Intellectual Property

1. Intellectual Property Ron Buchanan, Ph.D., CHP Consultant for OSU’s Office of Intellectual Property Management

2. What is Intellectual Property (IP)? • Know-how that others do not know. • Discovery of something or some process that others have not discovered. • Resulting tangible form: • product • process • software

3. Who are the Inventors? • Person(s) creating the new idea and how it is to be implemented.

4. Who are NOT the Inventors? • Persons who only wish something could be invented to solve a problem. • Persons that have an idea on how to solve a problem, but it is not a practical or workable solution. • Persons that only implement what the inventor directs, i.e., lab assistants, engineers, students, etc., that do not contribute to the novelty of the invention.

5. Inventorship • Inventorship is very important: • Include only those contributing to the new idea. • Including those that did not contribute can void a patent. • Not including those that did contribute can void a patent. • Inventorship is not the same as authorship on a published paper.

6. Who Owns the IP Rights? • Generally, the organization you work for. • Part of the condition of employment. • The patent has your name, but is assigned to your organization. • Any material benefits you receive is above what is required.

7. What is the Process? • Number1 - Discovery/develop a useful item, process, etc. • Contact your IP office and fill out an Invention Disclosure Form (internal doc.) • IP office will evaluate the invention for uniqueness, usefulness to their business, etc. • IP office will contact you with decision.

8. Next Step • If the organization is not interested, they may allow you (for a fee) to patent, market it, etc., but they may (in some cases) retain the assigned IP rights. • If the organization desires to protect their IP rights, then the following may occur:

9. Protecting IP Rights • Patent to prevent the competition from using it. • Do not patent, but keep it as a trade secret. • Patent and then use it within the organization and/or sell products. • Patent and license it to companies outside the organization.

10. Three Tests Of Patentability • New, novel, innovative - • Demonstrably different from prior art • New use • Improvement. • Utility, usefulness - • Perform some function • Does what it says it does • Provides some benefit.

11. Tests • Non-obvious to person with ordinary skill in the art • Surprising • Unexpected

12. Types of Patents • Formerly, 17 years from date of issue. • Types of patent applications (8 June 1995): • Provisional Patent (1 year from date of filing) • Utility Patent (20 years from date of filing) • Plant Patent (20 years from date of filing) • Design Patent (14 years from date of issue) • Foreign filing (20 years from date of filing).

13. Provisional Patent Timeline • Inv. Disc. --> Provisional Patent Appl.: • 1 year to file an Utility Patent Appl. • 1 Year to file a Patent Cooperation Treaty (PCT) Appl. • 18 month after filing of PCT to file foreign patent applications (total of 30 months from time of Prov. Pat. Appl.) • Caution! Prov. Pat. Appl. locks you into coming up with something in 12 months.

14. Utility Patent Timeline • Inv. Disc. --> Utility Patent Appl: • 1 Year to file a PCT: • 18 month after filing of PCT to file foreign patent appl. (total of 30 months from time of Utility Pat. Appl.) • Maintenance fee due in 3.5, 7.5, and 11.5 years (total fees = approx. original cost of patent).

15. Patenting Process • Submit desired type of patent application (patent attorney). • Exchange of information between IP office, inventor, U.S. Patent and Trademark Office, and patent attorney. • Claims accepted or denied. • Final USPTO decision – • Grant patent # on a given date • Patent denied (Cost for each patent application and each office action)

16. Public Disclosure & IP Rights • In the U.S.A and Canada you have 1 year to file after making public disclosure (but best to file before!) • Foreign countries, you do not have any IP rights after any type of public disclosure.

17. What is Public Disclosure? • Enabling technology by: • Presentations • Publications • Private conversations/meetings without a confidentiality agreement in place • Marketing of product/process • College thesis available to public

18. Confidentiality Agreement • Confidentiality Agreement (CA) or sometimes called a Non-confidentiality Agreement (NCA) or Secrecy Agreement: • One and/or both parties agree to keep information secret for a given period, i.e., 3-5 years. • All confidential info should be labeled and conversations documented. • Serious legal matter, so do not take lightly!

19. Licensing Process to Outside Organizations • IP office will: • Evaluate technical aspect of the invention disclosure • Investigate former art • Contact appropriate companies • Draft licensing agreement • Rework licensing agreement until mutually acceptable.

20. Licensing Agreement • Legal terms of the contract • Up-front fees • Royalties • Sublicensing • Time to market/royalties • Business plan • Termination clauses

21. Summary • Evaluate your invention for usefulness/markets. • Fill out an invention disclosure form. • Work with your IP office and patent attorney, providing them with details and prior art info. • Realize the cost: • U.S.A. patent is $5k-$10k • PCT is $3k-$5k • Foreign filings are $500-$15k each • Total maintenance fees are approx. equal to the original patent cost.

22. Conclusions • Consider IP issues along with the invention/technology aspects, not as an after thought. • Keep good lab and notebook records. • Treat your organization’s IP rights and those of other organizations with caution and respect. • www.uspto.gov(see appendix for others).

23. Appendix