1. Protecting and Promoting your Invention (IP) Steven Wille Office of Technology Management stvwille@Illinois.edu

2. Office of Technology Management Why should you care about IP IP---Intellectual Property Stuff that can be patented, trademarked or copyrighted As you invent in this class, you might create something that you want to protect and promote And in THIS class, what YOU invent belongs to YOU, as long as you use commonly available resources and no UI employee provides INVENTIVE contribution. Before you sell, get this in writing from OTM

3. Office of Technology Management In this class… You have a problem/opportunity You develop ideas to solve the problem You build the thing Test the thing Iterate until the thing works At what point do you care about protecting and promoting it?

4. Office of Technology Management Let’s compare to my world Siemens Medical We had to make a machine that combined a CT and a gamma camera (the machine would show anatomy and biology---a big deal) Two problems 1…CT-s create MASSIVE amounts of X-rays (gamma rays); Gamma cameras count gamma rays one at a time 2…We needed 13 axes of motion, with massive safety redundancy (the 1,000 pound detectors could easily crush a patient’s head)

5. Office of Technology Management

6. Step ONE, ideate how to fix the problems Problem 1…run each component separately Problem 2…create custom communication bus Am I ready to protect or promote yet?

7. Office of Technology Management Step TWO… build and test Problem 1…it works, but the scan time is really long Problem 2…the new bus works, but extends design cycle and can’t use off-the-shelf products Am I ready now?

8. Office of Technology Management Step THREE…Build alphas and get feedback Problem 1…customers accept it because we are the only game in town Problem 2…the solution is totally invisible to the customer

9. Office of Technology Management Step FOUR…Betas to 10 hospitals Problem 1…our scan time becomes the norm Problem 2…customers are wowed the way the machine moves…described as an wonderful orchestra in motion. Now????

10. Office of Technology Management Step FIVE…Sales Along the way… Marketing Manufacturing Supply chain Regulatory compliance Service

11. Office of Technology Management So when should I protect? Step 1…I have ideas Step 2…built and tested Step 3…built a set of alphas (or alpha parts) Step 4…betas at 10 hospitals (scanning patients) Step 5…sales

12. Office of Technology Management Criteria… You can apply for a US patent no later than 12 months after the first public, enabling disclosure or offer for sale If you can not “police” it, consider not patenting If it is hidden, why bother protecting If you patent apply on an early (unused) design, you may have wasted your money What will a patent do for YOU, IN YOUR MARKET?

13. Office of Technology Management Patent facts Must be novel, non-obvious and useful 20 year monopoly granted by US. YOU must enforce the patent. US utility patents cost about $25,000-$45,000 (non-US cost this much for EACH country) Today, most patents take 3-4 years to grant (or reject) Provisional patent applications are one year placeholders and only cost about $300, they have less value than full blown applications You need a good patent attorney

14. Office of Technology Management People cannot make or sell anything that infringes on your patent It can be part of the foundation of a start-up…it can help attract funding You can sell the patent (in UI’s case, we LICENSE our patents) Large companies cross-license patents, forming a bigger barrier to new entrants Patent Trolls buy patents, wait for somebody to practice it, and then sue them What do you do with a patent