Intellectual Property (IP) Overview: “Tools You Can Use” Christopher D. McKinney Director Office of Technology Transfer Vanderbilt University September, 2002
High-tech often begins as low-tech
Principal Forms of IP Patent Patent Copyright Copyright Trademark/Service Mark Trademark/Service Mark Trade Secret Trade Secret
Why IP? IP is a form of property which is intangible yet often quite valuable IP is a form of property which is intangible yet often quite valuable The “value capture” comes through leveraging IP in partnerships, joint ventures, research collaborations, licenses, and the like The “value capture” comes through leveraging IP in partnerships, joint ventures, research collaborations, licenses, and the like
(Utility) Patent What? - process - machine - product - composition of matter (includes software) What? - process - machine - product - composition of matter (includes software) Patentability - novel - useful - non-obvious Patentability - novel - useful - non-obvious Exclusive right – not an affirmative one! Exclusive right – not an affirmative one! Term - 20 years from filing Challenges – must file within one year of public use, offer for sale, sale, or publication; enters public domain after expiration of patent Variations - plant patent (asexual reproduction) - design patent (ornamental - 14 years)
Copyright Original works of expression fixed in a tangible form, including literary, musical, pictorial, graphic, sculptural, and audiovisual works (includes software) Original works of expression fixed in a tangible form, including literary, musical, pictorial, graphic, sculptural, and audiovisual works (includes software) Right to reproduce, make derivative works, publicly distribute, perform, and display work Right to reproduce, make derivative works, publicly distribute, perform, and display work Registration – not necessary but useful Term – life of author + 70 years or if “work for hire,” shorter of 95 years from publication or 100 years from creation But… only protects expression, not ideas; does not limit independent creation Variation - mask works
Trademark/Service Mark Any mark (e.g., word, group of words, logo) that identifies the source of goods or services from those of another when used in commerce Any mark (e.g., word, group of words, logo) that identifies the source of goods or services from those of another when used in commerce Owner can prevent others from using confusingly similar marks Owner can prevent others from using confusingly similar marks Common law rights – federal and state registrations available If registered on a federal basis, term can be extended forever “Use it or lose it” Avoid your mark becoming generic!
Trade Secret Data, formulas, patterns, compilations, programs, devices, methods, lists of actual or potential customers/suppliers that derive economic value from not being generally known or readily ascertainable Data, formulas, patterns, compilations, programs, devices, methods, lists of actual or potential customers/suppliers that derive economic value from not being generally known or readily ascertainable Enforcement based on proper safeguarding Cannot be used to protect matter that can be readily observed or reverse engineered Can be a valuable form of protection if relationships are managed effectively
High Points Patent inventions Patent inventions Copyright expressions Copyright expressions Trademark/service mark good will Trademark/service mark good will Trade secret secrets Trade secret secrets
Success stories from licensing Trusopt ® - glaucoma drug Trusopt ® - glaucoma drug Sentricon ® - pest control system Sentricon ® - pest control system Gatorade ® - sports drink and more Gatorade ® - sports drink and more REACT 350 ® - highway crash cushions REACT 350 ® - highway crash cushions READ 180 ® - middle school reading skills READ 180 ® - middle school reading skills
More stories… WizOrder – physician order entry WizOrder – physician order entry VPIMS – anesthesiology support VPIMS – anesthesiology support Robotics – “natural intelligence” Robotics – “natural intelligence” Risk management – new model Risk management – new model
Contact information Christopher D. McKinney Office of Technology Transfer Vanderbilt University th Avenue South, Suite 105 Nashville, Tennessee / (phone) 615/ (fax)