Coming Attractions Today- Jan 6 Intellectual Property Opportunity Recognition Preparation for Inventor Discussions Monday- Jan 11 Inventor Discussions Tim Fiez (Gartrell Group)- GEONOTES Alan Fern (OSU- EECS)- Sports Film Analysis Software Mike Bailey (OSU- EECS)- Ultra sensitive Accelerometer Wednesday- Jan 13 Inventor Discussion & Research Mas Subramanian (OSU Chem Dept)- Novel Blue Pigment Research Tool Tutorial- Autzen Room, Valley Library Graded Assignment due SAT, Jan 16 th at 11:59 pm. Patent assessment and commercialization potential ranking. More details to come

Intellectual Property What is intellectual property? What is intellectual property? US IP protection- US IP protection- Patent application process Patent application process What does a patent look like? What does a patent look like? Patents in Oregon- how are we doing? Patents in Oregon- how are we doing? Tacit Knowledge, the Inventor, and implications for Tech Commercialization Tacit Knowledge, the Inventor, and implications for Tech Commercialization CDA for this class CDA for this class

Physical vs Intellectual Property Physical vs Intellectual Property Factor Physical Property Intellectual Property Multi-Use Use by one firm precludes simultaneous use by another Use by one firm does not prevent use by another Physical depreciation Depreciates, wears out Does not wear out Protection and enforcement from encroachment Generally can enforce and protect ownership May be difficult or expensive to enforce and protect ownership

Categories of IP Trademark Trademark Copyright Copyright Patent Patent Trade secrets Trade secrets Others…. Others….

Inventors right to IP Protection: The U. S. Constitution !! Article 1, Section 8: Article 1, Section 8: “The Congress shall have power…” “The Congress shall have power…” “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries” “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”

Parts of a Patent Title/Number/Date of Filing/Date of Issue Title/Number/Date of Filing/Date of Issue Abstract Abstract Figures Figures Background Background Summary of Invention Summary of Invention Description of Preferred Embodiment Description of Preferred Embodiment THE CLAIMS THE CLAIMS

Patentable subject matter The patent claims define what is patented The patent claims define what is patentedpatent claims patent claims “Anything under the sun made by man” “Anything under the sun made by man” True or false? True or false? You need to be able to build it You need to be able to build it It needs to work It needs to workwork “Limited time” is 20 years from first filing “Limited time” is 20 years from first filing

Different types of patents Broad categories of patents: Broad categories of patents: Utility - this is 98% of all patents Utility - this is 98% of all patents Design- for new original, ornamental and non-obvious designs for articles of manufacture Design- for new original, ornamental and non-obvious designs for articles of manufacture Plant patents- e.g. genetically modified Plant patents- e.g. genetically modified Business method patents- “one click” buying method is patented by Amazon Business method patents- “one click” buying method is patented by Amazon

Categories of claims o Method (process) -Common for nanoscale inventions, semiconductor manufacturing, etc o Apparatus - Machine, compound, materials o Product made by process - Pharmaceutical drugs, semiconductor devices, etc (Lilienfeld, patent # issued 1928) (Lilienfeld, patent # issued 1928) Any patent can mix or match claims from these three categories Any patent can mix or match claims from these three categories

Benefit to the Public Publication- for all to learn and build upon Publication- for all to learn and build upon Must be enabling Must be enabling Must disclose “best mode” Must disclose “best mode” Must file promptly or waive rights Must file promptly or waive rights Cannot abandon, suppress, or conceal Cannot abandon, suppress, or conceal

Patent Fast Facts: Valuable Prizes to the Winners o Average Number of US Patents Issued per day (within a factor of 2) About 500!!! o Typical cost for preparing and filing a patent (within the range specified) o $10,000-$50,000 o Average cost to defend a patent in court $2,600,000 (as of 2006) $2,600,000 (as of 2006) o Corvallis National Rank in “Patents per capita” (within 2 places) 4 th (Source- USA Today, 2002) 4 th (Source- USA Today, 2002)

Patent Fast Facts: Valuable Prizes to the Winners o Date and invention of first US patent (within 20 years) July 31, “ Making Pot ash and Pearl Ash by a New Apparatus and Process”, Sam Hopkins, inventor o Number of US patents issued as of today? (within 100,000) 7,644,447 o Average length of time from application to granting of patent (within 12 months) 28 months, but biotech patents average 45 months

Benefit to the Public Right to exclude for a limited time Right to exclude for a limited time 20 years from first filing date 20 years from first filing date Cannot be extended Cannot be extended A monopoly deprives the public of something they had a right to do A monopoly deprives the public of something they had a right to do A patent contributes something new that no one had before A patent contributes something new that no one had before Fist to file vs first to invent Fist to file vs first to invent

“New, useful, and non- obvious” “Novelty” means new; not done before anywhere (publicly accessible) “Novelty” means new; not done before anywhere (publicly accessible) “Prior art” is publicly accessible by definition “Prior art” is publicly accessible by definition “Publication” need not be printed on paper…can be electronic, any language “Publication” need not be printed on paper…can be electronic, any language “Useful” means….? “Useful” means….? “Non-obvious” “Non-obvious”

From Invention to Protection (Before the USPTO) The idea! Document, date and witness it.. File an invention disclosure Review by IP committee To file or not to file???

