Intellectual Property BasicsIntroductionWhat is intellectual property?Why do we want to protect and license IP?Statistics from Association of University Technology Managers (AUTM)How do we protect intellectual property?Office of Intellectual PropertyOffice of the Assoc. Vice Pres. for Research and Graduate StudiesCopyrightsTrademarksTrade SecretsPlant Variety CertificationPatentsThree Patent RequirementsTypes of PatentsDifferences between International & US PatentsWhat does Patent Protection Provide?Bayh-Dole Act (1980)MSU PolicyIf you invent while at MSU…MSU Royalty PolicyProcedure for inventions at MSUProcedure for inventions at MSU (continued)Industry Patent PoliciesEmployment AgreementsWhy Patents are Important to Start-up BusinessesA Start-up Success StoryTypical Clauses in Company AgreementDetermining InventorshipWhat you should have for an invention, besides a great ideaLicensing Intellectual PropertyLessons Learned When Licensing Goes Bad….Major Financial Parts of a LicenseContacting Potential LicenseesKey Points for Confidential Disclosure Agreement or Non-Disclosure AgreementSummary1Intellectual Property BasicsPeggy Wade, Ph.D.Director, Division of Engineering Research3428 Engineering BuildingMichigan State University517-353-9492E-mail: [email protected]://www.egr.msu.edu/egr/research/techtransfer.php11-4-20052IntroductionWhat is intellectual property?Why do we want to protect it?How do we protect it?How do we transfer the technology to the public?3What is intellectual property?Intellectual properties are intangible products of the mind. These include:inventions (devices, compositions, plants, designs) publicationsvideotapescomputer programsworks of art. They must be reduced to a tangible form in order to be protected.4Why do we want to protect and license IP?It is very difficult to license technology that is not protected.Makes the technology available to the public and provides opportunities for graduates and recognition to faculty.IP is a marketable commodity that can be used to leverage additional research dollars and income to support the inventors and the university, and help in the formation of new companies and jobs.5Statistics from Association of University Technology Managers (AUTM)Since 1998, over 2200 new products have been introduced in the market place. In 2003 in the U.S. and Canada (AUTM Survey Data, ~200 Universities):Over 15,500 Invention Disclosures, 4500 new Licenses7921 patent applications were filed; 3933 new patents issued374 new companies formed; 2279 start-ups still operating.License revenue was over $1,310,000,0006How do we protect intellectual property?CopyrightsTrademarkTrade SecretPlant Variety CertificationPatents7Office of Intellectual PropertyHandles all patents and trademarks for MSU.Engineering rep - Brad Shaw 355-2186http://www.msu.edu/unit/oip/Brochures noting MSU policies http://www.msu.edu/unit/oip/brochuresandforms.html8Office of the Assoc. Vice Pres. forResearch and Graduate StudiesHandles all copyrights for the university.Lori Hudson : [email protected]; 355-2186http://www.msu.edu/unit/facrecds/FacHand/develpinstruct.html9CopyrightsDocuments, art, music, motion pictures, software, etc. are automatically copyrighted when the document is created.Can register the copyright with the government for $30.00. Must be registered before filing any infringement lawsuits.®Lasts the life of the author plus 70 yearsOr lasts 95 years from publication or 120 years from creation, if it was a work for hireMSU Policy and FAQ http://www.msu.edu/unit/oip/LEED/copyhand02.pdf US Copyright Website http://www.loc.gov/copyright/10TrademarksUsed to protect a symbol or phrase that’s identified with a product (e.g. Coca-Cola, Gatorade, Xerox). ™Registration costs $325 but is not required except for federal court proceedings and for foreign protection; last for 10 years and is renewable indefinitely®.Becomes effective when begin selling commercially.http://www.uspto.gov/main/trademarks.htm11Trade SecretsSpecialized knowledge that can include data, formulas, compilations, programs, etc. which are maintained as a secret Can be used where patents may not have a long enough term or be possible.Trade secrets are kept under lock and key, with restricted access and publications.Example - Coca-cola formula12Plant Variety CertificationUsed for plants that reproduce sexually making it illegal to sell and propagate them commercially.Certification protection is for 5 years and costs ~$2500.13PatentsUsed for inventions, processes, machines, improvements, and composition of matter.Not possible to patent scientific principles, methods of doing business or most naturally occurring articles.Software algorithms can often be patented, but typically software is protected under copyright.14Three Patent RequirementsNovel - new to the patent literature, not published or described in an enabling manner. Time limit of one year from public disclosure to file a U.S. patent. Foreign patents must be filed BEFORE any public disclosure.Utility - must be usefulNon-obvious to one skilled in the art.15Types of PatentsUtility – how something works or is used; multiple claimsDesign – how something looks; only one claimProvisional – establishes a filing date and provide 1 year to file a full patent application with claimsPlant – for asexually reproducing a new plant; one claim16Differences between International & US PatentsUS – First to InventMost International – First to FileVery important to file protection before publicly disclosing to preserve foreign patent rightsForeign protection very important to most companiesProvisional Patents have great use here17What does Patent Protection Provide?The right to EXCLUDE others from making, using, selling of offering to sell the claimed invention during the patent term. Must be marked as ‘patented’, or can’t recover from anyone who infringes on it.Patent term typically = 20 years from date of filingDesign patent = 14 years18Bayh-Dole Act (1980)The Bayh-Dole Act was intended to promote investment by the private sector in the commercialization of discoveries made using research funds provided by the federal government. Prior to the Act, the government retained title to these inventions, and because it was cumbersome to get a
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