Investing in research, making a difference. Intellectual Property Basics and WARF’s Disclosure Process Leah Haman Intellectual Property Associate March 3,

Investing in research, making a difference. Intellectual Property Intellectual property (IP) refers to creations of the mind Inventions Designs Literary and artistic works Symbols, names and images IP is protected by law - owners are granted certain exclusive rights to these assets

Investing in research, making a difference. Why is Intellectual Property Important? Competitive advantage Exclusivity provides a justification for research and development spending and motivation to invest in the development of innovative ideas (risk/reward) Without protecting IP, competitors can use it and do not have to recoup the R&D investment Especially valuable for start-ups Can be critical in attracting venture capital (VC) An important part of a company’s valuation Importance can vary by industry

Investing in research, making a difference. Forms of IP Protection 4 Patents Machines and devices Compounds Processes and methods Improvements on any of the above Trademarks Words and phrases Colors Pictures or logos Sound Copyrights Literary works Webpages Software programs

Investing in research, making a difference. Patents

Investing in research, making a difference. What is a patent? A grant of a property right to the inventor The patent gives the patent owner the right to exclude others from practicing the patented invention. Making Using Selling Offering to sell Importing

Investing in research, making a difference. Patent Types Utility Provisional Plant Design 7

Investing in research, making a difference. Utility Patents What can be patented? Machines and devices Compounds Processes and methods Improvements Parts of a patent application: Specification Drawings Claims* 8

Investing in research, making a difference. Example Claim What is Claimed is: 1. An electronic device, comprising: a fingerprint sensor having conductive structures and having fingerprint sensor circuitry that is configured to gather fingerprint data with the conductive structures; And near field communications circuitry that is coupled to the conductive structures and that is configured to receive near field communications signals with the conductive structures. 9

Investing in research, making a difference. Drawing of Previous Claim Title: Electronic Device with Shared Near Field Communications and Sensor Structures US application #: 13/409,615 Assignee: Apple Computer, Inc. Inventors: Benjamin Pope, Daniel Jarvis, Nicholas Merz, Scott Myers Filing Date: January 3, 2012

Investing in research, making a difference. Patent Prosecution Process for obtaining a patent carried out between inventors or patent attorneys or patent agents and the United States Patent and Trademark Office (USPTO) Examiner at USPTO evaluates the patents Can take years

Investing in research, making a difference. Patent Examination EXAMINATION FIRST OFFICE ACTION RESPONSE TO OFFICE ACTION FURTHER OFFICE ACTIONS FINAL OFFICE ACTION NOTICE OF ALLOWANCE Application assigned to an examiner Examiner searches for prior art Examiner applies tests for novelty, non-obviousness and utility Initial rejections of some or all claims are common Office action spells out issues that need to be addressed Arguments to persuade the examiner that the prior art was incorrectly applied Claims may be amended to further distinguish the invention from the prior art Examiner reviews arguments and/or amendments If arguments are persuasive, claims may be allowed or new rejections may be made Applicants can respond if only minor amendments are needed Otherwise, a request for continued examination or an appeal can be filed Congratulations! Claims are allowable and the patent can issue Issue and publication fees are paid

Investing in research, making a difference. Statutory Requirements Utility/Novel/Non-obvious Claims are definite and appropriate written description Specification enables the practice of the invention and discloses best mode

Investing in research, making a difference. Invention must be “New” Novelty: each element of the claim cannot be contained in a single, enabling, fully anticipatory reference Cannot be over one year since publically disclosed by the inventor (US only)

Investing in research, making a difference. Invention must be “Non-Obvious” Different than novelty because it applies when an invention is not identically disclosed Invention is non-obvious when a Person Having Ordinary Skill In The Art would not find the invention obvious

Investing in research, making a difference. Prior Art Evaluate prior art to determine if invention is novel and non-obvious Public “references” created before the filing date of the patent include Patents Publications Poster presentations Open thesis defense Thesis catalog Abstracts for conferences Grant applications posted online once funded

Investing in research, making a difference. Leahy-Smith America Invents Act (AIA) U.S. is a “first inventor to file” system Actions and prior art that bar patentability include public use, sales, publications, and other disclosures available to the public as of the filing date One year grace period for inventor Intervening art concerns Filing before a public disclosure can provide stronger patent protection 17

