Tech Fair 2007IP, GCS, RA and U

[Intellectual Property, Grants and Contracts Services, Research Administration and (YOU and UTA)]

Sumita Ghosh, J.D., Ph.D. (Director, Office of Technology Management)Sarah Panepinto, Assistant Director, Grant & Contract Services

Article 1, Section 8 (US Constitution)

Section 8. The Congress shall have power…To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;

The Office of Technology Management’s “Customers”

University community“help me protect my idea”“stop someone from stealing my idea”“help me make $” (personal and for laboratory)Inventors share 50% of royalties from licenses/ University gets other 50%--- minus patent expenses. VERY GENEROUS compared to industry

Local, national and international organizations“good stewards of taxpayer dollars”“economic development engines”

Commercialization partners“help us make $”

A BALANCING ACT- COMPROMISE+ REASONABLENESS

System Policy: Who and what is covered?

WHO : EVERYONEAll System/UTA employeesAnyone using System facilities under the supervision of System personnelUndergraduate and graduate students

Postdoctoral fellows

WHAT: ALL TYPES OF INTELLECTUAL PROPERTY (IP)Inventions/Discoveries

Trade secrets/Know howWritings, Art Works, Musical compositions and performances, ArchitectureSoftwareTrade and service marks

Trade Secrets

Underlying TheoryFreedom of contract; protection against unfair means of competition

Source of LawState statute (e.g. Uniform Trade Secrets Act); common law

Subject MatterFormula, pattern, compilation, program, device, method, techniques, processes

Standard for ProtectionInformation not generally known or available; reasonable efforts to maintain secrecy; commercial value

Trade Secrets (Contd.)

Scope of ProtectionProtection against misappropriation--- acquisition by improper means or authorized public disclosure

Period of ProtectionUntil becomes public knowledge

DisclosureLoss of protection (unless under confidentiality e.g. Non-Disclosure Agreement)

Rights of OthersIndependent discovery; reverse engineering

Costs of ProtectionSecurity expenses; personnel dissatisfaction; litigation costs

Licensing and AssignmentsDiscouraged by inherent nature of bargaining (seller wants guarantee before disclosure; buyer wants to know what is offered)

Trademarks

Underlying TheoryPerpetual protection for distinctive nonfunctional names, services, and dress in order to improve the quality of information in the marketplace

Subject Matter Trademarks; service marks; certification marks (e.g. Good Housekeeping); collective marks (e.g. Toy Manufacturers of America); trade dress (§43(a)); no protection for functional features, descriptive terms, geographic names, misleading aspects, or “generic names” (e.g. thermos)

Standard for ProtectionDistinctiveness; secondary meaning (for descriptive and geographic marks); use in commerce (minimal); famous mark (for dilution cases)

Scope of ProtectionExclusive rights in U.S.; likelihood of confusion; false designation of origin (§43(a)); dilution (for famous marks)

Period of ProtectionPerpetual, subject to abandonment

Trademarks and Copyrights

CONTACT OTM regarding Institutional interest in Obtaining Trademarks.

We generally DO NOT encourage formal registration but rely on Common Law rights.

COPYRIGHTS: ALL THE OTHER SPEAKERS/TALKS TODAY.

Literary, musical, choreographic, dramatic and artistic works limited by idea/expression dichotomy (no protection for ideas, systems, methods, procedures); no protection for facts/research

Patents

Underlying TheoryLimited monopoly to encourage production of utilitarian works in exchange for immediate disclosure and ultimate enrichment of the public domain

Source of LawPatent Act (federal)

Subject Matter Process, machine, manufacture, or composition of matter; plants (asexually reproducing); designs. Excludes: laws of nature, natural substances, printed matter (forms), mental steps

Standard for ProtectionNon-Provisional UtilityPatentable subject matter

Written Description/Enablement Utility

NoveltyNon-obviousnessDistinctiveness for plant patentsOrnamentality for design patents

Patents (Contd.)

Scope of ProtectionRight to exclude others from making, using or selling innovation; extends to “equivalents” of elements in claims

Period of Protection20 years from filing (utility); extension up to 5 years for drugs, medical devices and additives14 years (design)

DisclosureRight to file patent application lost if inventor delays too long after public disclosure; full disclosure is required as part of application; notice of patent required for damages

Rights of OthersOnly if licensed; can request reexamination of patent by Patent and Trademark Office

Costs of ProtectionFiling, prosecution (legal fees), issue and maintenance fees; litigation costs

Licensing and AssignmentsEncouraged by completeness of property rights; subject to antitrust complaints and validity challenges

WHO OWNS WHAT?

Within scope of employment Unrelated to job responsibilities

With System/UTA time, facilities, or financial support by System

Invention released to inventor

As a work for hire or Institutional project

IP is a scholarly work- scholarly, educational (i.e. course materials), artistic, musical, literary or architectural work in the author’s field of expertise.

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From research supported by Federal or third party sponsorship

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IP owned by Board of Regents

IP owned by Inventor/Author

LESSON: If you’re not sure you own it, please don’t try to negotiate for it.

