1. Intellectual Property Primer
Stephen Auvil
Assistant Vice President for Research
University of Maryland, Baltimore County

2. What is Intellectual Property?
Something that is owned or possessed.
Merriam-Webster
Intellectual Property:
A product of the intellect that has commercial value.
American Heritage Dictionary

3. Types of Intellectual Property
Patents
Copyrights
Trademarks (Service Marks)
Trade Secrets
Others:
Mask Works
Plant Variety Protection
Trade Dress
Know-how

4. Patents
# 5,205,473
Protects:
A new and useful process, machine, manufacture, or composition of matter
Rights:
Make, use, sell, have made,
import/export
Period of Protection:
20 years from filing for a
utility patent

5. Copyrights
© 2009 University of Maryland
Protects:
Original works of authorship fixed in a tangible medium of expression
Rights:
Reproduce, prepare derivative works, distribute, perform, and display
Period of Protection:
Life of the author + 75 years and up to 120 years from the date of creation for some works

6. Trademarks ™ ® Protects:
™ ®
Protects:
Word, symbol, design, or combination word and design, slogan, or sound that identifies and distinguishes the goods and services of one party from another
Rights:
Use with a product or service
Period of Protection:
Life of the product or service

7. Trade Secrets Protects: Secret ingredients, processes, or methods
Rights:
Protection from corporate espionage
Period of Protection:
Life of the secret

8. More on Patents Purpose of a Patent System: To share ideas Rights:
Right to exclude others, NOT to practice
First to Invent System:
First to Invent versus First to File
Importance of documentation
(This could change soon!)

9. Types of Patents: Utility Design Plant Plant Variety Protection
More on Patents
Types of Patents:
Utility
Design
Plant
Plant Variety Protection

10. More on Patents Requirements for a Patent: Enabling Description Useful
Novel
Non-obvious

11. More on Patents Inventorship:
Someone who has made an intellectual contribution to the conception of the invention
The contribution must be covered by one of the claims

12. More on Patents Obtaining a Patent: Provisional Application (1 year)
PCT Application (30 Months)
Utility Application (Examined)
Patents must be filed by the inventor or on the inventor’s behalf by a registered patent attorney or patent agent.

13. Costs of Filing a Patent:
More on Patents
Costs of Filing a Patent:
Provisional
$110
Utility
PCT
$10-25K
National Phase
Effective Filing Date
12 Months
30 Months
$25-100K+

14. More on Patents Considerations for Filing a Patent:
Prior Art Density & Dominating Patents
Margin of Improvement/Platform Technology
Product vs. Fundamental Invention – Designing Around
Return on Investment
Software – Patent vs. Copyright

15. Parts of a Patent: Specification Drawings Claims
More on Patents
Parts of a Patent:
Specification
Drawings
Claims

16. More on Patents First Page: Issue Date Patent # Title Inventor Owner
Application #
Filing Date
Search Fields
References
Abstract

17. More on Patents
Drawings:

18. More on Patents Specification: Brief Description of the Drawings
Field of the Invention
Background
Detailed Description of the Invention/ Drawings
Summary of the Invention

19. More on Patents
Claims:
“What is claimed is:”

20. More on Patents Claims: Determines the scope of the patent
Specific language
Elements & Limitations
Independent & Dependent

21. More on Patents Special Considerations for Software:
Patent versus Copyright
Life of the Technology
“Work for Hire” issues

22. More on Patents Patenting Process: USPTO Inventor Patent Search
Draft App.
Examiner Review
File App.
Office Action
Review OA
Response & Amendment
Amendment
Inventor
Issued Patent

23. More on Patents Patent Searching: USPTO Website – www.uspto.gov
Google Patents –
Text searches
Class/Subclass
Patents referenced & Patents referenced By
PAT.
Time
References
Referenced By
Necessary for (a) background/patentability, (b) IP landscape, and (c) right to use.

24. More on Copyrights Levels of Protection: Do nothing
Notice - © 2009 Stephen Auvil
Registration

25. More on Copyrights Works for Hire:
The author owns the work unless the author is employed, in which case, the employer owns the work.
Consulting might not constitute an employer-employee relationship. Ensure that ownership is addressed in consulting contracts.

26. More on Copyrights Examples of copyright protected works:
Books, journal articles, websites
Songs – lyrics, music, singing voice, etc.
Art – Sculpture, oils, recorded performance
Computer icons
Videos

27. Derivative Works & Ownership:
More on Copyrights
Derivative Works & Ownership:
Solely Owned:
Creator A
All rights to copy & publish the work.
100% Authorship
Jointly Owned:
Creator 1
Creator 2
Limited rights to copy & publish the work.
95% Authorship
5% Authorship

28. What is Technology Transfer?
Commercialization of Intellectual Property Created in Academic Research
Two General Mechanisms:
Licensing
Start-up Companies

29. Technology Transfer Products
Lycos Search Engine Carnegie Mellon University
Gatorade U of Florida
Stannous Fluoride U of Indiana
Vitamin D in Milk U of Wisconsin
Synthesizer Keyboards Stanford University

30. Technology Transfer Products
OnePump
Scientific Products & Systems
BioGMP
SPi
Bullet Drill Bit
Black & Decker
StepMetrix
Bou-Matic
CellStation
Fluorometrix
G-Mark Test Std.
Aurora Analytics

31. Patent Filing Decision
T2 Process
Invention Disclosure
Invention Assessment NO
YES
Return to Inventor
Patent Filing Decision
IP Marketing
License Agreement

32. Invention Disclosure Invention Disclosure Form: Enabling Description
Inventors
Publication Information
Sponsor Information
Market Information

33. Note on Publishing It creates a bar to filing for a patent:
Immediately in Foreign Countries
Starts a One-Year Clock in the U.S.

34. Good Science Good Invention!!!
Invention Assessment
Evaluation Criteria:
Patent Budget Constraints
Translation of the Invention into a Product or Service
Market Size
State of Development – Time to Product or Service
Strength of IP Position & Enforceability
Marginal Utility & Competition
Good Science Good Invention!!!

35. IP Marketing OTD Marketing Methods: Web Pages Direct Mail OTD Contacts
Inventor Contacts
Most Licenses Result from Contacts the Inventor has with Industry.

36. Confidentiality Talking about your Invention: Non-Disclosure Agreement
Confidentiality Agreement
Secrecy Agreement
Confidentiality
Non-use
Exception Language
Five years

37. License Agreement Typical Terms: Up-front Fees or Equity Royalties
Annual Payments
Milestone Payments
Diligence Requirements

38. Royalty Distribution General Royalty Distribution Policy:
Inventor’s Share
Laboratory Share
Department Share
University Share

39. Reality Check 100 Invention Disclosures 50 Patents Filed
20 License Agreements
10 Licensed Product Sales
1 – 2 Generate Significant Revenue

40. Questions