1 RIT: Support Infrastructure, Policies and Procedures – Perceptions, Myths and Reality Varda Main Director Technology Licensing Office

2 RIT Infrastructure to Support Intellectual Property, Licensing and Start-Ups Activities u Technology Licensing Office –Intellectual property protection and management –Marketing and licensing of technology u RIT High Technology Incubator –Start-up companies u Sponsored Research Services –Grants and sponsored research agreements u Wallace Library –Resources on copyright and plagiarism u University Publications –Use of RIT trademark

3 RIT Policies u C3.0 – Intellectual Property Policy u C4.0 – Conflict of Interest Pertaining to Externally Funded Projects u C8.0 – Code of Conduct for Computer and Network Use u E13.1 – Policy for Faculty Extra Service Compensation and Summer Employment u RIT Identity Manual u C3.1 – Agreement for Commissioning of Educational Materials u C7.0 – Privacy Policy u C1.0 – RIT Research Oversight Policy

4 Myth No. 1 – I own everything I develop at RIT u RIT owns IP you generate in the course of your employment with a few exceptions. See Policy C3.0 for details. u Questions to ask: –Was the work done as part of your employment? –If the work was done as a RIT employee: Was the work in your annual Plan of Work? Was the work a commissioned work? Did you use RIT facilities and resources? Did RIT or other sponsors fund the work? Not True!

5 Myth No. 2 – I have to decide between publishing and patenting u You can publish research results and protect the IP –It’s a matter of timing and balance –TLO can help you with this Not True!

6 Myth No. 3 – Submitting the RIT invention disclosure to TLO gives legal protection to my invention u Submitting the RIT Invention Disclosure Form to TLO fulfills your employment requirement to disclose inventions to RIT. –This starts the RIT review process to decide whether to patent your invention u Only submitting a patent application to the US Patent & Trademark Office (or another country’s patent office) provides legal protection. Not True!

7 Myth No. 4 – RIT owns student IP u RIT does not own student IP unless: –The student was paid by RIT to perform the work that led to the IP As part of RIT employment Through grant or contract funding secured through RIT –The student and RIT entered into an agreement otherwise before the work started Done in certain cases where there is a corporate sponsor for student projects u RIT cannot use student IP without first obtaining permission from the student u RIT cannot give away student IP (ownership or rights to use) without first obtaining permission from the student Not True!

8 Myth No. 5 – I can sign a NDA and it also covers my students u Very few people at RIT have signature authority for NDAs or other forms of agreement. –V. Main can sign NDAs relating to licensing –M. Zack can sign NDAs relating to grants and sponsored research contracts u A NDA between a company and RIT does NOT cover RIT students as students are not part of the legal entity of RIT. –For example, to handle company confidential information brought by a sponsor to a capstone project, a NDA must be signed by the company, RIT, and each of the students. Not True!

9 Myth No. 6 – If I used federal funds for my research, then the government requires me to freely give the results to all u The Government funds technology development –To meet government needs for a technology solution to a problem –To assist in economic development by helping bring new technologies to the marketplace –To provide a return to the US taxpayer from the technology through: Job creation in the US Substantial manufacturing in the US Net economic benefit to the US Not True!

10 Myth No. 7 – It’s ok to do collaborative work on a handshake u Written agreements are needed to clearly define: –who’s bringing what to the collaboration –who will do what –who will own or have what rights to resulting work u The CREATE Act (12/04) requires written agreements before work starts so knowledge shared between collaborating organizations won’t be held against the collaborators when seeking patent protection. Not True!

11 Myth No. 8 – Research sponsors must own the resulting project work or they won’t sponsor projects at universities u Many research sponsors will say they need to own resulting project work. u This is typically a negotiating ploy; not their bottom line. u So don’t be too quick to agree to give your work away u As a minimum retain: –Right to continue to do research based on this work –Right to do collaborative work with others in future based on this work –Right to publish and otherwise disclose Not True!

12 Myth No. 9 – RIT can always assign ownership of future work to come from a sponsored project to the sponsor u There are situations where Federal laws and regulations prohibit RIT from assigning ownership of future work to a research sponsor –If the work involved the use of facilities, equipment or materials purchased with tax-exempt bonds –If the work was funded in part by Federal funds Not True!

13 Myth No. 10 – It’s ok to use IP developed elsewhere or owned by someone else u Bringing your inventions to RIT –New hires at RIT that want to continue to use and/or develop IP you created elsewhere must first have RIT enter into an inter-institutional agreement with your previous university or a license with your previous non- university employer u Using third party IP at RIT –It is not permissible to use third party IP at RIT, even when it is just for non-commercial research purposes, without first having RIT license in that IP. Not True!

14 Myth No. 11 – I can use RIT IP outside of RIT u Outside service/consulting activities –You may not use any RIT IP for other than your RIT duties unless you have entered into a license agreement with RIT first u If you leave RIT –You may not use any RIT IP if you are no longer employed by RIT unless You have licensed the technology from RIT RIT has entered into a inter-institutional agreement with your new academic employer to permit you to continue your research work there Not True!

15 Myth No. 12 – All my research is done here at RIT so I don’t need to think about export control regulations u You can export knowledge without leaving your office: –By sending it overseas via the internet, , fax or telephone –By sharing it with a person here in the US who is not a US citizen or a US resident alien (green card holder) u Export restrictions are based on: –Type of knowledge –The particular person, organization or country that will be the recipient of the knowledge Not True!

16 Myth No. 13 – RIT is only interested in leveraging IP as a source of revenues u RIT manages it’s IP portfolio so as to: u Enhance the reputation of the Institute, its faculty, staff and students, u Support Institute efforts to ensure graduating students have been imbued with an entrepreneurial spirit and an applied understanding of IP, u Foster enhanced research interactions with the private sector, u Facilitate the transfer of RIT technologies for the use and benefit of society, and u From these to generate additional research funds through leveraging value of RIT’s intellectual property. Not True!

17 Services provided by TLO u Determining IP ownership issues u Marketability assessment of inventions u Patenting of inventions u Registering copyright u Registering trademarks u Valuing commercial worth of technologies u Developing commercialization strategies for technologies u Marketing technologies available for license u Conducting license negotiations u Administering licenses u Chairing the Technical Review Panel and Intellectual Property Policy Committee u Outreach and training

18 Your role and responsibilities as a RIT inventor or author u To conduct thorough searches (and periodically update these searches) of the published literature and patents to determine if your creation is novel u To promptly and completely disclose your creations to RIT u To assist RIT in seeking IP protection on selected technologies u To assist RIT in seeking licensees for selected technologies u To enjoy the 50% inventors’ share of licensing revenues!

19 TLO website – u General information on intellectual property and licensing u RIT Invention Disclosure Form u RIT policies relating to IP and licensing u Sample agreements and standard IP terms u Technologies available for license u Links to many other related resources

20 For more information……. Technology Licensing Office Varda N. Main, Director 4018 Eastman Building (Bldg. 1) (585)