IP Commercialization Primer Presented by: Dr. Jan Payne and Jaipreet Bindra WORLDiscoveries TM ES Engineering Design January 22, 2010

Outline  Introductions  WORLDiscoveries  Transfer of IP (Intellectual Property) from University  Evaluation of Commercial Potential  Importance of IP  Types of IP Protection  Concept of Inventorship  A Few Tricks  When to Contact Us  Questions and Discussion

Introductions  Dr. Jan Payne  Jaipreet Bindra  Services provided by WORLDiscoveries TM  Evaluate, provide legal protection and commercialize Western inventions  Provide advice on IP matters  Negotiate legal agreements involving IP  Start-up creation

WORLDiscoveries’ Objectives:  Help streamline technology transfer activities across institutions

How does a University transfer IP?  We give it away: Publications, Conferences, Posters…  We hire it out: Know how and skills (graduates, co-op students)  We commercialize it: Copyright and license the technology (publications, software) Patent and license it Get trademarks (cool new names: DQE Instruments, Agri-Therm) Set up new companies (spinoffs) Register designs and license them

Evaluation of Commercial Potential Good Science is only the beginning…  Commercial Viability? Market size (current and future) Competitive technologies How easy is it to make and use? How expensive is it to make? Is there a need for the invention  Patentability? Is it patentable? Is the invention reduced to practice? Is it novel? Prior disclosures? Major technological leap forward?

Importance of Protected IP  Provides rights to a limited monopoly  Basis of competitive advantage  Basis of new companies  Basis of new products and increased profitability  Benefits to society Economic Development Job Creation Improved Health

Intellectual Property Protection  Patents  Copyright  Trademarks  Trade Secrets  The “Oddballs”: Industrial Designs Integrated Circuit Topographies Plant Breeders’ Rights

Patent  Inventors reveal to public the best way to practise an invention through published patent  In return they receive an exclusive right of sale, use or manufacture, secured by statute  Can be a process, product, composition or apparatus e.g. Prozac, automobile airbag system, many wacky ideas…

Bird Diaper US 5,934, featuring an enclosed pouch... and apertures to accommodate both the wings and the tail of the bird…for use by a pet bird outside its cage to avoid fouling of the home.

Where to Search? gb.espacenet.com *Europe’s comprehensive network of patent databases* SciFinder Scholar *available via UWO libraries * US Patent and Trademark Office cipo.gc.ca Canadian Intellectual Property Office

Patentability Criteria  Novel  Inventive (non-obvious)  Useful

Patenting around the World Canada, US and Mexico  Grace period of one year before filing Rest of the World  Requirement for absolute novelty

Copyright  Right of an author to produce or reproduce their work in printed or electronic media  Computer software (i.e. notation of code) also protected by copyright NOTE: Copyright protects the EXPRESSION of an idea, not the idea itself.

Trademarks  Mark used to distinguish the goods or services of one person or company from those of its competitors  example

Trade Secrets  Any information or method used in business - if it is not generally known to the public and precautions are taken to keep it secret. e.g. Methods for designing microprocessors – Legal agreements are used to protect trade secrets, such as confidential disclosure agreements, employment agreements, etc.

DURATION: 1) Patent20 years (from filing) 2) TrademarkRenewed indefinitely 3) CopyrightLifetime + 50 years 4) Trade SecretInfinite 5) Industrial Design10 years Intellectual Property Protection

The Concept of Inventorship Will the Real Inventors Please Stand Up?  Inventorship is a legal matter  A patent can be declared invalid if not all inventors are included  Unlike authorship not all members of a research team are necessarily inventors  The only members qualifying as inventors are those who made an enabling contribution to the invention 1949 Inventors of point-contact and junction transistor

A Few Tricks Lab Books & Notebooks  Patent law: US – First to Invent Canada – First to File  Lab books: bound (not loose-leaf), and paginated Reflect the thought process Ideally they are accurate, up-to-date  Witnessed (understood) and signed The witness should NOT be a co-inventor  Never use “Obviously”... Think ahead!

Please Come Talk to Us…  Before publishing (always feel free to call and ask) Conference abstracts, posters, journal articles, graduate student theses  Before sharing the idea publicly Demonstrating it, or telling everyone at the pub…  Before collaborating with industry

Discussion and Questions More information at