1. University of Oklahoma Norman, Health Sciences Center, and Tulsa http://www.otd.ou.edu

2. Regina K. McNabb Technology Transfer Administrator Norman, HSC, and Tulsa Campuses 405/325-3800 rmcnabb@ou.edu

3. Mission Statement The mission of the University of Oklahoma Office of Technology Development (OTD) is to stimulate the creation of intellectual property and manage the resulting assets in support of the mission of the University of Oklahoma.

4. What is Intellectual Property?

5. KNOW-HOW TRADE SECRETS Almost any subject matter qualifies, but must be SECRET COPYRIGHTS Ads, Labels, Brochures, Software, Manuals TRADEMARKS Words, Slogans, Logos, Shapes PATENTS Machines, Products, Processes, Compositions DESIGN PATENTS Ornamental Features of Manufactured Products

6. Intellectual Property Patent – Form of protection provided to an Invention; Novel, Non-obvious, Useful Copyright – Form of protection provided to authors of “original works” Trademark – Form of protection for a word, name, symbol, or device that is used in trade of goods Trade Secret – Form of protection to not share outside of company/university Know-How – The expertise of the inventor(s)

7. Life of a Technology Discovery Process Disclosure Process Triage/Assessment Process Protection Process Commercialization Process

8. Discovery Process Identify Invention – Inventor(s) Document Discovery – Lab Notebooks Prior Art Search – Inventor(s) Publications? Question how novel is the idea? Official Disclosure to OU – Disclosure Form

9. Technology from Sponsored Research Technology created from Basic Research Disclosure Form Completed by Inventor(s) Answers questions on technology Intellectual Property (IP) www.otd.ou.edu Office of Technology Development University of Oklahoma Life of a Technology – Phase I Filed with the Office of Technology Development (OTD ) Identify Identify Identify Identify Identify Identify Identify

10. University of Oklahoma Intellectual Property Policy Ownership Disclosure Processes Royalties

11. University of Oklahoma Royalty Distribution Inventor(s)35% (before exp.) Expenses deducted from balance College/Department31% President’s Office7.5% Vice Pres. for Research7.5% OTD23% Growth Fund31% Percentages based on Royalties received less Inventors’ share and Expenses.

12. Disclosure Process OTD website: www.otd.ou.eduwww.otd.ou.edu Completion of Disclosure Form Short Form/Full Disclosure Disclosure Form signed and sent to OTD

13. Triage Technology Office of Technology Development University of Oklahoma Life of a Technology – Phase II 3 rd Party Validation Marketing Analysis Inventor Contacts Resolve Ownership Assess Assess Assess Assess Assess Assess Assess Assess Assess

14. Triage/Assessment Process Decision Time –Market under a Non-Disclosure Agreement –Pursue Protection –Defensive Publication Questions to Consider –Publication Bar? –Apply for patent protection? –Copyright/Trademark registration? –Keep as Trade Secret? Commercialization Aspects –Is this a platform technology or not? –Do we want to start-up a company? –If so, are the requisite elements available?

15. Office of Technology Development University of Oklahoma Life of a Technology – Phase III Platform Technology Single Technology No Commercialization Publish Return to Inventor Start Up Company Management Resources License to For-Profit Company Protect IP – Patent Trade Secret Action Action Action Action Action Action Action Action Action

16. Technology Protection Patent Copyright Trademark Trade Secret

17. Protection Process Determination of protection needed: -Patent application - protection of an invention; -Trademark registration - protection of a word, phrase, symbol or design; -Copyright registration - protection of an original artistic or literary work; or -Maintenance of a Trade Secret.

18. Patent and Trademark Office Article 1, Section 8 of the United States Constitution provides the basic role of the Patent and Trademark Office (PTO). It has remained the same for over 200 years: to promote the progress of science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries. Any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent” subject to the conditions and requirements of the law.

19. Patent Process Provisional Patent –Benefits Low Cost Fast Protection against Publication –Negatives Provides Limited Protection Only what is described in the patent application is covered Good for One (1) Year Regular Patent – Utility, Design, Plant –Claims –Prior Art

20. Patent Process, cont. Timing Issues –Prior Art –Public Disclosure or Use –Publication(s) Patent and Trademark Office –What you can expect –www.uspto.govwww.uspto.gov –Patent Attorney/Agent Costs –Provisional: $1-2k –Regular (Utility): $10-20k –Foreign PCT: $3-4kOver 50 countries –Each Country: $2-10k Plus Translations

21. Trademark A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.

22. Trademark Registration Establishes rights in a mark based on legitimate use of the mark Provides notice to the public Legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration

23. Trademark Registration, cont. Ability to bring an action concerning the mark in federal court Use of the U.S registration as a basis to obtain registration in foreign countries Ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods

