1. ENGM 742: Engineering Management and Labor Relations
Intellectual Property

2. Property
Real Property
Personal Property
Intellectual Property

3. Intellectual Property
Merriam Webster’s On-Line Dictionary
Intellectual Property:
Function: noun
Date: 1845
: property (as an idea, invention, or process) that derives from the work of the mind or intellect; also : an application, right, or registration relating to this

4. Intellectual Property
South Dakota Board of Regents D.
Intellectual Property: Intellectual property includes works of authorship, inventions and discoveries that may be subject to protection by patents, copyrights, trademarks, service marks and trade secrets.

5. Intellectual Property
Patents among a family of Intellectual Property Rights
Trademarks (source indicators)
Copyrights (original expressions)
Trade Secrets (internally protected)

6. Intellectual Property
Patent Types
Provisional: one year to file utility, reserves priority dates without full patent
Plant: newly invented strains of asexually reproducing plants
Utility: full patent (compositions, methods)
Design: ornamental features only

7. Intellectual Property
PRIOR ART All information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality. If an invention has been described in prior art, a patent on that invention is not valid. Can be publications, offers for sale, published patent applications, oral disclosures, or “otherwise available to the public.”

8. Intellectual Property Prior Art Rejections from Patent Office
Basically two types
Novelty (Section 102): prior art “reads on” the patent claims exactly. Also known as “anticipation”
Obviousness (Section 103): patent claims are obvious in light of one or more pieces of prior art combined

9. Solo Inventorship Alone, in a basement or a garage…
In the Laboratory by Professor Plum with the Wrench
Castle on the hill side
Lair of an “evil” genius
As part of someone’s job

10. Joint Inventorship One or more people contribute to the creation
Inventorship may not be pre-determined in a contract; a formula or structure may be created for dividing invetorhsip or ownership of the incipient invention may be delegated

11. Intellectual Property
Most Common Question with Intellectual Property:
Who Owns It?

12. Intellectual Property
Where to look?
Policies
Contracts
Employment Contracts
Funding Documents

13. Intellectual Property
SDBOR General Statement
A. On behalf of the public, and subject to the exceptions provided in Section 4(C) and elsewhere in this policy, the Board, acting through the employing institution, will own intellectual property that institutional employees develop in the course of or as a direct result of their duties with the institution, if the properties were developed with the use of institutional funds or resources.

14. Intellectual Property
SDBOR 4.34 §4 Ownership of Intellectual Policy
A. Publicly Owned Intellectual Property
1. Subject to the exceptions provided in this policy, the institution owns intellectual property:
a. made by employees of the institution in the course of or as a direct result of their duties with the institution, where
i. all or part of the attendant costs were paid from institutional funds or from funds under the control of or administered by the institution, or
ii. institutional facilities or resources were used in whole or in part to create the intellectual property, unless such resources or facilities are available without charge to the public or the applicable use fee has been paid.

15. Intellectual Property
SDBOR 4.34 §4 Ownership of Intellectual Policy
B. Individually Owned Intellectual Property
The Designated Individual will acknowledge in writing, upon request of employees who created an intellectual property, that the institution claims no ownership in intellectual property that was not developed:
1. in the course of and as direct result of duties with the institution,
2. with use of institutional facilities or resources, excluding the use of institutional facilities or resources available without charge to the public, or for which applicable use fees had been paid, or
3. pursuant to a specific commission or other agreement for the development of the property.

16. Intellectual Property
SDBOR 4.34 §4 Ownership of Intellectual Policy
C. Scholarly and Creative Artistic Works
Except for works that have been specifically commissioned or created pursuant to an agreement to create such works, the institutions do not claim copyright ownership of textbooks, monographs, scholarly works, publications in professional, trade or popular journals or periodicals, creative artistic works, instructional materials, including courseware, multimedia products, and materials prepared for telecommunicated or other technologically assisted delivery of instruction. Employee-owned scholarly works created or used by the employees in the course of instruction, including courseware, multimedia products and materials prepared for telecommunicated or other technologically assisted delivery of instruction, by whatever means now in existence or hereafter developed, will subject to a no-cost, non-exclusive, world-wide license to the Board to use instructional material for educational and research purposes.

17. Intellectual Property
SDBOR 4.34 §4 Ownership of Intellectual Policy
D. Sponsor-Supported Efforts
The rights to intellectual property produced as a result of work supported partially or fully by an external agency and for which an approved contract is on file with the institution will be determined by the terms of the specific contract. If no approved contract is on file, rights to intellectual property, other than scholarly or creative artistic works, created as a result of sponsored research will reside in the institution.

18. Intellectual Property
Employment Contract
IP clause
Non-disclosure clause
Non-compete clause

19. Intellectual Property
IP Clauses
Used to determine the ownership rights of a new idea, process, or application that is developed while in an employment relationship
EMPLOYMENT DEFAULT IN SD: inventor has right to manufacture new item for self but not to distribute commercially; employer possesses exclusive commercial license to manufacture and sell

20. Intellectual Property
Common Question: I’ve thought up a new “X” – can I market that myself or does my organization own it? What if I only work on it at home in my garage?

