Intellectual Property Overview

Academic Leadership WorkshopFebruary 8, 2006

Science & Engineering Library

Mike Mitchell, Office of Legal AffairsTodd Guttman, Office of Research

Agenda Intellectual Property Basics

Patents Copyrights Fair Use of Copyrighted Materials

IP Ownership University Patent & Copyright Policy Confidential Disclosure and Material

Transfer Agreements

Legal Authority for Patent and Copyright Protection

U.S. Constitution and Federal Statutes

Patent Rights:

A grant by the federal government to an inventor of limited exclusive rights to an invention.

Grants the right to exclude others from making, using, or selling, and not the right to make, use or sell the claimed invention. Term is generally 20 years.

What Can Be Patented?

An invention must qualify as a process, machine, article of manufacture, composition of matter, or any improvement thereof, to be patentable.

Patentable inventions must be useful, novel and non-obvious.

Utility

An invention must be useful, that is, it must solve some practical problem. Threshold is notoriously low.

Novelty

An invention must be unique to the inventor, not something that someone else had placed in the public domain. Statutory bars to patentability: For example, a process was known or used by others in the U.S. before the subject invention. Result: Bar based on novelty (Prior Art).

Non-Obviousness

Most subjective standard. If the claimed invention would

have appeared obvious to someone with ordinary skill in the subject area, then one can not obtain a patent for it.

U.S. Statutory Bar to Patentability

A one year statutory bar is triggered once an applicant offers the invention for sale or publicly discloses or uses the invention.

Who is an Inventor?

An inventor is any individual who contributes to the conception of or reduction to practice of the claimed invention.

Case Study Dr. Jones discloses a new

“Composition of Matter” to OTL. A new product formed by the intermixture of two or more ingredients and possessing properties which belong to none of these ingredients in their separate state. She has combined aluminum, sand and lemonade to create an unbreakable glass.

Case Study #1

Analysis. Invention needs to be new. Has someone done this before? How? What’s new about her process? Has the approach be discussed in article or publications?

Case Study

The claimed invention must be useful. Low bar. If the inventor can point to some kind of helpfulness, auto glass, that should do it.

Case Study

Is this an obvious process? What is or is not an obvious step to take appears readily to those who do the kind of work at hand. Look to prior art in the field, ascertain the differences in the process and current examples, and determine obviousness.

Copyright

Protects an author’s artistic expression in a literary work, musical work, computer software, video, motion picture, sound recording, photo, sculpture, etc.

Can register the “work” with the U.S. Copyright Office

No Need to Register

Copyrights are automatic once they are fixed in a tangible medium of expression.

Registration gives author additional statutory rights against an infringer.

The Rights in Copyright

A copyright is a “bundle” of exclusive rights:

to reproduce the work in copies to distribute copies to perform the work publicly to display the work publicly to prepare derivative works

Creation defines ownership

Who owns the copyright in software?

The creator(s), unless . . . It’s a work made for hire or It’s assigned to another party

Copyright Does Not Protect:

Underlying ideas Portions in the public domain Aspects dictated by constraints

such as standards, specs or compatibility requirements

Case Study #2

Dr. Adams has written a computer program which allows a researcher to analyze more efficiently the content of MRI images to allow more effective clinical treatments.

Case Study: What Does Copyright protect in Computer Software?

Code Manuals and documentation GUIs/“Look and feel” SSO: structure, sequence,

organization For databases, organization but

not data

Case StudyCopyright Protection vs. Patent Protection for Software

COPYRIGHT: Protects the GUI

and the code itself, but not the software’s function

Utility is irrelevant to protection

Reverse engineering is allowable

PATENT: Protects the

software’s function, can be broader than just the code

Utility is required for protection

Reverse engineering is prohibited

“Fair Use” of Copyrights

The concept of fair use is a fairness standard developed to permit use of copyrighted material without infringement for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. Must be limited and for a non commercial purpose.

Case Study #3

Dr. Al Mine, a professor in Human Ecology, has created a psychomotor testing methodology, which shows great promise as a non-invasive test for identifying repetitive workplace injuries.

Dr. Mine has received research funding through NIOSH – the National Institute for Occupational Safety and Health as well as through an Ohio State Innovation Grant.

Dr. Mine considers the methodology to be his, however, claiming that he created it while working on weekends and while consulting for private clients.

IP Ownership Under Ohio Law Ohio Revised Code § 3345.14 All rights to and interests in discoveries,

inventions, or patents which result from research or investigation conducted in any experiment station, bureau, laboratory, research facility, or other facility of any state college or university, or by employees of any state college or university acting within the scope of their employment or with funding, equipment, or infrastructure provided by or through any state college or university, shall be the sole property of that college or university.

IP Ownership Under Bayh-Dole

The Bayh-Dole Act was enacted into law on December 12, 1980 as P.L. 96-517 and created the following:

A uniform federal patent policy which granted universities title to inventions developed through government funding.

Universities must file patents on inventions they elect to own.

The government retains a non-exclusive license to practice the invention throughout the world.

Data Ownership

Federal policy and guidance supports institutional claims of data ownership for federally funded research.

Under OMB Circular A-110, the rights to “intangible property” belong to the institutional grantee.

The NIH Grants Policy Statement states that “grantees own the data generated by or resulting from a grant-supported project.”

The National Science Foundation gives grantees rights to their data as well.

The Ohio State University Policy on Patents and Copyrights ADMINISTRATIVE SCOPE--Covers all students,

faculty and other employees, and all units of the University.