24. Trademark Registration, cont. TM, SM - Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. ® - You may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

25. Trademark Registration, cont. United States Patent and Trademark Office - www.uspto.gov www.uspto.gov File your application directly over the Internet - through Trademark Electronic Application System (TEAS) at http://www.uspto.gov/teas/index.html http://www.uspto.gov/teas/index.html

26. Trademark Registration, cont. Can be filed by mail, as well; no faxes No attorney or agent needed Can be renewed on line Can be renewed forever

27. Copyright Protects “original works of authorship”, such as writings, music, and works of art that have been tangibly expressed - including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords and to perform or display the copyrighted work publicly U.S. Code Title 17

28. Copyright Registration United States Copyright Office (not PTO) – Library of Congress - http://lcweb.loc.gov/copyright/ http://lcweb.loc.gov/copyright/ Copyright Registration lasts for the life of the author plus 70 years Protects the form of expression rather than the subject matter of the writing

29. Copyright Registration, cont. Registration requires a completed application form, the filing fee, and a “sample” of the work mailed to the Library of Congress Copyright Office Copyright protection subsists from the time the work is created in fixed form. The copyright in the work of authorship immediately becomes the property of the author who created the work. Only the author or those deriving their rights through the author can rightfully claim copyright

30. Copyright Registration, cont. In the case of works made for hire, the employer is considered to be the author Mere ownership of a book, manuscript, painting, or any other copy or phonorecord does not give the possessor the copyright Copyright registration is a legal formality intended to make a public record of the basic facts of a particular copyright

31. Copyright Registration, cont. Copyright law provides several advantages for registration –Registration establishes a public record of the copyright claim –Before an infringement suit may be filed in court, registration is necessary for works of U. S. origin –If made before or within 5 years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate

32. Copyright Registration, cont. Advantages of registration, cont. –If registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney's fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner –Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies –Registration may be made at any time within the life of the copyright

33. Trade Secret Information that companies keep secret to give them an advantage over their competitors – can be just about anything Disclosed technology is not shared outside the parameters of the company or the University (in our case) The formula for Coca-Cola is the most famous trade secret

34. State of Oklahoma State Questions 680 and 681 State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma State of Oklahoma

35. Sponsored Research Companies – For-Profit Non-Profit Organizations – ACS State Entities – ODOC Federal Agencies – NSF, NIH, NOAA Office of Research Services

36. Federal Regulations United States Code –Title 17 – Copyrights –Title 35 – Patents Sections 200 to 212 – Patent Rights in Inventions made with Federal Assistance 37 CFR 401 Bayh-Dole Act of 1980

37. Application of Intellectual Property Using Federal Funds Bayh-Dole Act of 1980 Provides Grantee Organizations/Contractors title to Inventions arising from federal funding agreements Requires pursuit of technology transfer opportunities Grantee/contractor must meet commercialization milestones Requires reporting of all inventions and patents that involve federal funds Government retains limited rights to invention Royalty-free license to practice the invention

38. Invention Reporting Requirements of Grantee/Contractors – University Administrative Requirements (per 37CFR 401.14) Implement Employee Agreements – as needed Disclose Each Invention – within 60 days Resolve Election or Waive of Title – within 2 years File Regular Patent – within 1 yr. of election Provide License to the Govt. – upon title election Indicate Govt. Support on Patent – with patent appl. Share Royalties With Inventor – when available License Small Businesses – where feasible Product Manufacturing in U.S. – required Report on Invention Utilization – annually

39. OU/NSSL Agreement DOC/NOAA-OU Cooperative Agreement University of Oklahoma’s Treatment of IP with Respect to NOAA Weather Partners (University Memo)

40. Points of IP Treatment Government – non-exclusive, irrevocable, non-transferable, royalty-free license for governmental purposes OU – retains rights, title and interest in and to the IP if OU employees are sole creators Task I and II inventions – Joint Inventions owned by OU and NOAA/DOC; either rights may be transferred or assigned

41. Points of IP Treatment, cont. Joint Inventions – Revenues shared by inventorship Copyrights – Government entities cannot initiate; OU will initiate copyright and provide a mechanism to transfer a portion of the joint copyright to the Government CRADA’s – OU may negotiate a license with the 3 rd party where 3 rd party would receive same rights as if made by Gov’t employee under CRADA

42. Results Agreements –Licenses –Sponsored Research Agreements Royalties Funded Research

43. Effects on NSSL Employees OU Employees –Must notify OTD in accordance with IP Policy –Benefit of Royalties and Sponsored Research Federal Employees –Benefit of Royalties and Sponsored Research –Recognition in patents and copyrights

44. Regina K. McNabb Technology Transfer Administrator Norman, HSC, and Tulsa Campuses 405/325-3800 rmcnabb@ou.edu