Intellectual PropertyNatasha Jones, MS, JD, MSLSLicensing AssociateUK Intellectual Property Development OfficeUK Intellectual Property Development OfficeASTeCC A144 (in the engineering quad)218-6554tasha.jones@uky.edu

What is intellectual property (IP)?p p y ( )UK Administrative Regulation 7:6 defines intellectual property (IP) as the “tangible or intellectual property (IP) as the tangible or intangible results of research, development, teaching, or other p , g,intellectual activity.”

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

IP at UKUK owns any innovation or discovery conceived or developed by faculty, staff, or students using UK resources.

“Use of UK resources” is broad• employee time• student time• student time• equipment• supplies• facilities• facilities• clinical practice

Benefit to inventor: this allows UK to protect your rights to Benefit to inventor: this allows UK to protect your rights to use the IP, and you can continue to build on your research

IP at UKUK does not claim any ownership rights in “traditional products of scholarly activity ” such as products of scholarly activity, such as

• journal articles• textbooks

i• reviews• works of art including musical compositions• traditional course materials

UK considers these items the unrestricted property of the author or originatorthe author or originator.

Types of IPyp

Trademark federal & state law

Copyright federal lawC py g

Trade Secret primarily state lawTrade Secret primarily state law

Patent federal law

Trademarkwords, names, phrases, symbols, and/or designsthat distinguish goods and services from those manufactured or sold by manufactured or sold by others

Term: can be renewed forever as long as it is being used in is being used in commerce www.uky.edu/Graphics/download.htm

Trademark markingsgxxx® registered trademark goods & services

advantages of federal registration• a notice to the public of the registrant's claim of

ownership of the mark ownership of the mark, • a legal presumption of ownership nationwide, and • the exclusive right to use the mark on or in connection g

with the goods or services set forth in the registration

xxxTM unregistered trademark goodsxxxSM unregistered servicemark services

Copyrightpy gprotects original works of authorship that have been fixed in a tangible mediumbeen fixed in a tangible medium

1. Literary works2. Musical works & accompanying music3. Dramatic works & accompanying music4 Pantomimes and choreographic works4. Pantomimes and choreographic works5. Pictorial, graphic, and sculptural works6. Motion pictures and other audiovisual works7. Sound recordings8. Architectural works

Copyrightpy g

Exclusive rights:• reproduce it i l th • reproduce it• prepare derivative works from it• distribute it

i.e., only the copyright owner has the right to do distribute it

• perform it• display it

gthese things with the work

rights exist at the moment of creation

Term: life of author + 70 years

Copyright Noticepy gPuts others on notice that the owner asserts copyright protectionp

Encouraged, but not required to claim protection

If a traditional scholarly work

© 2014 (name of author)

Additional information identifying the unit or how to

Otherwise © 2014 University of Kentucky

Additional information identifying the unit or how to contact the author may also be included immediately below the copyright notice.

Trade Secretinformation that companies keep secret to give them an advantage over their competitors

As the name implies, there can be no public disclosures.

examples: KFC’s 11 herbs & spices formulaCoca-Cola’s formula

Term: indefinite (as long as you can keep it secret)

Types of Patentsyp

1. Utility

2. Plant

3. Design

Utility Patentya property right granted by the federal government to an inventor

to exclude others from to exclude others from • making,• using,• offering for sale, or

this does notgive you the right to do

these thingslf

g ,• selling the invention throughout the U.S. • or importing the invention into the U.S.

yourself

in exchange for public disclosure of the invention when the patent is granted

Term: 20 years from the date the patent application was filedTerm: 20 years from the date the patent application was filed

Utility Patent: Patentability Criteriay yYour invention or discovery must fall into one of these categories:

A. ProcessB Machine OR any new and useful B. MachineC. ManufactureD. Composition of matter

yimprovement on one those 4 categories

AND

must have all 3 of these characteristics1. New / novel — not patentable if each and every element of the

invention was previously known2. Useful — has some real world purpose 3. Non-obvious

▫ at the time the invention was made AND▫ to a person having “ordinary skill in the art”

Utility Patent: Disclosure RequirementWritten Description• Sufficient description to inform a skilled artisan that the applicant

was in possession of the claimed invention as a whole at the time was in possession of the claimed invention as a whole at the time the application was filed

• Example: Discovery of a new target in a biochemical pathway; contemplate method for treating disease by inhibiting activity; no p g y g y;example of inhibitors

Enablement• Sufficient description to inform a skilled artisan how to make and

use the claimed invention without undue experimentation• Example: Discovery of a compound having anti-cancer activity for

one type of cancer; contemplate class of compounds for treating cancer

The New First-to-File Rule

Leahy-Smith America Invents Act (AIA)

Rewards the first inventor to file a patent application with the USPTOapplication with the USPTO• same rule as the rest of the world• note: you still have to be an inventor to be note: you still have to be an inventor to be

granted the patent

The old law was a first-to-invent rule

Preserving Patent Rightsg gWhat actions can limit or destroy the ability to obtain patent protection?obtain patent protection?• public use• public sale• public sale• offer for sale• publicationpublication

Publication = Publically Accessibleyfactors• length of time the information was • length of time the information was

exhibited• expertise of the target audienceexpertise of the target audience• existence of reasonable expectation that

the information would not be copiedp• simplicity or ease with which the

information displayed could have been copied

Examples of Publicationsp

• journal articles• grants or studies made publicly available• grants or studies made publicly available• dissertation/thesis catalogued in a university

library or available online• public dissertation/thesis defense• public dissertation/thesis defense• poster presentation• oral presentation

tt h thi t th b t • pretty much anything put on the web except where password protected

So let our office know if you have a publication coming up for an invention you disclosed to us!

