UARC Intellectual Property Management Burney Le Boeuf Director, Aligned Research Program of UARC Professor Emeritus UC Santa Cruz November 12, 2009

Intellectual Property An intangible asset recognized by law as protectable as to ownership Classic forms: patents, copyrights, trademarks New forms: internet domain names Research generates many claims to ownership; few create change or wealth IP is a way of managing competition and control over assets by authors/inventors in dealing with others

Inventions are Important to the UARC Inventions track important findings Invention reports provide an important index of productivity for the UARC Reporting inventions is required by the UARC contract

What is an Invention? An invention  Is new, useful, and a novel development  Advances the state of the art An Invention may be  A device, method, system, process, or composition of matter  A new use for existing technology  An improvement of existing technology

Effects of Invention An invention may  Solve a long-standing problem  Do what is taught as not possible, practicable  Have unexpected attributes or benefits  Require repeated efforts to achieve results  Combine ideas or materials in unexpected way  Identify an unanticipated new use

Initiating the Patent Process for an Invention Describe concept  Definite and permanent idea  Complete and operative invention Demonstrate how reduced to practice  Show that invention works for its intended purpose (is valid) or  File patent application Reveal best mode  Show how the invention is best used

Disclosure Document inventive work (e.g., your notebook) Make a written report  Identify the inventors  Describe in technical detail the nature, purpose, operation and characteristics of the invention Use either of the following forms  NASA Form  University of California Record of Invention Form

Invention Routing Route the invention disclosure form and report to Pamela Pancoast, Compliance Officer Pamela will process New Technology Report and route to UCSC Office for Management of Intellectual Property UCSC will consult with NASA on background rights, joint inventions, and commercialization activity

UC Invention Policy pol_97.html  UC may claim inventions made in the UARC  UC coordinates patent work with NASA  If UC releases its interest, rights go to NASA  UC licenses patent rights to promote development  UC shares 35% of net royalties with inventors

Background Rights These are rights in UC technology developed outside the UARC Requires Contracting Officer approval before using these rights in UARC task work Report background rights to UARC and UCSC You are obligated to deliver technology to NASA free of restraints

Software and Copyright Wide range of software applications, scripts, libraries, and tools  NASA considers software “New Technology”  Report software  NASA may require assignment of copyright and prevent disclosure, e.g., publication  The UARC can manage software when it: Generates program income Is distributed by open source

Data Data sets are important assets to NASA, therefore  Observe restrictions on sensitive data received such as “Limited Rights” “Restrictive Rights” legends Protective arrangements  Observe restrictions on data first produced  If not sure, check with your Task Manager  Clarify proposed data releases using Form 1676: NASA Scientific and Technical Document Availability Authorization Applicable to Alt II tasks and Alt I tasks where there is a NASA co-author

SUMMARY Intellectual Property is a valuable asset Report promptly  Inventions  Discoveries Potentially patentable New advances If not sure, err on the side of reporting  Protect Sensitive Data  Report Background Rights