Intellectual Property How to Protect Your Discovery. Technology Transfer Office

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1 Intellectual Property How to Protect Your Discovery Technology Transfer Office

2 Technology Transfer In the course of doing research & development you make discoveries BloodCenter Research Foundation protects and commercializes discoveries Often, discoveries are patentable BloodCenter s Technology Transfer Office will work with you to determine if we can or should patent the discovery Many forms of intellectual property exist

3 Types of Intellectual Property Copyright Trademark Trade secret Know-how Patents

4 Copyright Protects original works of authorship and the expression of the idea for example: Music Books Presentations Art (scientific figures) Starts when the work is recorded on a tangible medium Lasts a period of life of person + 70 years or 85 years after date of creation Mark with copyright the year and source of your original work: Copyright 2013 BloodCenter of Wisconsin 2013

5 Trademark Used to indicate to the market the unique source of the goods or services Must be unique Also called a service mark or SM to indicate services Can be registered federally with the Library of Congress Designated by the following symbols: XYX TM, ABC SM, or the symbol for a federally registered trademark A statewide trademark is possible to obtain using TM and the search for the unique expression of that mark is less broad than federal. There is no requirement to register for the TM symbol. Federal registration must be maintained for the mark. The mark can only be used for those marks which are registered Note that BloodCenter s logo and expression of our name on the bottom right of this slide are trademarked

6 Trade secret State trade secret law protects information that derives value from not being generally known and is subject to efforts to maintain secrecy Different than patents in that there is no need to file an application, no novelty requirement, information is not disclosed, protection lasts as long as the secret is kept, does not protect against independent invention by another. Example: formula for Coke kept in vault

7 Know-how Know-how can be shared with a single party under confidentiality for a specific purpose like developing a product Can license patents and know-how associated with a discovery Companies can access know-how through consulting arrangements Consulting contracts where you serve as a paid consultant should be discussed with your supervisor for adherence to internal policies Similar to trade secrets as there is no filing requirement but know-how is not required to be kept secret

8 Patents A patent can protect a composition of matter (eg a material or a drug) or a method of doing something (eg an assay method to test for a disease or a method of making a compound) Patents allow you to prevent others from practicing the invention for a period of 20 years in exchange for publically disclosing the idea in your patent application The patent office requires that the material or method be: Useful Novel Unobvious

9 Patents - requirements There are legal requirements for patentability In the US, the US Patent and Trademark Office enforces the rules for patentability Each country has their own laws but include the basic requirements of novelty, usefulness, and non-obviousness There are commercial requirements At BCW, your idea must be commercial for BCW to invest in legal protection You don t patent a method because you can, you patent a method with the hope that you can make a profit Potential benefits must outweigh the costs

10 Patents - cost Patent costs vary widely depending on the complexity of what is patented and many other factors The largest cost is attorney time to prepare and prosecute the application The Foundation pays for all costs of protecting the invention The Technology Transfer Office will help you prepare the application and work with the intellectual property attorneys

11 Patent pitfalls Prior art and public disclosure can kill your chance to patent Because the patent office requires the idea to be novel, your idea must not have been described in public by you or anyone else prior to filing (there are a few exceptions for your publication of the information within a year timeframe). Grant applications are not considered public documents unless they are published and publically accessible. Grant abstracts typically publish for funded grants within 1-3 months of funding If you publish your idea prior to applying for a patent, you cannot get a patent outside of the United States.

12 Patents best practice Disclose your idea to the Technology Transfer Office well in advance of your plans to publish Staff will ask you to write down your idea on paper. The invention disclosure form asks you relevant questions. Timing of disclosure to the Tech Transfer Office: submit your manuscript or meeting abstract internally before you send it externally. You will be asked to explain the value of the invention. What makes it better than existing solutions? What new problem does it solve? Who might be interested?

13 Patents - who owns the invention? The BloodCenter Research Foundation owns BloodCenter Intellectual Property Upon hire, all employees sign an Intellectual Property Agreement that designates the Foundation as owner of their IP work products. This is a standard practice. The Foundation pays for all expenses relating to protecting and commercializing the invention The Foundation will market the invention and negotiate licenses with commercial partners to capitalize on the invention. Royalty income is shared with inventors according to federal guidelines and BloodCenter s Intellectual Property Policy which can be found on the intranet.

14 Patents returned to inventors Your invention disclosure will be evaluated by a team of people in the Technology Transfer Office for patentability and commercial potential In some cases, BloodCenter will decide that patent protection is not feasible or practical Typical reasons not to patent include Legal barrier to patenting due to prior art, lack of utility, obviousness Low market potential of the invention In those cases, the inventors will be asked if they would like the invention turned back over to them so they can try patenting the idea on their own Not all ideas are patentable or patent worthy. They can still be valuable ideas and good science.

15 Patents must pass a cost benefit analysis Potential benefit must outweigh the costs for BloodCenter to proceed with filing an application Cost of patenting Legal costs Charges for lawyer time Charges for filing documents with the patent office Administrative costs Inventor and staff time to prepare the application and market the technology Benefits of patenting Create a new product or new business License income generated Market advantage by ability to restrict others

16 Intellectual Property There are many types of intellectual property Patent, copyright, trademark, tradesecret, know-how Laws protecting intellectual property are complex The Technology Transfer Office can assist you to identify the relevant and commercially useful aspects of your invention. Contact us with any questions! We are here to help.

Intellectual Property & Technology Commercialization Basics

Intellectual Property & Technology Commercialization Basics Judith Sheft Assistant Vice President Technology Development NJIT (973) 596-5825 Sheft@njit.edu Disclaimer I am not a lawyer What is Intellectual