From Invention to Protection (Filing with the USPTO) Provisional Application (optional) Full Application. USPTO Office actions, rejections, etc Patent is awarded!! If patent is awarded, 20 year clock starts from date of first filing OR

Oregon Patents

Oregon Patents by Assignee and Area

Patent Strategy IP Strategy is an essential function in a high tech business IP Strategy is an essential function in a high tech business To file or not to file… To file or not to file… Timing of patent filing Timing of patent filing Portfolio management- “horsetrading” Portfolio management- “horsetrading” Cross licensing with competitors Cross licensing with competitors The IP landscape and “patent trolls” The IP landscape and “patent trolls”

Trade Secrets Another alternative to filing a patent is to maintain an invention as a “trade secret”, intentionally kept from the public Another alternative to filing a patent is to maintain an invention as a “trade secret”, intentionally kept from the public The Coca Cola recipe has been a trade secret for more than 100 years- supposedly known only by two employees The Coca Cola recipe has been a trade secret for more than 100 years- supposedly known only by two employees Under what conditions would a company want to maintain IP as a trade secret? Under what conditions would a company want to maintain IP as a trade secret? What are the risks in doing so? What are the risks in doing so?

The Reality- “Tacit Knowledge“ For any technical idea, all the information relevant to an invention is rarely codified. For any technical idea, all the information relevant to an invention is rarely codified. Even to one “skilled in the art”, an invention can often not be reconstructed due to background information and knowledge known but not documented by the inventor Even to one “skilled in the art”, an invention can often not be reconstructed due to background information and knowledge known but not documented by the inventor This background knowledge is referred to as “tacit knowledge” and is one of the greatest challenges to technology transfer This background knowledge is referred to as “tacit knowledge” and is one of the greatest challenges to technology transfer

Remember this!! The amount of tacit knowledge in an invention is an important factor in deciding whether to form a spin off company or license it to an established firm The amount of tacit knowledge in an invention is an important factor in deciding whether to form a spin off company or license it to an established firm Why? Why?

Small Group Activity You are on the IP review committee of a small company. Assuming there was no prior art, what would you do with the following submitted IP? A replacement material which can be used to reduce your competitors product manufacturing by 50% A replacement material which can be used to reduce your competitors product manufacturing by 50% A new packaging method which preserves product quality at a lower cost A new packaging method which preserves product quality at a lower cost A new way of manufacturing a drug which reduces the manufacturing time by 40% with no impact on product form or effectiveness A new way of manufacturing a drug which reduces the manufacturing time by 40% with no impact on product form or effectiveness A method of embossing your company logo on the product that looks holographic A method of embossing your company logo on the product that looks holographic A new computer algorithm which works well for on-line real estate purchases A new computer algorithm which works well for on-line real estate purchases

Opportunity Recognition

First of all- Should you do it now or wait? EntrepreneurCompany foundedAge at time of startYear of start Bezos, JeffAmazon.com Cook, ScottIntuit Dell, MichaelDell Dubinsky, DonnaPalm Computing Gates, WilliamMicrosoft Hewlett, WilliamHP Hurley, ChadYouTube292005

What creates opportunities? Destabilizing influences- “market discontinuities” Destabilizing influences- “market discontinuities” Changes in technology, style, or economic incentives Changes in technology, style, or economic incentives Rapid Growth of the Technology Sector Rapid Growth of the Technology Sector Increasing pace of technology development Increasing pace of technology development Increasing pace of information creation. Time for doubling of total world information Increasing pace of information creation. Time for doubling of total world information years years years years Now 1.5 years Now 1.5 years Social or Cultural Changes Social or Cultural Changes Aging population, personal security, ….. Aging population, personal security, …..

Some Technology Trends That Will Create Opportunities Life Sciences- genetic engineering, genomics, biometrics Life Sciences- genetic engineering, genomics, biometrics Information technology- internet, wireless devices, interconnectivity Information technology- internet, wireless devices, interconnectivity Nanotechnology- Devices 100nm or less for drug delivery, biosensors, and other applications Nanotechnology- Devices 100nm or less for drug delivery, biosensors, and other applications Energy - fuel cells, energy efficient appliances, new heating & cooling methods, energy transmission, “micro-energy” generation Energy - fuel cells, energy efficient appliances, new heating & cooling methods, energy transmission, “micro-energy” generation Green Technology - renewable fuel sources, recycle and reuse, bioremediation, recognition of the “carbon footprint” Green Technology - renewable fuel sources, recycle and reuse, bioremediation, recognition of the “carbon footprint” Robotics- teams of small coordinated robots for monitoring or safety functions Robotics- teams of small coordinated robots for monitoring or safety functions Security devices- personal identification, computer security, “smart” cards Security devices- personal identification, computer security, “smart” cards Human/Computer Interface- speech recognition, improved man- machine information transfer and sharing Human/Computer Interface- speech recognition, improved man- machine information transfer and sharing Entertainment- available anywhere, anytime, can be personalized Entertainment- available anywhere, anytime, can be personalized

Some Megatrends That Will Create Opportunities Aging of the baby boom generation Aging of the baby boom generation Increasing diversity of the people of the United States Increasing diversity of the people of the United States Rising middle class of developing nations Rising middle class of developing nations Pervasive influence of media- television, DVD’s internet Pervasive influence of media- television, DVD’s internet Decreased “information asymmetry” due to the internet Decreased “information asymmetry” due to the internet Two working parent families Two working parent families Others? Others?

Characteristics of an Attractive Opportunity Timely- a current need or problem Solvable- can be addressed in the near future with accessible resources Important- the customer deems their problem worthy of being solved Profitable- the customer will pay for the solution and allow a profit Context- a favorable regulatory, competitor and industry situation

Small Group Exercise (Consider the 5 factors presented today) Assess the likely success of a selected patent using the characteristics of attractive opportunities or other factors. (10’) Assess the likely success of a selected patent using the characteristics of attractive opportunities or other factors. (10’) Yes, No or maybe ???? Yes, No or maybe ???? Changes you might suggest to make it more successful Changes you might suggest to make it more successful Pick a spokesperson, explain your product and reasoning (3-5’ each) Pick a spokesperson, explain your product and reasoning (3-5’ each)