Patents and Licensing Guven Yalcintas, Ph.D. Vice President Technology Transfer Office The Research Foundation of SUNY

Peace and Prosperity Through Science and Collaboration Overview Out-LicensingOut-Licensing Intellectual Property TypesIntellectual Property Types –Trademarks –Copyrights –Patents Patents & LicensingPatents & Licensing Technology Transfer is…Technology Transfer is… 2

Peace and Prosperity Through Science and Collaboration Out Licensing Intellectual Property Market Development Commercial Development 3

Peace and Prosperity Through Science and Collaboration Out Licensing Intellectual Property Market Development Commercial Development InnovationsUnmet Needs 4

Peace and Prosperity Through Science and Collaboration Out Licensing Intellectual Property Market Development Commercial Development Innovations Unmet Needs Licenses Deals Spin-outs Start-ups 5

Peace and Prosperity Through Science and Collaboration Idea Protection Front end of Technology Transfer Necessary because –Without protection: Ideas are in public domainIdeas are in public domain No restrictions to use or misuseNo restrictions to use or misuse Little value to developerLittle value to developer 6

Peace and Prosperity Through Science and Collaboration Intellectual Property Four types –Patents –Trademarks –Copyrights –Trade secrets 7

Peace and Prosperity Through Science and Collaboration Trademarks Trademarks are –Words –Phrases –Logos –Symbols –Used to identify the source of a product or service 8

Peace and Prosperity Through Science and Collaboration Trademarks Trademarks are –Words –Phrases –Logos –Symbols –Used to identify the source of product or service What is the most identifiable trademark on the planet…? 9

Peace and Prosperity Through Science and Collaboration Trademarks Coke! 10

Peace and Prosperity Through Science and Collaboration Copyrights Copyrights –The owner of a creative work can prevent others from using the work without the owners permission. –Three criteria Work must be originalWork must be original Work must be fixed in a tangible medium of expressionWork must be fixed in a tangible medium of expression Work must be produced by human intellectWork must be produced by human intellect 11

Peace and Prosperity Through Science and Collaboration Patent Types Patent types –Utility –Design –Plant 12

Peace and Prosperity Through Science and Collaboration Patent Types Patent types –Utility –Design –Plant Patents are –Limited monopolies Patent claimsPatent claims TimeTime 13

Peace and Prosperity Through Science and Collaboration What is Patentable? Ideas that are –Useful –Novel –Non-obvious 14

Peace and Prosperity Through Science and Collaboration What is Patentable? Ideas that are –Useful –Novel –Non-obvious Ideas can be –Compositions, Methods, Devices, Software –Designs –Plants Asexually reproduced onlyAsexually reproduced only 15

Peace and Prosperity Through Science and Collaboration Capturing Innovation Use a notebook 16

Peace and Prosperity Through Science and Collaboration Capturing Innovation Use a notebookUse a notebook Describe your innovationDescribe your innovation –Discuss prior art (novelty) –Discuss why the innovation is useful and non-obvious –Note dates of conception and reduction to practice 17

Peace and Prosperity Through Science and Collaboration Capturing Innovation Use a notebookUse a notebook Describe your innovationDescribe your innovation –Discuss prior art (novelty) –Discuss why the innovation is useful and non-obvious –Note dates of conception and reduction to practice Sign and date the notebook pagesSign and date the notebook pages 18

Peace and Prosperity Through Science and Collaboration Capturing Innovation Use a notebookUse a notebook Describe your innovationDescribe your innovation –Discuss prior art (novelty) –Discuss why the innovation is useful and non-obvious –Note dates of conception and reduction to practice Sign and date the notebook pagesSign and date the notebook pages A witness is important (sign and date)A witness is important (sign and date) 19

Peace and Prosperity Through Science and Collaboration Whats next? Disclosure –Prepare a summary of your innovation –Use university disclosure documents as a guide 20

Peace and Prosperity Through Science and Collaboration Who files your patent application? Intellectual Property or Patent Attorney Patent Agent You –If you are the inventor 21

Peace and Prosperity Through Science and Collaboration Who files your patent application? Intellectual Property or Patent Attorney Patent Agent You The application is filed with –US Patent and Trademark Office 22

Peace and Prosperity Through Science and Collaboration Patent Flow Chart - Overview DisclosureDisclosure Review with your attorneyReview with your attorney PatentPatent –Application Filing –Application Prosecution –Issuance –Maintenance –Protection 23