21. Intellectual Property
Consult your employment contract for an Intellectual Property clause;
if no then it is most likely yours
if yes, then look at terms as owner/organization may own it all or part of it
Key piece of information – Engineering Notebook
Will give evidence of the origin of the idea and what resources went into it

22. Intellectual Property
§X Intellectual Property: Except as otherwise provided herein, ownership of Intellectual Property shall vest in the PARTY whose personnel conceived the subject matter or first actually reduced the subject matter to practice, and such PARTY may perfect legal protection therein in its own name and at its own expense. Jointly made or generated Intellectual Property shall be jointly owned by the PARTIES pursuant to terms and conditions negotiated specifically for the purposes of clarifying rights related to said jointly-developed intellectual property. OR §X Intellectual Property: Property rights associated with Intellectual Property that arises out of this AGREEMENT shall be governed by the terms and conditions of the COMMERCIALIZATION AND EXCLUSIVE LICENSE AGREEMENT (“CELA”) incorporated herein by reference.

23. Intellectual Property
Non-Disclosure Clause/Agreements
A contract or term within a contract that limits the communication about specific processes, ideas, or concept applications
Generally mutually binding on both parties
Used to protect intellectual property from premature disclosure into the marketplace

24. Intellectual Property
Disclosure
In general, revealing information about an invention to another party
May also mean the specific act of making the IP Manager/Officer aware that something new has been invented

25. Intellectual Property
Non-Disclosure Agreement (NDA)
Confidentiality Agreement (CA)
Intellectual Property Agreement (IPA)
Commercialization & Development Agreement (CDA)
Memorandum of Understanding (MOU)
Research & Development Agreement (RDA)

26. Intellectual Property
Bayh-Dole Act of 1980
Universities must
Grant licenses rather than assign
Disclose government interest in the patent
Share income with inventors
Use residual income for research
Grant a non-exclusive license to the government
Really started university technology transfer
Universities and small businesses retain title to inventions under federally funded research programs

27. Intellectual Property
Traditional University Role In IP
Partner with Commercial Entities to develop new technologies as their R&D firm (commercial agreements)
Partner through agencies (SBIR programs) to bring new technologies to market readiness
Report new inventions to funders as part of grant requirements
Patent new technologies and transfer them to the commercial sector

28. Intellectual Property
AMERICA INVENTS ACT
September 16, 2011
Variety of Effective Dates depending on the provision
Purpose: consistency with rest of the world

29. Intellectual Property
Before the Act, in the US:
First inventor to invent wins the patent, even over a prior application-filer.
Very factually complicated with issues of conception, reduction to practice, etc.
Not consistent with rest of the world and made work within various IP treaties difficult

30. Intellectual Property
CHANGED BECAUSE OF THE ACT:
U.S. is now a modified “first to file” country, like most of the world.
First genuine inventor to file wins the patent over second filer of same subject matter

31. Intellectual Property
In a true “first to file” system, a disclosure, even by the inventor, that came before filing the patent application would be prior art. In a gesture to universities, recognizing the “publish or perish” culture, the AIA removes from prior art: 1. prior disclosures, made by the inventor or another who received the information directly or indirectly from the inventor less than one year before filing and 2. any disclosures or patent application of the same subject matter made by a third party after that original disclosure

32. Intellectual Property
EXAMPLES:
Inventor A invents on March 1, 2015
Inventor B invents on March 3, 2015
Inventor B files patent application March 17, 2015
Inventor A files patent application April 1, 2015
Who gets the patent? INVENTOR B!

33. Intellectual Property
Assume Inventor A not only invented first, but published March 10, 2015 (after both invented, but before either filed an application). Who wins the patent? INVENTOR A, even though she was the second to file - Can use the grace period so is not prior art against herself - Is prior art against B’s application. B cannot count on A’s publication grace period. It is personal to A.

34. Intellectual Property
Proceedings to determine who is the true inventor, even within the first to file system Example: A truly invents, B obtains it directly or indirectly from the inventor or joint inventor. B files first. A can win proceeding Will be at PTO and Federal District Courts Problems: unclear burdens, expense, uncertainty of outcome

35. Patent Infringement
A patent is infringed when the invention covered by the patent is used without the permission of the inventor during the time that the patent is in force.
The patent owner has the right to sue the infringer in the federal courts and collect compensation for past infringement.
The owner can also cause the infringer to cease and desist all infringing activity.

36. Trademarks
A distinguishing symbol, design, mark or word used by a manufacturer to identify his product from his competitors’.
A mark, character or symbol by which another entity is recognized or associated.

37. Copyrights
A copyright is a grant, by the United States, to an author for the right to exclude others (for a limited time) from reproducing his/her work.

38. Types of Copyrights Literary works Musical works Dramatic works
Choreographic works
Pictorial works
Motion Pictures/Videos
Sound Recordings
Software

39. Web addresses Copyright http://www.copyright.gov/
Patent Office