Intellectual Property. MGPA s Industry Experience program Spring 2012

Transcription

1 Intellectual Property MGPA s Industry Experience program Spring 2012

2 Intellectual Property (IP): Legal Protection for Intangible Assets Copyright Patent Trademark and Trade Secrets 2

3 Copyright Creative expression of an idea fixed in a tangible medium Copyright exists upon fixation of creative expression in tangible medium and is defined primarily by federal statute Registration if necessary Copyright includes right to prevent others from copying the fixed, creative expression Examples of copyrightable works Computer code for executing steps of business method Clinical questionnaires DVD s that portray methods for managing psychological conditions 3

4 Patent Legal right to exclude others from making, using and selling the idea (invention) that is defined by federal statute Does not impart right to practice the idea Right is set forth and noticed by the patent claims which are enumerated recitations of the invention and are listed at the end of the patent Examples of patentable subject matter: Antibodies Receptors Ligands Medical devices Methods of treating an indication by administering a known compound Drug delivery vehicles Small molecules Diagnostic methods Vaccine Software (in some cases) 4

5 Barriers to Patenting Idea is only patentable if it is novel and non-obvious in view of the prior art Prior art: any knowledge that is accessible to the public before the idea is patented Examples of Public Disclosure/Prior Art Publications available to the public Conference presentations Internet posting Posters, e.g., posters for SAC presentations Awarded grant applications Non-confidential oral disclosures Ph.D. thesis (defense) 5

6 Protecting Patentable Ideas/Inventions File patent application prior to public disclosure (i) Disclose to Research Ventures and Licensing (RVL) (ii) Disclose publicly only after the filing of a patent application by RVL Or Disclose idea/unpublished data under a Confidentiality Agreement (CDA) (i) Contact RVL to execute a CDA 6

7 Other Intangible Assets Technical Information Information and idea that is generally unpatentable but accompanies/complements patentable idea In general, rights to technical information exist and are defined through contract, e.g., grants, MTA s Examples Reaction conditions for culturing cells, purifying proteins, etc. 7

8 Tangible assets Examples of tangible assets that can embody intangible assets Mouse models (can embody the idea of novel, transgenic organisms) Hybridomas (can embody the idea of novel, fused cellular constructs) Disks containing computer programs (can be the tangible media within which creative ideas are fixed) Cell based assays (can embody the idea of novel, transfected cells) 8

9 Industry Experience Program There is no CDA with the companies participating in this program Disclosure of any unpublished idea to the participating companies will be a public disclosure and bar patenting of the idea If uncertain whether your unpublished information may be a patentable invention/idea - check with your mentor and/or RVL prior to disclosing 9

10 Resources RVL - Invention Liaison Program (ILP) 10

11 Questions 1. Presenting your unpublished data and idea in a presentation during a job interview is a public disclosure and a bar to patenting that idea. True or False? 2. Once you have disclosed your idea/invention to RVL (technology transfer office) you can safely present it publicly and retain patentability. True or False? 11

12 Answers 1. True (unless there is a confidentiality agreement between you and the prospective employer - which is unlikely in such scenario). 2. False. Only by filing a patent application that adequately describes the idea/invention can you publicly disclose/use the idea/invention without forfeiting any rights to the idea/invention. Disclosing the idea/invention to RVL does not constitute a patent application filing. 12