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Intellectual Property and You

Carl MahlerDirector of Intellectual Property

CMU Center for Technology Transfer

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What is Property?

A collection of rights pertaining to a particular object

The most important right is the ability to keep other people from using YOUR “property”

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How Can You Own an Idea?

Ideas are different from other types of property More than one person can use an idea at the same

time Giving an idea to another person doesn’t deprive you

of the use of that idea There are virtually no production costs for reproducing

an idea in another person’s head

So What Is Intellectual “Property”?

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What Is Intellectual Property?

IP consists in ideas (or the particular expression of ideas) that the government allows a person to exclude others from using.

Note: usually the government allows you to enforce this right, but usually doesn’t enforce it for you.

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Varieties of IP

Patents Copyrights and Mask Works Trade Secrets Know-How Trademarks

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Trademarks

Primary purpose: to identify the source of goods Controlled by both federal and state law Can be limited geographically Can last forever The more descriptive it is, the weaker it is (but

also cannot be purposefully misdescriptive) Can be lost if not enforced Can be almost anything

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Know-How/Show-How

Not really IP because not protected by law Included here because it is knowledge that has

commercial value Examples:

Crafts (carpentry, sewing) Manufacturing processes not otherwise protected

Value comes from being able to practice the craft or from teaching others how to do so

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Trade Secrets

Trade Secrets are usually protected under state law Two requirements of a trade secret

The information must have commercial value, i.e., give the possessor a market advantage over those who lack it

The owner must take reasonable steps to maintain the secrecy of the information

What counts as a trade secret? Know-how/design knowledge Customer lists Any knowledge that gives a commercial advantage

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Confidentiality Agreements (I)

What’s the Worst that can Happen? Petr Taborski, student (and employee) at the University

of South Florida Did work in USF lab on his own time Neither USF nor the sponsor wanted his results Took his five lab notebooks, applied for a patent Result?

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18 Months in Jail, 2 on Chain Gang

Confidentiality Agreements (II)

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Confidentiality Agreements (III)

Why did this happen? Violation of confidentiality Court found that the notebooks Taborski took were

USF’s trade secrets USF sued Taborski (and he patented after a judge

told him NOT to)

Note: USF’s Actions are NOT typical of academia!

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Confidentiality Agreements (IV)

Culture Clash – Corporations vs. Academia Academia exists to create and disseminate knowledge Companies exist to make money

Making money often entails keeping secrets Companies pay universities to do research How do we resolve these conflicting goals?

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Confidentiality Agreement (V)

What Confidentiality Agreements Are: Legal agreements (contracts) governing the

exchange and use of confidential information Should be in writing Often essential in laying the groundwork for

how a company and a university interact

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Confidentiality Agreements (VI)

What should they include? Description of what is covered Statement of why the information is being shared Marking provisions (and provisions for disclosing

orally or visually) Two time periods

Period during which information will be shared Period of confidentiality

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Confidentiality Agreements (VII)

Who (within CMU) can sign CDA’s? Probably the most frequently made mistake Very few people can bind the university Who is at risk for agreements you sign? What happens if the agreement you sign is

breached?

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Copyrights (I)

A copyright is the right to make one or more copies of something

Copyrights only cover particular expressions of ideas, not the underlying ideas themselves

The work being protected must be fixed in a medium accessible to humans

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Copyrights (II)

Copyrights come into existence as soon as they are fixed in a medium

Registration with the copyright office is inexpensive (about $30) and gives you improved legal rights

Copyrights last for the lifetime of the author plus 70 years (if made by “corporate authorship”, the shorter of 95 years from publication or 120 years from creations)

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Copyrights (III)

Derivative works New works of authorship that incorporate pre-

existing elements are “derivative works” The person owning the copyright on the original

work can prevent publication of derivative works Exceptions :

Clean rooms (especially for software) Independent creation Backup copies

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Copyrights (IV)

Moral Rights European concept imported to the US by treaty Non-economic rights Right of Paternity/Attribution

No one other than the author can claim to be the author

Right of Integrity Cannot “distort” the work

In many countries, the rights are inalienable so the author cannot waive them (not so in the UK)

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Patents (I)

The “deal” – tell everyone how to practice your invention and the government will give you a monopoly on it (for a while)

To be patentable, an invention must be (i) novel, (ii) useful, and (iii) non-obvious

In theory you have a right to a patent under the US constitution if you meet these requirements; in practice, you have to carefully follow many rules

Patent last for 20 years from the date of the first application for patent (prior to 1995, they lasted for 17 years from date of grant)

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Patents (II)

“First to invent” means the first to have a clear conception of how to practice the invention – a vague idea is not sufficient

The patent application must actually teach someone how to practice the invention

Your patent must teach what you consider to be the best way of practicing the invention.

All the inventors must be named, and only actual inventors can be named.

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Patents (III)

Provisional patent application: a “place holder” for one year that is relatively inexpensive

Average cost for CMU to obtain a US patent is $15,000 to $18,000. Foreign patents are much more expensive

Most costs are for attorney time, not patent office fees. In the US it generally takes about three years to get a patent

(sometimes much longer); timing on foreign patents is unpredictable.

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Patents (IV)

Patents and Public Disclosures Foreign countries require absolute novelty – if you have

publicly disclosed an invention before submitting a patent application, you may not obtain a patent

In the US you must apply for a patent within one year of: A public disclosure A public use of demonstration of the invention An offer to sell the technology

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Preserving Patentability Keep good lab notebooks

Take good notes Have other people witness and sign the notebooks on a regular basis

Don’t discuss your work with people who aren’t co-employees Disclose your inventions to the appropriate office in a timely

manner.

Patents (V)

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Who Owns Your IP?

In most cases, you are the original owner unless you’ve signed away your rights.

Most US employers require you to sign away your rights before you’re hired.

If you use your employer’s facilities to make the invention, the employer has “shop rights” (right to practice without paying a royalty)

Foreign countries: varied

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IP Ownership at CMU

Determined by IP policy If IP results from Federally-sponsored research, by law CMU

must own the IP If CMU declines to own it, the inventors do not own it unless the federal

sponsoring agency allows them to do so

If IP results from research sponsored by other parties, ownership may be specified in the funding agreement

If IP results from student working as a CMU employee, CMU owns the IP

If IP results from “substantial use” of CMU facilities, inventor owns it (but may have to share income with CMU)

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Revenue Sharing at CMU

If CMU chooses to commercialize a technology, we pay any patent costs.

If we are able to license the technology, we recoup all costs of doing so (including costs of protecting the IP)

Any remaining money is split evenly with the inventors

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Questions?

The End

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The CMU IP Policy can be found at

http://www.cmu.edu/policies/documents/IntellProp.html