A Basic Primer on Intellectual Property Kathryn Atchison, DDS, MPH Vice Provost, Intellectual Property and Industry Relations Associate Vice Chancellor for Research Professor, Dentistry and Public Health

What is UCLA IP?  Patents – e.g. Nicotine Patch, Portable Kidney, Bio fuels  Copyrights  Faculty owned (textbooks, manuscripts)  Regental owned (commercial, course-related materials)  Trademarks  Logos, Bruin Bear (managed by ASUCLA)  Trademarked Clinics or Programs (OIP & Campus Counsel)  Don’t do Trade Secrets…..

Patents: give you the right to exclude others from making, using or selling products/services that incorporate the invention Copyrights: give you the right to exclude others from making copies, derivative works, and distributing the specific expression of your ideas. Patents and Copyrights are Exclusionary Rights

Patents and Copyrights Compared PatentsCopyrights Protect ideas 20 year life Must file application Licensable Expensive Intangible value Protect implementation of ideas year life Automatic protection Licensable Inexpensive “Tangible” value

 Compositions of matter, devices  Methods  New uses for known substance  Any idea that is useful: software, biological material What is Patentable Subject Matter?

 Novel  Useful  Non-obvious What are the Requirements for a Patentable Invention?

Technology Transfer Mission is to support UCLA's research, education and public service mission by:  Educating the academic community about appropriate methods for protecting intellectual property  Accelerating the development of UCLA discoveries for the public good  Promoting economic growth in California  Facilitating collaborations with industry for next- generation scientific breakthroughs.

Bayh-Dole Act (35 U.S.C. § ) fostered Academic Tech Transfer  Federal law enacted in 1980  A fundamental change to patent ownership  University owns patent rights to inventions sponsored by the U.S.A. government  University reports inventions to government and tries to commercialize  Government gets a non-exclusive license  Preference for Small Business licensee  Royalties must (1) be shared with inventor and; (2) be used for research and education

How Does UCLA Oversee IP?  Office of Intellectual Property accepts faculty invention disclosures  Determines patentability  Files patents or copyright  Markets invention to potential business licensees or research entities  Reports on patents to sponsors.  All for 20 years until the patent expires!

When to License……. Consider licensing if a big player is committed to developing the technology  Most startups fail, and not just due to technology (financing, management, economic climate)  You are just as likely to see upside from licensing as from a startup  Licensing can bring in sponsored research to your lab  A big player can bring developmental resources & sales/marketing that no startup can

When to do a Startup…… Disruptive technology that no company is currently seeking.  To bring in sponsored research to your lab  Not to aggregate/”control” your IP  UC bears costs of patenting and seeking commercial partners/structuring deals- once you start a new company this cost is shifted to you  Rare that UC would choose to license to a company that you objected to working with- we want our interests to be aligned!

What Types of Problems Arise During the Oversight of IP?  Disagreement over inventorship or authorship  Failure to disclose IP to UC and loss to company which can then deny faculty to continue to work on it  Failure to report patent to federal sponsor, which has rights to use the invention  Conflict of interest in selecting appropriate licensee  Infringe on another’s patent rights  Use another’s copyrighted material in course or for pleasure (Fair Use)

Communication is Essential  Students should discuss authorship/ inventorship as early as possible with faculty mentor  Appropriate use of university materials and resources to avoid business use of State property  Prevent inadvertent public disclosure  Keep public’s best interests in mind

Ownership of Data  Data include any information obtained during the process of research, no matter in what form it is produced, or in what form it is stored.  Medical information - belongs to the research participant and must be protected for privacy  Grants–University owns it and shares with PI  Drug studies with the sponsor and sometimes the university  Trainees own no data, not even what they worked on

Ethical problems with ownership of science  Broad Gene patents Allowing a company to tie up diagnosis preventing others from developing a new diagnostic test  Broad Stem Cell patents Allowing a company to tie up diagnosis preventing others from developing new treatments  Conflicts of Interest - Money

A case in point….. Imagine a faculty member who develops IP, licenses it from the university to her newco; sponsors research in a junior colleagues’ lab who is doing research in the area; decides she wishes to license that IP too, but doesn’t think the junior colleague has quite ‘fulfilled the terms of the contract’; reprimands the colleague for not finishing the research…. And arguing that she should be an inventor of the technology because she proposed the research Are there ethical issues?

Thank you!