Intellectual Property Office

Transcription

1 Matthew D. Smith Sr. Technology Licensing Officer

2 Technology Business Law

3 1. WHAT IS INTELLECTUAL PROPERTY? PATENTS TRADEMARKS COPYRIGHTS TRADE SECRETS 2. WHY IS PSU INTERESTED IN PROTECTING ITS INTELLECTUAL PROPERTY? A. OFFENSIVE REASONS B. DEFENSIVE REASONS

4 Reasons for Protecting Intellectual Property OFFENSIVE REASONS To commercialize ideas and inventions To legally exclude others from making, using, selling, importing or exporting proprietary products based on PSRF technologies To establish a period of exclusivity in market To provide PSRF with sufficient time to recoup investment in proprietary technologies To assure continued growth and prosperity of PSRF research

5 REASONS FOR PROTECTING INTELLECTUAL PROPERTY DEFENSIVE REASONS To enable practicing our own technologies by establishing priority dates Potential cross-licensing arrangements To prevent others from filing patents covering similar inventions or ideas

6 What is a Patent A Patent for an invention is the grant of right to the invention to exclude others from practicing the invention. The term is typically valid for 20 years from the date of filing of the application or from the date an earlier related application was filed.

7 Types of Patents Provisional Utility Design Plant International

8 Statutory Requirements for Patentability New Non-obvious Useful Full Disclosure

9 What Can Be Patented New and useful processes, methods, designs, compositions, applications or devices New processes for new devices; Old processes for new devices; Improvements to existing processes and devices New combination of previously existing elements or processes Devices or processes with unexpected results or substantial commercial success New software and applications thereof New applications for existing machines Chemical compounds and microorganisms Animals; Asexually reproduced plants

10 What Cannot Be Patented Patented or described in a printed publication (anywhere in the world) In public use in the U.S. On Sale in the U.S. Undue delay in filing application, thereby resulting in another applicant being awarded the rights to the patent claims Obvious Devices; Useless Devices Perpetual Motion Machines Nuclear Weapons

11 TIMELINES U.S. estimated timeline PCT estimated timeline

12 U.S. Timeline First Filing/ Non-Provisional Priority Date Filing Missing Parts 1 st Office Action 2 nd Office Action Issued Patent Publication Date Issue Fee Due Notice of Allowance RESTRICTION REQUIREMENTS - ADVISORY ACTIONS - MAINTENANCE FEES

13 Disclosure No. 96-XXXX Provisional Appl. No. 60/123,456 Title: ********* Filed: 06/01/1996 Status: Converted Provisional Appl. No. 60/123,567 Title: ********* Filed: 12/01/1996 Status: Converted U.S. Patent Appl. No. 08/876,543 Title: ********* Filed: 06/01/1997 Status: Issued 03/01/2000 Patent No. 6,012,345 CIP Combined w/ PSU Discl. No. 98-xxxx & 98-xxxx CIP combined w/ PSU Discl. Nos. 97-xxxx; 98-xxxx; 98-xxxx U.S. Patent Appl. No. 09/234,654 Title: ************* Filed: 11/01/1998 Status: Issued 03/02/2001 Patent No. 6,200,123 DIV International Patent Appl. No. PCT/US98/21237 Title: ************ Filed: 11/01/1998 Status: Nationalized See Page three for applications Provisional Appl. No. 60/012,345 Title: ********** Filed: 05/01/1997 Status: Converted International Patent Appl. No. PCT/US97/12345 Title: ********** Filed: 06/01/1997 Status: Nationalized U.S. Patent Appl. No. 09/321,456 Title: ************** Filed: 05/01/1999 Status: Abandoned CIP U.S. Patent Appl. No. 10/987,654 Title: ************ Filed: 10/01/2000 Status: Issued 06/01/2002 Patent No. 6,023,456 U.S. Patent Appl. No. 09/543,321 Title: ************ Filed: 03/01/2000 Status: Issued 08/01/2001 Patent No. 6,255,555 International Patent Appl. No. PCT/US99/23456 Title: ************ Filed: 05/01/1999 Status: Abandoned DIV U.S. Patent Appl. No. 10/963,258 Title: ********** Filed: 06/01/2001 Status: Issued 04/03/2002 Patent No. 6,412,234 See Page two for applications

14 Who Owns Intellectual Property Developed at Universities?

15 Penn State University Intellectual Property Agreement Faculty, staff and graduate students must sign IPA Undergraduate and professional students do not sign IPA

16 What is Technology Transfer? The process of transferring one party s rights in an intellectual property to another party to promote commercialization of the technology.

