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Office of Legal Counsel

Intellectual Property Basics at the University of Kentucky

February 26, 2014

Katherine A. Adams

Associate General Counsel for Research and Intellectual Property

COPYRIGHT 2014 University of Kentucky

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Office of Legal Counsel

The Office of Legal Counsel

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Office of Legal Counsel

Office of Legal Counsel

1 General Counsel, 7 Attorneys, 3 Paralegals, 3 Administrative Staff.

Each attorney is a generalist (capable of handling a wide variety of legal matters) who also concentrates in key areas relevant to a public university/academic medical center.

2 locations to better serve the University community:

Main Campus Legal Office Medical Center Legal Office301 Main Building 317 Charles T. Wethington BuildingLexington, Kentucky 40506-0032 Lexington, Kentucky 40536-0200Phone: (859)257-2936 Phone: (859)323-1161Fax: (859)323-1062 Fax: (859)257-5123

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Office of Legal Counsel

The "LAW" of the University

United States Constitution

Federal Law Kentucky

Constitution Kentucky Revised

Statutes (KRS) Kentucky

Administrative Regulations (KAR)

Governing Regulations (GR)

Administrative Regulations (AR)

Human Resources Policy and Procedure (HRP&P)

Business Procedures Manual

University Senate Rules (SR)

Code of Student Conduct

Hospital Policy (HP) Other University

Policy and Procedure Local Ordinance

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Office of Legal Counsel

What “law” governs intellectual property?

• Your Rights Within the UniversityPrimarily AR 7:6

• Definition of Intellectual PropertyState and federal laws define various types of intellectual property (some IP rights are exclusively federal, some state and federal)

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Office of Legal Counsel

AR 7:6 Intellectual Property

Defines intellectual property (IP) as the "tangible or intangible results of research, development, teaching, or other intellectual activity."

In other words, IP is any innovation or discovery conceived or developed by faculty, staff, or students using university resources.

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Office of Legal Counsel

Why do we care? UK’s Intellectual Property Development

58 disclosures in FY 2013 (ALMOST all were patents)

17 patent applications filed in FY 2013 313 total active patents as of FY 2013 30 new patents issued in FY 2013

o Strong patent portfolio in drug development and drug design, plant biotech, equine health, and materials for medical implants, drug delivery systems and medical devices

$4.8 million gross licensing revenue in FY 2013

174 total active license agreements in FY 2013

9 new license agreements, three of which were to UK start-up companies in FY 2013

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Office of Legal Counsel

“Intellectual property” includes:

Patent (federal law only)

Copyright (federal law only) Trademark (state and federal laws)

Trade secrets (primarily state law)

Intellectual Property

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Office of Legal Counsel

Patents

Patents and patentability criteria will be discussed by Don Keach, but basically:

NewUseful

Not Obvious

Patents give the broadest protection to the invention. Other forms of IP mainly protect only the specific work, but not the underlying invention.

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Office of Legal Counsel

Trademarks

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods (or services) of one party from those of others.

® ™ ℠

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Office of Legal Counsel

A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed.

It arises automatically when a work is first fixed in a tangible medium (e.g., a book, a manuscript, sheet music, film, videotape, microfilm, electronic

medium such as a computer or e-mail).

Copyright

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Office of Legal Counsel

Trade Secret

• As the name implies, no public disclosures

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Office of Legal Counsel

Need Additional Information?

Still concerned about when you need a patent, or a trademark, or a

copyright ??http://www.uspto.gov/ip/global/index.jsp

kadams@email.uky.edu

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Office of Legal Counsel

What Can I do with IP?

All forms of IP can be LICENSED.License Agreements can be on a wide

variety of termsRoyalty bearing, free, limited fields,

all fields, exclusive, non-exclusive etc.

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Office of Legal Counsel

How Can I Protect IP?First, Document Research Findings

• Various methods to Document• Consistent, dated• Lab notebooks (numbered, dated, signed)• Electronic notebooks are fine, IF they are

“permanent” (cannot be readily altered)

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Office of Legal Counsel

Protect Your IP --Take Charge of Your Data

• Clear understanding with co-workers• Written agreement with Collaborators• Use of Confidentiality Agreements

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Office of Legal Counsel

Can I protect IP in an Academic Setting?

Should you share research results? Frequently yes, but do it carefully!• DO use a confidentiality agreement (external)• DO be careful who you elect to share with• DO consider what portions you elect to share

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Office of Legal Counsel

Agreements of Particular IP Concern

Consulting AgreementsConfidentiality Agreements (if not reviewed by UK)

Material Transfer Agreement (EVEN IF reviewed by UK)

Certain Grant Agreements, other Funding Agreements

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Office of Legal Counsel

Consulting AgreementsConsulting governed by AR 3:9Limited in time, no use of University resources or facilitiesWorking for your own company, even with no direct pay, is “consulting”Commercial consulting agreement typically have dreadful IP clauses

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Office of Legal Counsel

Ethical Principles and Code of Conduct GR XIV

A MUST READ for all Employee Entrepreneurs

Consider differences in:

Conflict of Commitment Conflict of InterestUse of resourcesUse of name

Attorney-Client Privileged- 20 -

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Questions?