Non-Disclosure Agreements

Mutual NDA Technology Specific Limited period for disclosure (usually 1 year) Limited confidentiality period (usually 3 years) Points of contact (UTA and general company)

State/UTA cannot warrant or indemnify Export controls Signatory authority Blanket Mutual NDA (Similar to NDA) Implementing Letter Amendment Outlines specific technology

UTA points of contactAny deviations from Blanket Mutual NDA

IP in Proposals

NO RIGHTS CONVEYED Companies--- NDA in place??? “The CONFIDENTIAL INFORMATION shall remain the sole

property of the DISCLOSING PARTY”Recommendations: In the specific aims/intro. section of a grant

application/proposal, insert: “The following information is proprietary and confidential and may not be released without the prior written approval of the principal investigator.” (recommended by DHHS)

IN ADDITION, EACH PAGE of the application/proposal should be marked "Information On This Page Is Proprietary and Confidential." (just to be on the safe side)

IP in Sponsored Research Agreements

Ownership of IPIndustry sponsors often want ownership of IP

Industry wants a return on its investment However, university has a significant investment in research

projects as well (i.e. support personnel, facilities, etc.)

Policy on ownership is simple---OWNERSHIP FOLLOWS INVENTORSHIPSponsor receives right of first refusal on licensing IP

PublicationIndustry may want IP to be held as a trade secret

May want to block disclosure of the IP to maximize its value

System policy prohibits unreasonable restrictions on the right and ability of universities to publish research findings. However, universities may delay publication to allow a sponsor to protect (i.e. patent) IP it believes is valuable.

IP in Subcontracts

UTA will be subcontracting to another entityUTA is recipient of a subcontract

SAME AS WITH SRAs:

OWNERSHIP FOLLOWS INVENTORSHIP

Please don’t expect us to change patent and/or tax laws.

Materials Transfer Agreements (MTAs)

Applies to biological materials generally but is ANY material for which IP rights MAY be asserted

UTA wants to keep track of where materials are going (e.g. select agents, proprietary formulations that are not yet protected, etc.)

UTA is a signatory of the Uniform Biological Material Transfer Agreement (UBMTA) --- Implementing Letter for a Particular Transfer

For Non-Commercial, Academic, Research Use ONLY

For COMMERCIAL and/or NON-RESEARCH use licenses, contact the Office of Technology Management

Patent License Agreements (General)

Term SheetRetained rights

Board will retain the right to (a) publish the general scientific findings from research related to licensed subject matter subject to the confidentiality terms of the license, (b) use licensed subject matter for research, teaching and other educationally-related purposes, and (c) transfer licensed subject matter to academic or research institutions for non-commercial research use.

Equity vs. RoyaltySystem cannot agree to broad indemnification/warranty clausesUse of Board’s/University’s name

Term Sheet for PLA

Exclusive/Non-exclusive/Co-exclusiveField of UseTerritoryPatent/Technology Rights soughtFinancial consideration

Up-front fees

Annual license re-issue feeMilestone paymentsRoyalty ratesSublicense fees

Patent expensesTermination

Software License Agreements (General)

Under System policy, the patentability of software trumps the copyright of the inventor/author.“Thus, it is now apparent that equal treatment in theory has resulted in some hardship for the inventors of software, their departments and their students, and may be resulting in lost opportunities where publication of software has been unduly restricted or research collaborations involving the creation of software have not been consummated because of the manner in which the Regents' Rules have been implemented.”

“[T]he fundamental judgments that must be made in order to handle software properly will be whether the proposed treatment is in the best interests of the University and the public or more specifically, whether the benefits that flow from the proposed treatment are adequate consideration for the transfer of the software.”

For more info. see http://www.utsystem.edu/Ogc/IntellectualProperty/swadmpol.htm

Software in SRAs

Under what circumstances may rights in software created pursuant to sponsored research arrangements be licensed on a royalty-free basis or given to sponsors? Software inventions may be provided to research sponsors as deliverables under research contracts or licensed to sponsors on a non-exclusive, royalty-free basis, as requested by sponsors, only when the consideration flowing to the University is adequate to justify the transfer.

AVOIDING PROBLEMS

Do not make promises concerning IP to commercialization partnersDo not discuss technical/proprietary information (University’s or

Company’s) without a Non-Disclosure Agreement (NDA)

DO contact the Office of Technology Management with any issues, questions, concerns

DO have commercialization partners contact the Office of Technology Management with any issues, questions, concerns

DO disclose IP to the Office of Technology Management via the IP Disclosure Form (http://www.uta.edu/ra/otm/forms.htm)

DO report any potential conflicts of interest (COI) to the Research Compliance Office (Form at http://www.uta.edu/ra/oric/coi/index.htm)

CONTACTS/ QUESTIONS?

Website: http://www.uta.edu/ra/otm/General e-mail: otm@uta.eduPeople: Sumita Ghosh; sumita@uta.edu Natalia Toth; ntoth@uta.eduTelephone: (817) 272-1119 or (817) 272-1142Mailing address: Office of Technology Management Box 19161 Arlington, TX 76019-0161Physical address: Arlington Technology Incubator Ste. 214; 202 E. Border St.

UTA specific policies: http://www.uta.edu/ra/otm/handbook.htm

UT System policies: http://www.utsystem.edu/OGC/IntellectualProperty/index.htm