prosecuted• Patent Issues

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Patents

• Grant by Federal Government– Gives inventor/owner the right to exclude– No one else can “make, use, sell or import” the technology– Limited term (20 years from “Date of File”)

• Why is this good?– Risky to innovate – Patents protect the party trying to innovate– Patents must be published

Four Hurdles

• Novel –must be new, not published *• Non-Obvious, i.e., unexpected results• Patent disclosure – describe invention• Utility- must have a distinct practical use

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Patent Protection Process

• Application Options

– Provisional (USPTO, less than$1-4K) - not examined unless later dispute arises, establishes first to invent priority, 1 year to file utility

– Utility (USPTO, $12K; Int’l/PCT $4K) – full filing for examination

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Patent Strategies

• Understand the differences between university strategy vs. company strategy

• Claim strategy• Publications• ROI

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America Invents Act

• September 26, 2011• 15% increase in fees• Micro-Entity status- 75% reduction• Fast track examination option• Effective 3/13 – First to file system• But academia still has 1 year grace period

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Inventor Categories

- All persons performing research or scholarship at WPI, utilizing WPI resources/facilities, or deriving funds from WPI are either students or faculty/staff

- - RAs are considered faculty/staff- - TAs are considered students

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WPI OwnershipFaculty/Staff Rules

- Within stated objectives of current sponsored research, PLAN projects, thesis, or dissertation research, OR

- Significant use of WPI facilities and resources (i.e. appreciable expenditure of WPI funds), OR

- Faculty/staff while in role of student (project, thesis, directed study or research, course work)

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Royalty Rule I

If WPI pursues the patent, then WPI will absorb the costs and will share royalties on a 50-50 basis with the inventor(s), after the costs of the patent are recovered, or will share royalties in accordance with WPI institutional agreements.

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Royalty Rule II

If the student(s) wish to pursue the patent, WPI will assign any ownership rights it may have to the student through a jointly signed agreement providing that the student will give 10 percent of net future financial gains from the patent to WPI. The student will absorb the costs of pursuing the patent. Alternatively, if the student wishes to have WPI absorb the costs of pursuing the patent, then Rule I applies.

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Royalty Rule III

If there are no WPI resources used, then it is the inventors to own. The inventor(s) will pay all costs associated with patenting the invention, and will receive all benefits from the patent.

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We filed the patent, what next?• Need to find a commercial home– Straight license– Start up company

• Sources of funding for start ups– FFF– Angels– Venture Capital (traditional)– Venture Capital (corporate)

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Common Terms in Licenses

– Cash fees: direct cost recovery (patents), annual min.– Running royalty based on value enabled by technology– Warrants for equity if university start-up– University retains research & educational rights– Restrictions: field of use, territory– Time period: last patent to expire or 20 years– Sublicense with university approval– IP expense transfer to licensee, esp. int’l– Minimal university warrantees & liabilities– Commercial diligence

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TTO/Faculty-PI InterfacesOn-Campus office – Boynton Hall, 1st Floor, X4907

tkeiller@wpi.edu

TTO website – www.wpi.edu/Admin/Research/TTO

Forms (Invention Disclosure, IP Assignment Agreement, Material Transfer Agreement,...):http://www.wpi.edu/Admin/Research/Sponsored/forms.html

Policies (Intellectual Property, Conflict of Interest,…):http://www.wpi.edu/Admin/Research/Handbook/policies.html

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