intellectual property leza besemann, technology strategy manager november 25, 2014 me 4054w

Intellectual PropertyLeza Besemann, Technology Strategy Manager

November 25, 2014ME 4054W

Office for Technology Commercialization 2

Agenda• Types of IP• Patents

a. Typesb. Requirementsc. Anatomy d. US patent law change – March 2013

• About Office for Technology Commercializationa. Student IP Policy

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Intellectual Property (IP)• Intellectual property refers to creations of the mind

a. Rights given to intangible assets

Asset Rights

inventions PatentsTrade Secrets

literary, artistic works, software and drawings

Copyrights

symbols, names, images and designs used in commerce

Trademarks

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Honeycrisp AppleA University of Minnesota Innovation

Is the Honeycrisp IP?

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How is the Honeycrisp Protected?

• Patent• Copyright• Trademark• Trade secret

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Copyright• Set of rights in an original work of authorship

a. Fixed in a tangible medium of expression• Protects expression and not idea• No special action required to obtain copyright• Protects against unauthorized copying

a. Does not protect against independent development

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Trademark• Word, name, symbol or device• Used in commerce to identify the source

of goods (or services)a. Wordsb. Colors (e.g. pink for Owens Corning

building insulation)c. Shape of product (e.g. the Coke bottle)d. Sounds / smellse. Animated characters

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Trade Secret• Confidential information

a. Protects ideas, methods, and other information • Elements:

a. Derives economic value or provide a competitive advantage

b. Not generally known to others c. Steps are taken to maintain secrecy

• Examplesa. Formula for Coca-Colab. Manufacturing processes

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Trade Secret Protection PROS

•Duration can be infinite •No federal registration

required

CONS •Duration can be finite • Reverse engineering • If a 3rd party

(independently) gets a patent on your trade secret, you can be prevented from using your trade secret

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Is your Design Notebook IP?

How is it protected?

COPYRIGHT

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PatentProperty rights granted by the government to an inventor

Requires full disclosure of invention

The right to exclude others from making, using, offering for sale, selling or importing the invention

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Types of Patents• Plant patents – protects any new and distinct variety of plant that has been

invented or discovered and asexually reproduceda. Term: 20 years from the date the application is filed

• Design patents – protects ornamental appearance of an articlea. Term: 14 years from the grant date

• Utility patents – protects new and useful process, machine, manufacture, or composition of matter, or any improvement

a. Term: 20 years from the date the application is filed

• Provisional patent application – low cost approach to securing an early filing date. Never examined. Must file a regular patent application within 1 year.

a. Term: 1 year

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Design Patent Example

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Utility Patent

• Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent (35 U.S.C. § 101)

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Utility Patent

• Elements for patentabilitya. Useful (utility)b. New (novel)c. Non-obvious

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Utility• Must have some real-world use• Must not be harmful to society• Must not violate laws of physics and nature

• Ideas found to violate the utility requirement:a. Perpetual motion machineb. Method of controlling the aging processc. Illegal or highly dangerous products

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Novelty

• Was not previously known, sold or used by others anywhere in the world

• Determined by searching literature, patent databases, web, etc.

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Non-Obviousness• Higher hurdle than the novelty and utility requirements

• Invention could not be readily deduced from publicly available information

a. Combination or modification of one or more references that make the claimed invention obvious

• A “surprising and unexpected” result

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Is it Patentable?

• If you change a rivet to a screw in a device?

Probably not patentable

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Anatomy of a Patent• Front Page

a. Patent No.b. Titlec. Inventorsd. Filing Datee. Abstract

• Drawings• Background• Description of Drawings• Detailed Description• Claims

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Example Utility Patent

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Drawings

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Written Description• Background states what is

currently known in the art

• Detailed Description must enable “one of skill in the art” to practice (e.g., make, use, etc.) the invention

• Description of Drawings

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Claims• Scope of the invention is

determined by the breadth of the claims

• Include a list of elements or steps

• Written as a single sentence

• Patent infringement determined by determining if product has all elements in claims

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Types of Claims• Independent claim

1.) A device comprising:element A;element B;element C; andelement D.

• Dependent claim2.) The device of claim 1, further comprising element E.

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Patent ClaimsIndependent Claim

Dependent Claims

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US Rights No Patent Rights

Grace Period*

Patenting DeadlinesMake Idea Publicly Known

“Public Disclosure”(Day zero) 1 Year

Foreign Rights

Discovery

No Patent Rights

• In US 1 year after public disclosure to file application. • US law effective March 2013 complicates implementation of 1

year grace period.

1 year

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US Patent Law – 2013 Change• Leahy-Smith America Invents Act (AIA)

a. Signed into law on September 16, 2011b. Most significant change to the U.S. patent system

since 1952• March 16, 2013 – US became a "First-Inventor-to-File

(FITF)“ system a. 1-year grace period still exists

• But is complicated by law change – implementation rules unclear

b. Best to assume there is no 1-year grace period; file sooner rather than later

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Patent Costs

Patent protection is expensive$3-10,000+ (U.S. application)$25-30,000+ (U.S. lifetime cost)$Millions for global rights

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Patent Searching• Google Patents (google.com/patents)

a. Includes US and some foreign documents

• US Patent Office (uspto.gov) a. Not very user friendly but issued patents and

published patent applications can be searched

• European Patent Office (ep.espacenet.com)a. Provides US and foreign patents

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Office for Technology Commercialization

Mission: facilitate the transfer of research to companies for development of new products and services

benefit the public good, foster economic growth and generate revenue to support the University’s research and education goals

Identification of innovationsMarket assessmentsProtection (patent, copyright, trademark)LicensingStart new companies

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U Commercialized Inventions

Honeycrisp Apple

Flight Data Recorder (Black Box) Gentle Leader

Autoscope

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Tech Commercialization SimplifiedDevelop

Protect

License

Product

Income

Faculty, students and staff develop new IP

File patent application or copyright asset

License IP to existing company or start new company

Company develops and sells product

Company pays U royalty

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Results for FY2013Invention

s Disclosed:

331

Patents Filed: 148

New Licenses:

91

New Startups:

14

$39.5 million gross revenues

OTC Generates Revenue for U

• Research• Innovation• Equipment• Scholarships• Income distribution• Commercialization

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Student IP Policy – NEW

Policy change effective February 14, 2014

Students own rights to classroom projects (educational activity)As long as the resources used were routinely made available to

all students in the courseThe IP was not based upon pre-existing University-owned IP nor

is a University employee or outside individual a co-inventorThe class or project was not supported by a third party or

corporation or government grant or contract

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Questions?Leza BesemannTechnology Strategy ManagerOffice for Technology Commercialization

612.625.8615besem007@umn.eduwww.research.umn.edu/techcomm/