A Office of Legal Counsel Intellectual Property Basics at the University of Kentucky February 26, 2014 Katherine A. Adams Associate General Counsel for Research and Intellectual Property COPYRIGHT 2014 University of Kentucky

A Office of Legal Counsel The Office of Legal Counsel

A Office of Legal Counsel 1 General Counsel, 7 Attorneys, 3 Paralegals, 3 Administrative Staff. Each attorney is a generalist (capable of handling a wide variety of legal matters) who also concentrates in key areas relevant to a public university/academic medical center. 2 locations to better serve the University community: Main Campus Legal OfficeMedical Center Legal Office 301 Main Building317 Charles T. Wethington Building Lexington, Kentucky Lexington, Kentucky Phone: (859) Phone: (859) Fax: (859) Fax: (859)

A Office of Legal Counsel The "LAW" of the University United States Constitution Federal Law Kentucky Constitution Kentucky Revised Statutes (KRS) Kentucky Administrative Regulations (KAR) Governing Regulations (GR) Administrative Regulations (AR) Human Resources Policy and Procedure (HRP&P) Business Procedures Manual University Senate Rules (SR) Code of Student Conduct Hospital Policy (HP) Other University Policy and Procedure Local Ordinance

A Office of Legal Counsel What law governs intellectual property? Your Rights Within the University Primarily AR 7:6 Definition of Intellectual Property State and federal laws define various types of intellectual property (some IP rights are exclusively federal, some state and federal)

A Office of Legal Counsel AR 7:6 Intellectual Property Defines intellectual property (IP) as the "tangible or intangible results of research, development, teaching, or other intellectual activity." In other words, IP is any innovation or discovery conceived or developed by faculty, staff, or students using university resources.

A Office of Legal Counsel Why do we care? UKs Intellectual Property Development 58 disclosures in FY 2013 (ALMOST all were patents) 17 patent applications filed in FY total active patents as of FY new patents issued in FY new patents issued o Strong patent portfolio in drug development and drug design, plant biotech, equine health, and materials for medical implants, drug delivery systems and medical devices $4.8 million gross licensing revenue in FY total active license agreements in FY 2013license agreements 9 new license agreements, three of which were to UK start-up companies in FY 2013

A Office of Legal Counsel Intellectual property includes: Patent (federal law only) Copyright (federal law only ) Trademark (state and federal laws) Trade secrets (primarily state law) Intellectual Property

A Office of Legal Counsel Patents Patents and patentability criteria will be discussed by Don Keach, but basically: New Useful Not Obvious Patents give the broadest protection to the invention. Other forms of IP mainly protect only the specific work, but not the underlying invention.

A Office of Legal Counsel Trademarks A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods (or services) of one party from those of others. ®

A Office of Legal Counsel A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed. It arises automatically when a work is first fixed in a tangible medium (e.g., a book, a manuscript, sheet music, film, videotape, microfilm, electronic medium such as a computer or ). Copyright

A Office of Legal Counsel Trade Secret As the name implies, no public disclosures

A Office of Legal Counsel Need Additional Information? Still concerned about when you need a patent, or a trademark, or a copyright ??

A Office of Legal Counsel What Can I do with IP? All forms of IP can be LICENSED. License Agreements can be on a wide variety of terms Royalty bearing, free, limited fields, all fields, exclusive, non-exclusive etc.

A Office of Legal Counsel How Can I Protect IP? First, Document Research Findings Various methods to Document Consistent, dated Lab notebooks (numbered, dated, signed) Electronic notebooks are fine, IF they are permanent (cannot be readily altered)

A Office of Legal Counsel Protect Your IP --Take Charge of Your Data Clear understanding with co-workers Written agreement with Collaborators Use of Confidentiality Agreements

A Office of Legal Counsel Can I protect IP in an Academic Setting? Should you share research results? Frequently yes, but do it carefully! DO use a confidentiality agreement (external) DO be careful who you elect to share with DO consider what portions you elect to share

A Office of Legal Counsel Agreements of Particular IP Concern Consulting Agreements Confidentiality Agreements (if not reviewed by UK) Material Transfer Agreement (EVEN IF reviewed by UK) Certain Grant Agreements, other Funding Agreements

A Office of Legal Counsel Consulting Agreements Consulting governed by AR 3:9 Limited in time, no use of University resources or facilities Working for your own company, even with no direct pay, is consulting Commercial consulting agreement typically have dreadful IP clauses

A Office of Legal Counsel Ethical Principles and Code of Conduct GR XIV A MUST READ for all Employee Entrepreneurs Consider differences in: Conflict of Commitment Conflict of Interest Use of resources Use of name Attorney-Client Privileged

A Office of Legal Counsel Questions?