Intellectual Property Jennifer Langenberger Director, Intellectual Property University of Pennsylvania Center for Technology Transfer

Types of Intellectual Property Patents Trademarks Copyright Trade Secrets

Trade Secrets A Trade Secret is… Reverse engineering is permissible. Information (formula, process, pattern, design…) which provides an advantage over competitors within the same industry or profession. Must be generally not known. Must be information of value. Must be subject to efforts to maintain secrecy. Reverse engineering is permissible. Term is indefinite. State laws control trade secrets.

Copyright A copyright is… Legal protection of original works of authorship fixed in a tangible medium of expression, including books, drawings, sculptures, software code, manuscripts… Copyright protection subsists from the time the work is created in fixed form. Notice of copyright (©) is beneficial, but no longer required. Registration of the copyright (with the Library of Congress) is not necessary unless there is an infringement suit. Protects work against unauthorized reproduction, distribution, and performance. Term is generally life of author plus 70 years.

Trademarks A trademark is… A trademark is a word, phrase, symbol or design that identifies and distinguishes the source of the goods of one party from those of others. Rights arise out of use and/or registration of the mark in association with certain goods or services. Registration with the USPTO is not required, but does confer certain additional rights. Any time you claim rights in a mark, you may use the "TM" (trademark) designation. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark. Rights in a federally-registered trademark can be renewed indefinitely if the owner continues to use the mark.

“A patent is an invitation to a lawsuit” –Thomas A. Edison Patents A patent is… “The right to exclude others from making, using, offering for sale, or selling” the patentee’s invention. This right is granted in exchange for the disclosure of the patentee’s invention to the public. The term is 20 years from the first non-provisional application. This right is not automatic. You must notify any party which is infringing your patent, and you may need to sue the party for infringement if they do not cease their infringing activities. “A patent is an invitation to a lawsuit” –Thomas A. Edison

A Patent is NOT… A patent is NOT the right to make, use, or sell your invention. To determine if you have the right to make, use or sell your invention, you must look at other patents, and determine if any aspects of your invention fall within someone else’s patent rights. Example: A drug is known and patented. You discover a new use for it (to treat heart disease). You can patent a method of treating heart disease by administering the drug, but in order to practice your invention, you must obtain a license from the owner of the drug patent.

What is patentable? Any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law. Examples: Isolated or purified compositions, including nucleic acids, proteins, antibodies, vectors and cell lines. Methods of diagnosis and/or treatment. Transgenic non-human animals (in some countries) and plants. Methods of making compositions or materials. Business methods. New instruments, tools, or accessories.

Determining Inventorship An inventor is someone who contributed to the conception of the invention. If a person did not contribute to the conception of an invention, they are not an inventor by US law. This is a specific legal determination based on facts, not politics. Examples of incorrectly named inventors: Co-authors of a paper who did not contribute to the conception of the invention. PI of a lab, who did not contribute to the conception of invention (even if the invention was made in their lab.) Person who provided funding for the research, but did not contribute to the conception of the invention. A lab technician who performed the actual experiments, but did not contribute to the conception of the invention. INCORRECT INVENTORSHIP IS GROUNDS FOR INVALIDATING A PATENT.

Determining Patentability In order to be patentable, an invention must satisfy the following aspects of patent statute: Eligible subject matter – Laws and court decisions prohibit patenting certain things: For example, printed materials, scientific theories, and naturally occurring materials are not patentable. Useful (Utility) – The invention must have a specific, credible use. New (Novel) – The invention must not be previously known, described, or in public use. There is a 1 year grace period for novelty in the US, but not in most foreign countries. Non-Obvious – The invention must not be taught or suggested by the “prior art”. This is a difficult legal determination.

What is a Public Disclosure? Anytime an invention is made available to the public. It can be published on paper or online; presented at a meeting; or given as a gift. No matter how small the group is, this is a disclosure. Examples of public disclosure include… Publication, such as a professional journal or text, online or in print. Non-confidential grant submission (NIH publishes abstracts). Presentation at a meeting (including abstracts and posters). PENN presentation (when members of the public are invited). On-line publishing at your research website. Discussions or email with a colleague outside of PENN.

Intellectual Property at PENN Trade secrets – Probably not at PENN. Copyright – Generally owned by the authors, unless done as a work for hire. Trademarks – PENN symbols and designs, such as the PENN shield. Patents – Protect inventions that result from research. Almost always owned by PENN. All inventions must be disclosed to the Center for Technology Transfer (CTT). Use the invention disclosure form, available on the CTT website. PENN manages and pays for IP protection. If the invention is commercialized, PENN shares revenue received.

The Penn Patent Policy

The Technology Transfer Process Disclosure: Inventor reports the invention to the CTT using the Invention Disclosure Form. Evaluation: CTT assesses the invention for patentability and commercial potential. Outcomes Patent Application Tangible Research Material Hold Close

The Technology Transfer Process Patent filing: This can be an expensive and time consuming process. Inventor works with patent counsel to define invention and claims. Marketing: CTT will contact potential licensees or work with potential start-ups to transfer the technology. Inventors are a great source of marketing leads. Licensing: CTT will negotiate and monitor licenses to companies.

What to expect? Many great inventions are not commercially viable. Obtaining patent protection takes many years. The average time from invention disclosure to license is 3-7 years. Most significant revenue comes from equity and royalties which can take from 4-15 years to realize.

Why Disclose an Invention? Often a corporate partner or start-up company is the best way to bring an invention or idea to the marketplace. It is difficult to attract a partner if you cannot offer exclusivity. Federally funded inventions must be disclosed to the funding agency. Commercialization generates revenue for the inventor and the inventor’s lab and school.

Questions?