1. TechRoadmap What You Don’t Learn in Grad School IP Tips for Grad Students Bruce A. Horwitz TechRoadmap Inc. BruceAHz@TechRoadmap.com

2. TechRoadmap Copyright 2005 TechRoadmap Inc. Could this be your email? Sent:Tuesday, April 26, 2005, 15:26:36 To:bruceahz@techroadmap.com Subject:Harvard Researcher looking to pursue patent on its own I have been a research fellow at Dana-Farber for the past year, after finishing my PhD in Applied Mathematics at Harvard. I'm in the process of leaving due to a conflict with the lab director. Pre-conflict, we had filed an invention disclosure on a computer visualization algorithm I developed (all by myself). Recently, I received an email from the Dana-Farber patent office saying they are dropping the patent due to some prior art papers … There's a clause in the Dana-Farber rulebook that says if Dana-Farber drop the patent, the inventors are given the chance to pursue it themselves. Basically, if you find it to be viable, I would like to go forward with the patent application myself.

3. TechRoadmap Copyright 2005 TechRoadmap Inc. Goals for today  Why is IP is important for you and the logic behind Patent laws/rules  Good IP practices for academia and beyond.

4. TechRoadmap Copyright 2005 TechRoadmap Inc.

5. TechRoadmap Copyright 2005 TechRoadmap Inc. Why Gordon Gould is rich Gas Laser High R Mirrors Mode- Locking Mode-Locked Ar Ion Laser

6. TechRoadmap Copyright 2005 TechRoadmap Inc. What is Intellectual Property?  Property = Ownership rights  Primary right = the right to exclude House & Land = No trespassing Journal article = No copying (copyright) Invention = No use or sale (patent)

7. TechRoadmap Copyright 2005 TechRoadmap Inc. Three recognized forms of IP  Trademarks – Exclude others from using your business reputation.  Copyrights – Exclude others from copying Journal articles are copyrighted Covers only the expression not the idea Your “products” are the ideas  Patents – Exclude others from profiting from your creativity. “Useful” devices/methods A bargain with society that rewards innovation

8. TechRoadmap Copyright 2005 TechRoadmap Inc. Excerpts from McMaster ’ s IP policy  The purpose of McMaster University includes the discovery, communication, and preservation of knowledge.  It is possible that, at times, the academic and research missions of the Institutions may conflict with the potential commercialization of intellectual property. As the academic and research missions of the Institutions should take priority, the following principles shall take precedence over any other aspect of this policy where applicable: Academic Researchers [ … ] have the [sole] right [ … ] to determine whether or not any new creation or discovery for which they are responsible should be commercialized. No member of the Institutions shall be required to engage in any work or research which prohibits the results of the work or research from publication or disclosure to the public [ … ]

9. TechRoadmap Copyright 2005 TechRoadmap Inc. Reasons to patent  Improve your competitive edge in the market. Block/hinder competitors from copying YOUR product Maintain freedom to operate – cross-license “currency” Reduce the risk of innovating  Non-Technical (added value to your organization) Add market value to your company Attract strategic partners, customers, and employees Enhance branding, market effectiveness Improve bottom line through licensing Deter new competition  You may join a start up based on your invention  Looks good on your resume

10. TechRoadmap Copyright 2005 TechRoadmap Inc. Taking it with you  The case of Dr. John Madey vs. Duke The “research, academic, or experimental use” exemption. Very narrow – “solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry”

11. TechRoadmap Copyright 2005 TechRoadmap Inc. Reasons not to patent  There’s no foreseeable commercial value to your work.  There’s no competitive advantage in your work  You can’t afford to enforce it if you get it.  You value the open exchange of ideas in your community of scholars.

