Intellectual Property Primer Stephen Auvil auvil@umbc.edu Assistant Vice President for Research University of Maryland, Baltimore County

What is Intellectual Property? Something that is owned or possessed. Merriam-Webster Intellectual Property: A product of the intellect that has commercial value. American Heritage Dictionary

Types of Intellectual Property Patents Copyrights Trademarks (Service Marks) Trade Secrets Others: Mask Works Plant Variety Protection Trade Dress Know-how

Patents # 5,205,473 Protects: A new and useful process, machine, manufacture, or composition of matter Rights: Make, use, sell, have made, import/export Period of Protection: 20 years from filing for a utility patent

Copyrights © 2009 University of Maryland Protects: Original works of authorship fixed in a tangible medium of expression Rights: Reproduce, prepare derivative works, distribute, perform, and display Period of Protection: Life of the author + 75 years and up to 120 years from the date of creation for some works

Trademarks ™ ® Protects: ™ ® Protects: Word, symbol, design, or combination word and design, slogan, or sound that identifies and distinguishes the goods and services of one party from another Rights: Use with a product or service Period of Protection: Life of the product or service

Trade Secrets Protects: Secret ingredients, processes, or methods Rights: Protection from corporate espionage Period of Protection: Life of the secret

More on Patents Purpose of a Patent System: To share ideas Rights: Right to exclude others, NOT to practice First to Invent System: First to Invent versus First to File Importance of documentation (This could change soon!)

Types of Patents: Utility Design Plant Plant Variety Protection More on Patents Types of Patents: Utility Design Plant Plant Variety Protection

More on Patents Requirements for a Patent: Enabling Description Useful Novel Non-obvious

More on Patents Inventorship: Someone who has made an intellectual contribution to the conception of the invention The contribution must be covered by one of the claims

More on Patents Obtaining a Patent: Provisional Application (1 year) PCT Application (30 Months) Utility Application (Examined) Patents must be filed by the inventor or on the inventor’s behalf by a registered patent attorney or patent agent.

Costs of Filing a Patent: More on Patents Costs of Filing a Patent: Provisional $110 Utility PCT $10-25K National Phase Effective Filing Date 12 Months 30 Months $25-100K+

More on Patents Considerations for Filing a Patent: Prior Art Density & Dominating Patents Margin of Improvement/Platform Technology Product vs. Fundamental Invention – Designing Around Return on Investment Software – Patent vs. Copyright

Parts of a Patent: Specification Drawings Claims More on Patents Parts of a Patent: Specification Drawings Claims

More on Patents First Page: Issue Date Patent # Title Inventor Owner Application # Filing Date Search Fields References Abstract

More on Patents Drawings:

More on Patents Specification: Brief Description of the Drawings Field of the Invention Background Detailed Description of the Invention/ Drawings Summary of the Invention

More on Patents Claims: “What is claimed is:”

More on Patents Claims: Determines the scope of the patent Specific language Elements & Limitations Independent & Dependent

More on Patents Special Considerations for Software: Patent versus Copyright Life of the Technology “Work for Hire” issues

More on Patents Patenting Process: USPTO Inventor Patent Search Draft App. Examiner Review File App. Office Action Review OA Response & Amendment Amendment Inventor Issued Patent

More on Patents Patent Searching: USPTO Website – www.uspto.gov Google Patents – www.google.com Text searches Class/Subclass Patents referenced & Patents referenced By PAT. Time References Referenced By Necessary for (a) background/patentability, (b) IP landscape, and (c) right to use.

More on Copyrights Levels of Protection: Do nothing Notice - © 2009 Stephen Auvil Registration

More on Copyrights Works for Hire: The author owns the work unless the author is employed, in which case, the employer owns the work. Consulting might not constitute an employer-employee relationship. Ensure that ownership is addressed in consulting contracts.

More on Copyrights Examples of copyright protected works: Books, journal articles, websites Songs – lyrics, music, singing voice, etc. Art – Sculpture, oils, recorded performance Computer icons Videos

Derivative Works & Ownership: More on Copyrights Derivative Works & Ownership: Solely Owned: Creator A All rights to copy & publish the work. 100% Authorship Jointly Owned: Creator 1 Creator 2 Limited rights to copy & publish the work. 95% Authorship 5% Authorship

What is Technology Transfer? Commercialization of Intellectual Property Created in Academic Research Two General Mechanisms: Licensing Start-up Companies

Technology Transfer Products Lycos Search Engine Carnegie Mellon University Gatorade U of Florida Stannous Fluoride U of Indiana Vitamin D in Milk U of Wisconsin Synthesizer Keyboards Stanford University

Technology Transfer Products OnePump Scientific Products & Systems BioGMP SPi Bullet Drill Bit Black & Decker StepMetrix Bou-Matic CellStation Fluorometrix G-Mark Test Std. Aurora Analytics

Patent Filing Decision T2 Process Invention Disclosure Invention Assessment NO YES Return to Inventor Patent Filing Decision IP Marketing License Agreement

Invention Disclosure Invention Disclosure Form: Enabling Description Inventors Publication Information Sponsor Information Market Information

Note on Publishing It creates a bar to filing for a patent: Immediately in Foreign Countries Starts a One-Year Clock in the U.S.

Good Science Good Invention!!! Invention Assessment Evaluation Criteria: Patent Budget Constraints Translation of the Invention into a Product or Service Market Size State of Development – Time to Product or Service Strength of IP Position & Enforceability Marginal Utility & Competition Good Science Good Invention!!!

IP Marketing OTD Marketing Methods: Web Pages Direct Mail OTD Contacts Inventor Contacts Most Licenses Result from Contacts the Inventor has with Industry.

Confidentiality Talking about your Invention: Non-Disclosure Agreement Confidentiality Agreement Secrecy Agreement Confidentiality Non-use Exception Language Five years

License Agreement Typical Terms: Up-front Fees or Equity Royalties Annual Payments Milestone Payments Diligence Requirements

Royalty Distribution General Royalty Distribution Policy: Inventor’s Share Laboratory Share Department Share University Share

Reality Check 100 Invention Disclosures 50 Patents Filed 20 License Agreements 10 Licensed Product Sales 1 – 2 Generate Significant Revenue

Questions