17 Benefits of Technology Transfer Consistent with University s mission to educate and benefit public May provide financial returns from royalty and equity participation to inventors and University May provide inventors with additional sources of research funding May enhance University s reputation

18 How are Fees, Royalties and Equity Shared? After reimbursement of patent expenses - Inventor(s) 40% Originating Administrative Unit 20% Penn State Research Foundation 40%

19 Inventorship Inventorship is determined by individual inventor s intellectual contributions to claims embodying the invention which are written by patent counsel

20 Management of Intellectual Property Objectives License Penn State technologies to companies with interest, ability and resources to commercialize them such that public benefits Capture fair portion of value of inventions for benefit of inventors, College in which invention was developed and the University

21 Management of Intellectual Property Process 1. Inventors submit an invention disclosure ( Part I (Title, inventors, description) Part II (Competing technologies, invention development, market conditions) 2. Technology Licensing Officer (TLO) is assigned to manage invention

22 Management of Intellectual Property 3. TLO assesses invention - Confirms ownership - State of development/reduction to practice - Availability of resources (personnel, funding, facilities & equipment) to continue development if necessary - Is invention marketable? - Estimate market size - Can invention be protected by patent or copyright? - Status of any enabling public disclosures

23 Public Disclosure Any public use or sale in the U.S. or publication of the invention presented to a person having ordinary skill in the art anywhere in the world more than one (1) year prior to the filing of a patent application on that invention will prohibit the granting of a U.S. and Foreign patent on it.

24 Management of Intellectual Property 4. TLO addresses any outstanding issues - Inventorship vs. authorship vs. ownership - Public disclosures impact on patentability - Prior art impact on patentability - Inventors expectations - Inventors participation

25 Management of Intellectual Property 5. TLO formulates/ipo implements appropriate patent strategy - File provisional patent application - Market invention to potential licensees - Patent Review Committee reviews unlicensed inventions - Decide whether or not to convert provisional to full U.S. patent application and/or PCT

26 UNIVERSITY PATENT REVIEW COMMITTEE Review and recommend action on each provisional patent application submitted Committee is comprised of College Representatives from each of the five Colleges most active in research, the Associate VP for Research and the IPO Director and personnel Committee meets once per quarter Recommends patent filings

27 Management of Intellectual Property 6. TLO markets invention to potential licensees with input and assistance from inventors - Inventors recommendations and contacts - Information from databases and Internet - Focused/directed informational mailings - Postings on web sites - Contacts at technical meetings - Press releases, newspaper articles and other publicity

28 Management of Intellectual Property 7. TLO negotiates agreements with potential licensees - Confidential Disclosure Agreement - Material Transfer Agreement - Option Agreement - License Agreement - Exclusive or non-exclusive - Field of use - Fees, royalties, equity

29 Management of Intellectual Property 8. IPO continues to monitor License Agreement - Payment of fees, royalties, equity - Reimbursement of patent expenses - Monitor due diligence requirements - Seeks licensee s input regarding patenting decisions

30 Managing Intellectual Property Patent Expenses Provisional Patent Application $1600 Conversion of Provisional to U.S. Patent Application PCT Chapter II First Office Action Second Office Action Drawing and Issue Fees Maintenance Fee 3.5 years Maintenance Fee years Maintenance Fee 11 years $9000 Attorney s fees $ 700 USPTO fees $3000 PCT fee $12,700 Total $1000 $2500 $2500 $1450 $445 $1045 $1610 National Stage Filings $50,000 - $100,000

31 Infringement Unauthorized making, using, offering for sale or selling any patented invention within the U.S. or its territories or importing into the U.S. any patented invention during the term of the patent. Patentee is responsible for proving infringement and may: Sue for relief in the appropriate Federal court Ask for injunction Ask for awards Patentee may ask the court for an injunction to prevent the continuation of the infringement. Patentee may ask the court for an award of damages because of the infringement.

32 INFRINGEMENT ANALYSIS Process of determining whether or not a device infringes a properly construed claim Must find each and every element of the claim either literally or in an equivalent form Note: Based on the claim at issue and the accused device that are to be compared, not the description in the specification

33 TRADEMARKS For protection of PSRF s right in specific word(s), symbol(s), or mark(s) which identify its products Property right granted by the United States and other foreign governments Trademark rights are of potentially infinite duration (registered for 10 years with renewable 10 year periods) Gives PSRF the right to exclude others from using the same or similar mark in connection with similar products or services Requires vigilant attention to usage on products and in advertisements, correspondence, brochures, service manual, etc. to avoid dilution and possibly loss of trade mark rights. Must be in use in commerce to renew.

34 COMPONENTS OF A TRADEMARK Type of mark: Word, design, or word plus design Identification of products and/or services Use in commerce or intent-to-use Submission of drawing and specimen of use

35 TRADE SECRETS Confidential manufacturing processes, customer and vendor lists, etc. which are treated as such by the owner Infinite duration ex: the formula for Coca-Cola Must take great care to insure that a trade secret does not lose its proprietary status by carelessness, e.g., leaving assembly drawings with specific tolerances within visual sight of non-essential employees or third parties.

36 Of Interest U.S. Patent and Trademark Office European Patent Office World Intellectual Property Organization Penn State University Libraries