12. TechRoadmap Copyright 2005 TechRoadmap Inc. Should Grad Students patent  Dr. Keith Knox “Knox-Thompson” algorithm (1974) Cited 30 years later

13. TechRoadmap Copyright 2005 TechRoadmap Inc. A CONTRACT WITH SOCIETY Limited time “monopoly” learns of your invention You Society

14. TechRoadmap Copyright 2005 TechRoadmap Inc. Benefits of the contract For the inventor  Gives you sole use of a competitive advantage  Blocks others from improving their ideas  Bargaining chip for cross-licensing For Society  Simulates investment in R&D  Knowledge revealed advances state-of-the- art and stimulates other inventions.  When your patent expires, everyone has the knowledge to make, use, and sell what had been your secret.

15. TechRoadmap Copyright 2005 TechRoadmap Inc. “Contract” terms: “Novel” – If it’s already available to the public, why should you get the benefits? “Non-Obvious” – It’s no benefit to society if every mundane change, adaptation, or new combination is locked up in a patent. “Reduced to Practice” – If you can’t convince me you know how to make it work, why should you get control?

16. TechRoadmap Copyright 2005 TechRoadmap Inc. Budgeting for a [U.S.] patent Steps  Conception  Reduction to Practice  Patent Disclosure  Prior Art Search  Patent Application  Office Action  Issue fee  Maintenance Fees  Total Cost Costs  Indirect  5 to 20 labor hours  $500 ~ $2000 and up  $7.5k ~ $10k and up  $3k ~ 5k per Action  $1370  $940; $2150; $3320 ( 3.5; 7.5 ; 11.5 years)  $15,000 ~ $25,000

17. TechRoadmap Copyright 2005 TechRoadmap Inc. Is it worthwhile to file a patent? How broadly patentable? Claims capture the value? Easy to design around patent? Enforceable? Any dominating patents? Regulatory barriers? Cover intended product? Cover competitors products?

18. TechRoadmap Copyright 2005 TechRoadmap Inc. Classic academic mistake  KSU case  Poster presentation Unattended for 60 hours Interested audience Small volume of key info  Patent application 2 years later Rejection for prior public publication

19. TechRoadmap Copyright 2005 TechRoadmap Inc. Could this be your email? Sent:Tuesday, April 26, 2005, 15:26:36 To:bruceahz@techroadmap.com Subject:Harvard Researcher looking to pursue patent on its own I have been a research fellow at Dana-Farber for the past year, after finishing my PhD in Applied Mathematics at Harvard. I'm in the process of leaving due to a conflict with the lab director. Pre-conflict, we had filed an invention disclosure on a computer visualization algorithm I developed (all by myself). Recently, I received an email from the Dana-Farber patent office saying they are dropping the patent due to some prior art papers … There's a clause in the Dana-Farber rulebook that says if Dana-Farber drop the patent, the inventors are given the chance to pursue it themselves. Basically, if you find it to be viable, I would like to go forward with the patent application myself.

20. TechRoadmap Copyright 2005 TechRoadmap Inc. Common Mistakes/IP Tips 1.The first words out of our mouths! Think carefully about value of patenting 2.Making a public disclosure prior to filing. Accept the loss of academic interaction 3.Poor search to identify dominating patents, prior art. You are the expert; your invention must be novel and non-obvious; find the prior art! 4.Not maintaining a good notebook. More important in US (first to invent) 5.Not understanding your claims Insist that someone “translate”

21. TechRoadmap Copyright 2005 TechRoadmap Inc. Common Mistakes/IP Tips 6.Assuming that filing a patent provides protection; Forgetting that application will usually be published Keep your invention secret as long as possible. 7.Believing that a provisional application [US] can be a “napkin with a cover sheet” GIGO 8.Filing on each invention made 9.Filing in more/less countries than needed Have an IP strategy 10.Assuming you know “novel and non-obvious” Get advice from experienced professionals

22. TechRoadmap Copyright 2005 TechRoadmap Inc. Conclusions Patents encourage and reward creativity by letting inventors keep others from profiting from their inventions. Society benefits because inventors are encouraged to invent. Academics must trade the benefits of being part of a community of knowledge for the rewards of commercializing their inventions.