2. Developing/Protecting Your Idea Peter H. Durant Nixon Peabody LLP pdurant@nixonpeabody.com March 30/31, 2005 Copyright © 2005 Nixon Peabody LLP

3. Clients “We go to market in 10 minutes and we need to copyright/ patent/trademark our drug/software/ surgical technique.”

4. Me

5. Overview Learn more than you wanted to know about: –Patents & Copyrights –Inventorship –Bayh-Dole Act –Issues/options to exploit your idea

6. Patents/Patent Rights u Machine, process, article of manufacture, chemical composition, plants, software, and improvements to any of the above u Right to exclude others u 20-year term from filing, protracted examination u First to invent vs. first to file

7. Requirements For Patentability u Invention must be novel, non-obvious and useful u Enablement/Best Mode –Description must enable others to make and use the invention –Application must have best mode of practicing invention then known to inventor Duty to disclose all information known to be material to patentability, e.g., prior art, prior uses/publications, offers to sell, etc.

8. Inventorship u U.S. patent applications are filed in the name of inventor(s) –Determining ‘inventorship’ is … determining who conceived the subject matter at issue, whether that subject matter is … in a claim in an interference.”

9. Inventorship (cont’d) u Ownership –No contractual obligation  inventor is the owner –Contractual obligation  can change ownership and/or rights –Joint inventors have undivided interest in the whole invention with no duty to account to other inventors (absent a written agreement)

10. Joint Inventorship u Joint inventors need not physically work together or at the same time u JI’s need not contribute to same degree u Inventive contribution to a single claim is sufficient for joint inventorship u Can usually correct inventorship unless error made to manipulate ownership

11. Good Notebook Practices u Bound notebook u Written in ink u Dated/Signed u Witnessed by non-inventor u Explanation of experimental work and its significance

12. Copyright u Copyright protects “tangible expression” of original creative work of authorship (not idea, process, or concept) u No protection against independent creation u Rights exist on creation of work –Legal registration enhances protection u Term – life of author + 70 years

13. RIT Students & IP Ownership u RIT does not own student’s IP unless: –Student paid by RIT to perform work leading to IP –IP resulted from grant/contract funding –Student contractually argues, e.g., to take a particular cause

14. Work For Hire  Employees  If employee is author and work is created within scope of employment  employer (RIT) owns u RIT policy gives ownership to authors of articles/books u When in doubt, get a written assignment of copyright rights

15. Work for Hire  Consultants u If work is commissioned, contractor is author only IF: –work is listed in the statute (collective work, audiovisual work, translation, supplementary work, compilation, instructional text, test, test answers, or atlas) AND –written agreement states work is to be considered a work made for hire u Practical result: Get assignment!

16. Bayh-Dole Act (1980) u Applies to federally-funded projects and resulting patentable inventions u Faculty/staff/employees must disclose IP to RIT and RIT must disclose IP to govt agency u RIT may elect to take title u RIT cannot assign ownership of IP to third parties (other than patent management firm)

17. Bayh-Dole Act (cont’d) u Government receives royalty-free, non- exclusive license (government use rights only) u Preference to small companies for licenses u RIT must share (no set amount) license fees/royalties with inventors - balance applied to scientific research/education u RIT cannot agree to royalties in advance

18. I.R.S. Rev. Proc. 97-14 u Applies to IP developed at facility financed by tax-exempt bonds and says: –RIT must own IP –Cannot license IP to sponsor until IP exists –Sponsor must pay fair market price

19. U.S. [Software] Export Controls u Extremely detailed area of law subject to constant change u 5 Key factors –Tech characteristics of exported item –Ultimate destination –End-user –End-use –Other activities of receiving/importing party

20. What is Possible Illegal “Export” of Software? u Shipment of U.S. – origin software or products derived from such software u Visual look at code by foreign nationals u Email/oral exchange of info re code u Application abroad of knowledge or technical experience code acquired in U.S. u Downloading/other electronic transmission of code to websites accessible outside U.S.

21. Constitution Article 1, Section 8 uCuCongress shall... promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive ___ ___ ___ ___ ___ to their respective Writings and Discoveries...