Introduction to IP & TLC Tony von Sadovszky Software Commercialization Manager February 6, 2009

How to contact me…. Tony von Sadovszky Software Commercialization Manager    (main office) 

Overview  Intellectual Property - IP 101  Laws, policies and other considerations  The TLC Office  Q &A

What is Intellectual Property?  Know how – what’s in your head….  Trade secrets – just that  Trademarks TM, SM, ® – protect the identity/source of goods & services  Patents – protect ideas  Copyrights – protect expression of an idea No different than tangible property - combined with contracts, laws and policies, these are business tools

What is Intellectual Property?  Know how – what’s in your head….  Trade secrets – just that  Trademarks – protect the identity of goods & services  Patents – protect ideas  Copyrights – protect expression of an idea

Patents  Things that are patentable – “process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent”  Novel, Useful & Non-obvious (NUN)  20 years of exclusivity to use, make, sell, import or export  Cost for a US Patent ~$30,000 - and goes up from there  There is no “fair use” or “research exemption” for patents

Public Disclosure  An enabling communication (not under a CDA/NDA)  Journal article  Conference presentations, proceedings or abstracts  Poster paper  Dissertation publication  Defense  Funded grant application  Discussion with a visitor (on or off campus)  Offer for sale

Patent or Publish?  This is not an either or choice!  Requirements to publish do not preclude the exercise of intellectual property rights

What is Intellectual Property?  Know how – what’s in your head….  Trade secrets – just that  Trademarks – protect the identity of goods & services  Patents – protect ideas  Copyrights – protect expression of an idea

What is Covered by Copyright?  Any content you create  Your To-Do list at home  Your monthly report  Your message  Your child’s art work  Your notes from this presentation  Your software  Your website  Your home movies  Etc. Once fixed in a tangible form

What is NOT covered by Copyright?  Facts  Ideas  Lists  Names  Short phrases  Website URLs  “Public Domain” materials  Etc.

What Rights does the Copyright Law provide?  Right to Reproduce  Right to Prepare Derivative Works  Right to Distribute  Right to Display Publicly  Right to Perform Publicly And the right to transfer or authorize others to exercise any or all of these rights

Don’t I have to register?  No! Copyright protection is automatic  One can register with the U.S. Copyright Office  You also may provide a Copyright notice © 2009 The Ohio State University © 2009 The Ohio State University Research Foundation © 2009 Joe Bago Doughnuts

Copyrights Work for Hire - I  Work done by an “employee”  Work done by an independent contract (as long as)  Both parties sign an agreement, and….

Copyrights Work for Hire - II  The work is:  A contribution to a collective work  Part of an audiovisual work  A translation  A “supplementary work” (e.g. forwards, appendices, etc.)  A compilation  An instructional text  Test and test answer materials  An atlas

Open Source  Free redistribution  Source code  Derived works  Integrity of the Author’s source code  No discrimination against persons or groups  No discrimination against fields of endeavor  Distribution of license  License must not be specific to a product  License must not restrict other software  License must be technology-neutral Keep in mind…..it’s a license.

Overview  Intellectual Property - IP 101  Laws, policies and other considerations  The TLC Office  Data Sharing  Q &A

What framework governs IP related issues & activities?  International treaties & laws  Federal laws  State laws  Employer policies  Contractual obligations  Standards of practice  Societal norms

Three Key Property Issues  Ownership – legal title  Creatorship - Inventorship/Authorship  Control Your responsibility is to understand these in the context of your work, and clearly communicate these considerations to those with which you work

Rule of Thumb  Data and intellectual property created in ones capacity as an employee of the Institution, or generated using significant Institutional resources, or as a product of sponsored research belongs to the Institution  This typically includes, lab notebooks, software, databases, research materials, etc.

Traditional Scholarly Works  Journal articles  Textbooks  Lecture notes  Sculptures  Musical compositions  Dance choreography  Architectural renderings  Etc.

OSU IP Distribution Policy

Author’s Rights??? OSU Libraries’ Copyright Help Center

Overview  Intellectual Property - IP 101  Laws, policies and other considerations  The TLC Office  Q &A

TLC Mission at OSU  Foster an entrepreneurial culture  Catalyze faculty and staff innovations  Assist in maximizing the value of OSU research developments  Accelerate the transition of OSU developments into products, services and job creation for the public benefit

The nuts & bolts….  IP cultivation, assessment & prosecution  Commercial options & licenses  Faculty & staff startups (UTCCs)  Confidential Disclosure Agreements (CDA/NDAs)  Material Transfer Agreements (MTAs)  Inter-Institutional Agreements (IIAs)  Sponsored Research Agreements (SRAs)  Collaboration agreements (e.g. model rights agreements)  Proposal review  Letters of support  Etc.

Best time to call TLC… …the earlier the better!  Before giving a seminar  At the point of submitting a manuscript or abstract  Before making a “public disclosure” Anytime you have an Intellectual Property question

Subsequent steps…  Brief chat  Asked to submit an “invention report”  Face-to-face meeting  Preliminary business assessment (i.e. sniff test)  Detailed business assessment  Development of commercialization and related IP strategy  Do great things.…

Routes to Commercialization

Overview  Intellectual Property - IP 101  Laws, policies and other considerations  The TLC Office  Data Sharing  Q &A

Contact information Tony von Sadovszky Software Commercialization Manager    (main office) 