Peace and Prosperity Through Science and Collaboration Patent Flow Chart Disclosure Patent Counsel 24

Peace and Prosperity Through Science and Collaboration Patent Flow Chart Disclosure Patent Counsel 1.Review 2.Prior Art Search 3.Select Filing Mode 4.Prepare application 25

Peace and Prosperity Through Science and Collaboration Patent Flow Chart Disclosure Patent Counsel Prepares Patent Application 26

Peace and Prosperity Through Science and Collaboration The Disclosure Critical documentCritical document –Marks transition Critical information sourceCritical information source –Title –Principal Investigators: contact info, roles, titles –Funding Source –Confidential and non-confidential information –Potential customers or licensees Bounds the inventionBounds the invention 27

Peace and Prosperity Through Science and Collaboration Patent Applications Application FilingApplication Filing –Patent Counsel Application ProsecutionApplication Prosecution –Patents – about 2 to 3 years –Application fees –Prosecution costs 28

Peace and Prosperity Through Science and Collaboration Issued Patents IssueIssue –Patent issues after fees are paid MaintenanceMaintenance –Fees 3.5, 7.5 and 11.5 years after issue 3.5, 7.5 and 11.5 years after issue 29

Peace and Prosperity Through Science and Collaboration Issued Patents Protection –Infringement is Assignees responsibility! PolicingPolicing LitigationLitigation 30

Peace and Prosperity Through Science and Collaboration Start Licensing? As soon as possibleAs soon as possible –Patent prosecution takes time –While prosecuting Value the innovation Value the innovation Engage potential customers (licensees) Engage potential customers (licensees) Understand your market Understand your market Assess risk Assess risk New to Licensing?New to Licensing? –Get help! Learn the basics Learn the basics Network Network The Internet is flooded with free information The Internet is flooded with free information 31

Peace and Prosperity Through Science and Collaboration Your market Market Development –Market Analysis Product or process?Product or process? Who is the ultimate customer?Who is the ultimate customer? How many transactions are required?How many transactions are required? Valuation!Valuation! –License now? 32

Peace and Prosperity Through Science and Collaboration Your market Market Development –Market Analysis Product or process?Product or process? Who is the ultimate customer?Who is the ultimate customer? How many transactions are required?How many transactions are required? Valuation!Valuation! –Market Strategy (Biz plan) Timeline and budgetTimeline and budget How will product move from raw materials to marketplace?How will product move from raw materials to marketplace? –License now? 33

Peace and Prosperity Through Science and Collaboration Commercial Development Product/Process development –Often means more value to licensee –Investment required (time and $$) –Reassess risk Development Strategy –Timeline and budget –Also Customers!Customers! Partners?Partners? Development team?Development team? 34

Peace and Prosperity Through Science and Collaboration Licensing is… Intellectual Property –Patents –Trademarks –Copyrights 35

Peace and Prosperity Through Science and Collaboration Licensing is… Intellectual Property –Patents –Trademarks –Copyrights Market Development –Market Analysis –Market Strategy 36

Peace and Prosperity Through Science and Collaboration Licensing is… Intellectual Property –Patents –Trademarks –Copyrights Market Development –Market Analysis –Market Strategy Commercial Development –Creating tangible value 37

Peace and Prosperity Through Science and Collaboration Licensing Is… 38

Peace and Prosperity Through Science and Collaboration Licensing is… Relationships 39

Peace and Prosperity Through Science and Collaboration Summary Patents and Licensing –Begins with an Idea, a Notebook and a Disclosure 40

Peace and Prosperity Through Science and Collaboration Summary Patents and Licensing –Begins with an Idea, a Notebook and a Disclosure –Patents Critical tool for protecting innovationCritical tool for protecting innovation Know the basic rulesKnow the basic rules Understand the process and your roleUnderstand the process and your role 41

Peace and Prosperity Through Science and Collaboration Summary Patents and Licensing –Begins with an Idea, a Notebook and a Disclosure –Patents Critical tool for protecting innovationCritical tool for protecting innovation Know the basic rulesKnow the basic rules Understand the process and your roleUnderstand the process and your role –Licensing Begins before the patent issuesBegins before the patent issues Play your rolePlay your role Find reliable expertiseFind reliable expertise 42

Peace and Prosperity Through Science and Collaboration Resources US Patent and Trademark Office – US Copyright Office – The Research Foundation of SUNY – TTO – Association of University Technology Managers – Licensing Executives Society – 43