Plant Patentsfor the invention or discovery and asexual reproduction of a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state

right to exclude others from asexually reproducing, selling, or using the plant so reproduced

limited to a plant in its ordinary meaning:• A living plant organism which expresses a set of characteristics determined by its

single, genetic makeup or genotype, which can be duplicated through asexual reproduction, but which can not otherwise be "made" or "manufactured.“

• includes sports, mutants, hybrids, and transformed plants cludes spo ts, uta ts, yb ds, a d t a s o ed pla ts ▫ Sports or mutants may be spontaneous or induced.▫ Hybrids may be natural, from a planned breeding program, or somatic in source. ▫ While natural plant mutants might have naturally occurred, they must have been

discovered in a cultivated area.

• Algae and macro fungi are regarded as plants, but bacteria are not.

Term: 20 years from the date of filing the application

Plant Variety Protection Act of 1970 (PVPA)(PVPA)applies to sexually reproduced or tuber propagated plant varieties

certificate gives you the right to exclude others from selling offering for sale certificate gives you the right to exclude others from selling, offering for sale, reproducing, importing, exporting, or using it in producing a hybrid or different variety

1. new — has not been sold or otherwise disposed of for purposes of exploitation for more than 1 year in the US or more than 4 years abroad (or 6 years in the case of a tree or vine)

2. distinct — clearly distinguishable from any other publicly known variety; based on one or more identifiable morphological, physiological, or other characteristics p g p y g

3. uniform — any variations are describable, predictable, and commercially acceptable4. stable — the variety, when reproduced, will remain unchanged with regard to its

essential and distinctive characteristics within a reasonable degree of commercial reliabilityreliability

Term: 20 years from the certificate's date of issue (25 years for trees & vines)

How can I protect my IP?p yFirst, document your research findings.• be consistent in recording work• be consistent in recording work• paper notebooks

▫ bound numbered pages dated signed▫ bound, numbered pages, dated, signed• electronic notebooks are fine if they are

permanent (i.e., cannot be readily altered)p ( , y )

Second, notify UK about the existence of your y yinvention.• https://uky.ttoportal.com

UK’s IP Protection Processinvention or innovation

complete disclosure form www.uky.ttoportal.com

IPDO Director determines if a commercialization assessment is 

needed

1‐2 weeksstructured interviewyes

no

commercialization assessment report is prepared

2‐4 weeks

IPC Chair schedules IPC meeting date and time

IPC meeting

no

IPC meetingInventors are not required to attend but may do so

UK pursues the invention is released toinventor should UK pursues the appropriate protection for 

the invention

invention is released to the inventor*

inventor should conduct additional 

research 

2 weeks for notification by campus mail

* release must be in accordance  with the terms of the applicable grant or funding agreementcontinued on next slide

UK’s IP Protection Process (cont’d)UK pursues the 

appropriate protection for the invention

copyright, trade secret, other protection

patentability opinion approx. 3 months and $1000 (paid by UK)

negative opinionpositive opinion

provisional application

full patent application invention is released to the inventor*

managed by IPDO

within 1 year

within 1 year

patent prosecutionIPDO, inventor, and patent attorney communicate 

with US Patent & Trademark Office

patent issues application is abandoned

approx. 3‐5 years and $25,000 (paid by UK)

patent issues application is abandoned

* release must be in accordance  with the terms of the applicable grant or funding agreement

What can be done with IP?Patents, copyrights, trademarks, and trade secrets can be licensed• our office negotiates terms

terms of license agreement• term of agreement (years) • field of use• geographic area of use• exclusive or non-exclusive• sublicenseable or non-sublicenseable• commercialization milestones• commercialization milestones• reporting requirements• financial

▫ up-front license fee▫ milestone payments based on product development▫ royalty payments based on sales▫ pay for patent expenses

Royaltiesy

(li )Company Customer

licensee to use the technology products

$royalties(licensor)

(licensee) $royalties

royalties

40% to inventor20% to inventor’s department20% to inventor’s college20% to University of Kentucky Research Foundation (UKRF)

MTAs & CDAsMaterial Transfer Agreement • use when sending or receiving research materials

Confidential Disclosure Agreement• use when confidential/proprietary information will be

h d i h b h ( h l shared with or by another party (school, company, individual, etc.)

• a.k.a. nondisclosure agreement and secrecy agreement

Authorized signatory: Director of IP DevelopmentNOT faculty, staff or students

Contact: tasha.jones@uky.edu; 218-6554

http://www research uky edu/IP http://www.research.uky.edu/IP