SUBJECT MATTER SCOPE--Covers all intellectual property matters, e. g., inventions, works of authorship, patents, copyrights, licenses, etc., relating to sponsored programs or other research activities.

Continued

INVENTIONS--Most inventions must be reported to the Director OTL. Inventions neither directly related to the inventor's University activities or responsibilities nor involving significant use of University facilities or resources will not be claimed by the University. Others may be either claimed for development through the University or released to the inventors.

Contiued

WORKS OF AUTHORSHIP--Copyright in most books, papers, artistic works, etc., will belong to their individual authors (creators), but this does not extend to material contained in such works to which the University has independent rights (such as a computer program included as an appendix) nor to works produced as an integral part of a sponsored program or other specific responsibility.

Continued

STUDENT INVENTIONS AND WORKS OF AUTHORSHIP--Exempt unless produced in capacity as employee, as part of a sponsored program or in certain other special circumstances.

ROYALTY SHARING--Except for on-the-job works of authorship (including computer software) of non-faculty employees, the inventors' or creators' share of royalties received by the University (including the Research Foundation) for their inventions, etc., is as follows: For gross royalties that are up to $75,000 the individual(s) receive one half of gross. Anything beyond $75,000 one third of {gross in excess of $75,000 minus any expenses in excess of $37,500}. For example: for $200,000 cumulative gross royalties, with $42,500 cumulative expenses, the cumulative share for all individuals would be: 1/2 x 75,000 + 1/3 x [(200,000 - 75,000) - (42,500 - 37,500)] = $77,500

An individual's share is not dependent upon continuing affiliation with the University.

Case Study #4

Dr. Small, a professor in Biomedical Engineering, has been collaborating with a colleague, Dr. Klein, at Eastern Polytechnic University for years.

Dr. Small plans to send Dr. Large a sample of his recently-created carbon nanotubule, which his lab has successfully coated to make it non-bioreactive.

Dr. Small has heard of the new Export Control regulations and checks with the Office of Research before sending a sample of his nanotubules to his colleague in Prague – just to be sure.

Case Study #4

The Office of Research handles the Export Control issue, but strongly recommends that Dr. Small first have a material transfer agreement signed before sending the sample.

Dr. Small has been exchanging samples for years with his colleague without such formalities and is concerned that his colleague will be offended.

What is a Material Transfer or Confidential Disclosure Agreement (MTA or CDA)?

Formal agreement governing the transfer of proprietary and/or confidential information or material from one party to another

Can be an imbedded agreement, or be a stand-alone agreement (for example, sponsored research agreement, collaboration agreement or consulting agreement)

Protects the provider of information or materials from liability resulting from use of the materials or information

May impose restrictions on use and further transfer of the information or materials

Often gives providers certain rights in research results

Why are MTA and CDAs Needed?

The Past … Research information and materials were freely

exchanged, without formal arrangements Then… 1980 Bayh-Dole Act provided Universities with

clear title to their inventions Subsequent Supreme Court decision allowed

patenting of genes

Why are MTA and CDAs Needed?

Now … Increasing global competition

(commercial and academic) All research materials increasingly

viewed as as valuable and proprietary Academic institutions are following their

commercial partners.

Result … More protection and constraints

The Problems

CDA’s and MTAs are increasingly complex. The terms imbedded in the agreements can have

far-reaching consequences (for both parties). Increasingly, information or material providers

are risk-averse when sharing their proprietary materials.

There may be no other sources for the information or materials.

The researcher wants it - NOW. Recipients often have little leverage in the

negotiation.

The Result

One of the most difficult agreements institutions are faced with.

Key Provisions in CDA/MTAs

Scope and definition of the information or materials

Restrictions on research use Data ownership rights Commercialization rights (Patent and

Licensing Rights)

CDA/MTA Key Principles

Informed participation Objective decision making Accessibility for research purposes Open publication dissemination Commitment to students Legal integrity and consistency Fair consideration for any commercial use

AUTM MTA Special Interest GroupSurvey in 2003

Most significant issues for academic institutions

1. Overly-Broad definitions of Information or Materials

2. Automatic non-exclusive royalty-free license (NERF) and the right to sublicense

3. Developing processes to reasonably track Provider obligations

4. Ownership (sole or joint) of resulting inventions

5. Definition of Invention or Joint Invention

6. Control of patenting and commercialization

Facilitating Transfers

NIH Simple Letter Agreement for non-proprietary research tools

NIH Uniform Biological Material Transfer Agreement (UBMTA)

UBMTA and Simple Letter Agreement

UBMTA resulted from a joint effort by the academic community and the NIH to simplify and expedite transfers of material between academic institutions

Master Agreement with a comprehensive set of clauses

Master Agreement executed just once and then separate implementing letters for specific transfers

Result is a rapid procedure for signatory institutions

Simple Letter Agreement is a one page MTA covering the minimum provisions for a transfer

Pros and Cons of theSimple Letter Agreement or UBMTA

Pros: Straightforward and saves time negotiating Status quo terms Meets NIH guidelines

Cons: Most often not accepted by commercial

partners Researcher may feel there is not enough

control

Who handles?

Grants & Contracts vs. Tech Transfer vs. College or Department

Need to understand the information being exchanged or the science being performed

Need to understand the impact on the current projects and funding sources

Need to understand the legal nuances and implications of the terms

Need to understand impact on existing inventions Must live with consequences of MTA terms

Other Issues & Questions