1. Agenda: Define IP in order to imagine applications to grow IOOS Review how IP created Review how IP used in both directions Highlight SWOT elements for IP in IOOS business models Consider FAC roles Sources: Battelle Lead Counsel Battelle Intellectual Property Office Practitioners Benesch law firm – post-AIA 2013 briefings of Kern and Anderson Amer. Assoc. Med. Colleges, Assoc. Univ. Tech. Mgrs, WHOI Legal framework to protect intellectual property IOOS FAC 15apr14 Gulbransen1 of 9

2. U.S. Constitution, Article 1, Section 8 …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. IP = Different types of property rights that are protected by U.S. laws or granted by the government to protect new ideas or works. IP can be documented as a utility patent, trade secret, copyright or trademark. US Patent Act, Section 1 …statutory, novel, inventive/non-obvious, and industrially applicable Intellectual Property (IP) Definition IOOS FAC 15apr14 Gulbransen2 of 9

3. Type of New ContentHow to Protect CriteriaApx. Length of Protection Inventions (e.g. compositions or matter, machines, processes, articles of manufacture, etc.) PatentNew, useful (not ornamental), not obvious and qualifies as statutory subject matter (not laws of nature or mathematic formula) 20 years from filing of application Any business or technical information Trade SecretMust derive economic value from being maintained as secret and must be subject to reasonable measures to maintain secret As long as you can keep it secret Creative works of authorship (e.g. literary works, software, visual arts, compilations, software, etc.. CopyrightExpression that is recorded in any type of tangible media and is a result of at least a minimal amount of creativity Generally, the author’s life plus 70; longer for corporate publications Logo, slogan, brandingTrademarkIdentify or distinguish goods and services with their source Indefinite Intellectual Property examples

4. “…ownership runs deeper than inventions and artistic works, extending to skills, ideas and professional ties — tacit knowledge and social relations that cannot be subject to patent or copyright under the traditional scope of intellectual property, but which corporations lay claim to at increasing rates through employment agreements. In these agreements, companies demand that employees, from those in low-level manufacturing positions to design engineers and creative workers, sign away all their innovations [such as algorithms], and the knowledge they will acquire during the course of employment, and refrain from competing with their employer post- employment, whether that means taking a new job with a competitor or starting their own company.” NYTimes 14apr14, Orly Lobel, Univ. San Diego School of Law, Center for Intellectual Property and Markets Copyright law, ‘work made for hire’ is owned by employer Innovation not always owned by innovator IOOS FAC 15apr14 Gulbransen3 of 9

5. Innovation not always owned by federal funder right to elect title to Subject Inventions (Bayh-Dole Act 1980 - 35USC202) FAR Subpart 27.3 Patent Rights under Government Contract “…Invention means any invention or discovery that is or may be patentable or otherwise protectable under title 35 of the U.S. Code… conception or first actual reduction to practice… FAR Subpart 27.4 Rights in Data and Copyrights “…data means recorded information… functionality, but excludes source code and algorithms… limited rights… unlimited rights… copyright authorization… publication and use… special works… cosponsored research… not readily segregable… may limit rights… for a period…” IOOS FAC 15apr14 Gulbransen4 of 9

6. Invention Disclosure Report Who conceived and first reduced to practice? What is new? How innovation put into practice Why, i.e. issue to solve or unmet need targeted Where innovation to be applied When publically disclosed and filed As of 2014, first-to-file versus previous grace periods after publish. Demonstrate lead inventor (and team) conceived, reduced to practice, filed. Demonstrate = lab notebook… ink… dated… signed… self-contained… Do/can IOOC, FAC, ARA, or RAs have a legal role in IP creation? Or is it with PIs? IOOS FAC 15apr14 Gulbransen5 of 9

7. How IP use can be managed Confidentiality (non)Disclosure Agreements communicate Invention Disclosure Report Use Licenses & Fees, per issue, geography and or customer set share Material Transfer Agreements Grant Back and Options Agreements develop CRADA IOOS FAC 15apr14 Gulbransen6 of 9

8. SWOT assessment for IP in IOOS Strengths – expert community, testbed, customers, momentum, flexibility, … Weakness – open data culture, blended resources, annual horizon, VC relations, … Opportunities – vital societal issues, America Invents Act, domestic recovery, … Threats – maintenance costs, staff turnover, federal trend, contract T&Cs, … IOOS FAC 15apr14 Gulbransen7 of 9

9. How IP use can be promoted 1. Universities should reserve the right to practice licensed inventions and to allow other non-profit and governmental organizations to do so 2. Exclusive licenses should be structured in a manner that encourages technology development and use 3. Strive to minimize the licensing of “future improvements” 4. Universities should anticipate and help to manage technology transfer related conflicts of interest 5. Ensure broad access to research tools 6. Enforcement action should be carefully considered 7. Be mindful of export regulations 8. Be mindful of the implications of working with patent aggregators 9. Consider including provisions that address unmet needs, such as those of neglected patient populations or geographic areas, giving particular attention to improved therapeutics, diagnostics and agricultural technologies for the developing world IOOS FAC 15apr14 Gulbransen8 of 9

10. How IP use promotion can be tailored for IOOS 1. IOOS grants should incentivize practice of licensed inventions and to allow other non-profit and governmental and commercial organizations to do so 2. FAC provide primer on Exclusive licenses to be structured in a manner that encourages technology development and use and revenue sharing (?) 3. Strive to minimize the licensing of “future improvements” except to offer exclusivity for time period for IOOS priority issues 4. FAC provide primer to manage technology transfer related conflicts of interest 5. Promote awareness and broader access to research tools 6. Enforcement action should be carefully considered 7. Be mindful of export regulations 8. Be mindful of the implications of working with patent aggregators, specifically co-investors 9. Consider including provisions that address unmet needs, such as those of neglected patient populations or geographic areas, giving particular attention to improved therapeutics, diagnostics and agricultural technologies for the developing world IOOS FAC 15apr14 Gulbransen9 of 9