Investing in research, making a difference. Patents in the Rest of the World The Patent Cooperation Treaty Special uniform application procedure to simplify multinational patent acquisition File PCT application “Nationalize” the application by selecting countries to prosecute the application in

Investing in research, making a difference. Copyrights

Investing in research, making a difference. Copyrights Copyrights protect an EXPRESSION of an idea Gives protection to authors of “original works of authorship” Copyright encourages creative efforts by securing the exclusive right to reproduce works and derive income from them

Investing in research, making a difference. Copyrightable Subject Matter Literary works Musical works Dramatic works Pictorial, graphic and sculptural works Web pages Software and computer programs Mask works and semiconductor chips Architectural works Motion pictures and other audiovisual works 21

Investing in research, making a difference. Obtaining Copyright Protection Copyright is created automatically once an original effort has begun and it has been fixed in a tangible medium Registration is not required (but recommended)  Additional protection and notice to potential infringers  Simple and inexpensive  Symbol, year, author Works created on or after January 1, 1978 Life of the author plus 70 years Work-for-Hire: earlier of 95 years from publication or 120 years from creation

Investing in research, making a difference. Trademarks

Investing in research, making a difference. Trademarks A word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods or services of one party from those of others Why have trademarks?

Investing in research, making a difference. WARF’s Disclosure Process 25

Investing in research, making a difference. WARF Overview An independent, tax exempt, nonprofit, supporting organization for UW-Madison and Morgridge Institute for Research (MIR) WARF’s Mission: To support scientific research at UW-Madison and MIR by: Moving inventions into the community Investing licensing proceeds to help fund further research 26

Investing in research, making a difference. Conceive and start to develop your idea for a new technology or an improvement to an existing technology. Research and Discovery

Investing in research, making a difference. Make your invention known to WARF.  Submit an Invention Disclosure Report.  Meet with a WARF Intellectual Property Manager.  Explain your invention to WARF. Make your invention known to WARF.  Submit an Invention Disclosure Report.  Meet with a WARF Intellectual Property Manager.  Explain your invention to WARF. Invention Disclosure

Investing in research, making a difference. The WARF Disclosure Committee assesses your idea.  Is it protectable?  Is there a market for it?  Can we license it? The WARF Disclosure Committee assesses your idea.  Is it protectable?  Is there a market for it?  Can we license it? WARF Decision

Investing in research, making a difference.  We either accept or don’t accept the invention and notify the inventor.  For all disclosures there’s a Graduate School Equity Review to determine funding sources and ownership rights to the invention.  If we accept, inventors sign a Memorandum Agreement.  We either accept or don’t accept the invention and notify the inventor.  For all disclosures there’s a Graduate School Equity Review to determine funding sources and ownership rights to the invention.  If we accept, inventors sign a Memorandum Agreement. Inventor Is Notified by WARF

Investing in research, making a difference.  You meet with your WARF Intellectual Property Manager and a patent attorney retained by WARF.  The patent attorney drafts the application with your input.  The application is filed with the U.S. Patent and Trademark Office (USPTO) and examined.  A patent issues and the inventor is notified.  You meet with your WARF Intellectual Property Manager and a patent attorney retained by WARF.  The patent attorney drafts the application with your input.  The application is filed with the U.S. Patent and Trademark Office (USPTO) and examined.  A patent issues and the inventor is notified. Patenting

Investing in research, making a difference. WARF Licensing Manager identifies companies that may be interested in the invention and pro-actively markets the technology to those companies.  WARF Licensing Manager identifies the commercial space for your invention.  A summary of the technology is written and posted on the WARF Web site.  Other marketing materials may be developed. WARF Licensing Manager identifies companies that may be interested in the invention and pro-actively markets the technology to those companies.  WARF Licensing Manager identifies the commercial space for your invention.  A summary of the technology is written and posted on the WARF Web site.  Other marketing materials may be developed. Marketing

Investing in research, making a difference.  A patent license is negotiated with a potential licensee.  A patent license is a contract between the patent owner (WARF) and a commercial partner that gives the Licensee permission to make, use, sell or import the invention.  Licensing revenue is returned to the Inventor and the University, where it is used to support further research.  A patent license is negotiated with a potential licensee.  A patent license is a contract between the patent owner (WARF) and a commercial partner that gives the Licensee permission to make, use, sell or import the invention.  Licensing revenue is returned to the Inventor and the University, where it is used to support further research. Licensing

Investing in research, making a difference. Questions?