An Introduction to Intellectual Property David Dickson, IP & Licensing Manager Office for Commercialization and Corporate Development

What is Intellectual Property (IP) and why does it exist? “Creations of the mind” Confers actual property rights (i.e., exclusivity and transferability) Incentivize innovation Bring inventions into the public record

Types of IP 1.Patents 2.Copyright 3.Trademark 4.Trade Secret

IP rights are in our Constitution! Article 1, Section 8: “The Congress shall have the power… To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”

Who owns the IP? The creator, author, or inventor The person(s) who actually developed the IP The assignee Entity which has ownership of rights. Example: OSU is the assignee of inventions developed by its employees within the scope of their job duties. Understand your rights. OSU IP policy for students:

Keep detailed notes! What you did When you did it Very detailed Sign and date every page Non-confidential summaries Formal IP Copyright Trademark Patent Trade Secret Agreements Confidentiality (or Non- Disclosure) Memorandum of Understanding Material Transfer License How do I protect my ideas?

Trademarks Commercial marks  Brand recognition

Trade Secrets Just that, it’s secret! Coke formula Mrs. Fields Chocolate Chip Cookies Kentucky Fried Chicken NYT Best-Seller list WD-40 Krispy Kreme Doughnut recipe Big Mac Special Sauce Thomas’ English Muffins Google search algorithm

Protection for the author/owner of “original works of authorship” Creator owns that “expression” Literary - books, periodicals, software Musical – including accompanying words Dramatic – plays, musicals Pictorial, graphic, sculptural, Photo’s Motions pictures, audiovisual Sound recordings Architectural designs No Protection for: Ideas Facts Lists, i.e., Recipes Public Domain Materials Copyright Basics

Copyright requirements Work must be Original: Independently created by author Fixed in a Tangible Medium: So the work can be “perceived, reproduced or otherwise communicated.” Minimal level of creative expression Protection is AUTOMATIC, but… registration needed before filing for infringement © = copyrighted® = registered copyright

Rights under a Copyright In general, copyright gives the copyright owner the exclusive right to do, and authorize others to: Reproduction (copy) Derivative Works Distribution Public Performance and Display Digital Audio Transmissions of Sound Recordings Limited Moral Rights (Visual Artists Rights Act of 1990, 17 USC §106A) United State Copyright Office, part of the Library of Congress

OPEN SOURCE: Special considerations Publicly available source code, which is copyrighted Linux, Apache, Drupal, Mozilla, etc. Intent: Enable collaborative development Licensee (you) is allowed to copy, modify, and redistribute w/o royalties or fees, provided you abide by terms in license

Open Source licenses © The Regents of the University of Minnesota Author: Chris Ghere

Patent Basics Protects a “process, machine, manufacture, or composition of matter Government-granted monopoly in exchange for full disclosure to the public record Incentivizes innovation

What is patentable? Patentable: New ways to make semiconductor nanoparticles (process) New bipedal robot for emergency response (machine) New engineered bacterium that produces butanol (manufacture) New solar absorber material (composition of matter) Subject must be: Novel, Useful, and Non-Obvious NOT patentable Scientific principles or fundamental phenomena Mathematical algorithms or equations Naturally occurring material Abstract ideas

Utility Patent (most common) Design Patent Plant Patent Other forms of patent filings: Provisional patent application Patent Cooperation Treaty (PCT) application Types of Patents More Information: Visit the USPTO website

You can patent an idea Patents are cheap Patents stop infringers Patents give you freedom to practice your invention Patents are secret Patents are quick Employers automatically own patent rights of employees Patent law is stable A US patent gives international rights Common patent misconceptions

Assignment: Transfer of ownership rights Includes declaration of originality by inventors Inventorship does NOT change Gives Assignee right to manage asset LEGALLY BINDING! License Grants rights to practice IP for commercial activity May include royalties (~1/3 of which go back to OSU inventors) Exemptions for academic activity LEGALLY BINDING! Assignments and Licenses

Confidentiality, or Non-Disclosure Agreements Agreement to share confidential information (any form of IP) for a variety of reasons Usually includes: Requirement of “due care” Fair recourse for breach Reasonable duration Clear exemptions and termination A few other common legal clauses LEGALLY BINDING! Example language at NOLO.comNOLO.com

How many of you have licensed IP rights? “For content that is covered by intellectual property rights, like photos and videos (IP content), you specifically give us the following permission, subject to your privacy and application settings: you grant us a non-exclusive, transferable, sub- licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (IP License). This IP License ends when you delete your IP content or your account unless your content has been shared with others, and they have not deleted it.”privacyapplication settings

Thanks!!! IP Questions? Please contact David Dickson (541) Other resources: Austin Lab: garagehttp://business.oregonstate.edu/programs/aep/weatherford- garage Advantage Accelerator: acceleratorhttp://advantage.oregonstate.edu/advantage- accelerator