Post on 21-Dec-2015
Intellectual Property Basics at WPI: Inventions and Patents Workshop
Mike ManningWPI Director of Technology Transfer
Attys. Jesse Erlich and Janine Susan, Ph.D.Burns & Levinson, LLP
March 27, 2007
2
OutlineOutline WPI Tech Transfer Office
– Invention Disclosure Process– Non-Disclosure Agreements– WPI IP Policy
Burns & Levinson, LLP– Patents– Trade Secrets– Copyrights– Focus area: Chemical & Biotech
http://www.wpi.edu/Academics/Depts/MGT/CEI/Programs/Workshops/20070327.html
3
TTO Mission TTO Mission
To support the commercial development of innovation from within the WPI community for the benefit of WPI inventors, the university, and the
region.
4
TTO Objective: CommercializationTTO Objective: Commercialization
www.educause.edu
Protect IP with commercial potential
Transfer to capable, motivated partners
Provide follow-on support & resources
5
PatentsPatents
Utility, Design, Plant Confer rights to owner Prevent competitors from profiting from
the invention defined by the patent claims
Rights can be enforced in court
7
You May Have an Invention – What Next?You May Have an Invention – What Next?
Contact TTO early re: disclosure matters Identify & document invention – identify
inventive activity and keep good records: – Lab notebooks– Working notes, sketches, drawings– Draft publications– Date, sign, & witness lab records as feasible
Review technical, product, and patent literature (“prior art” awareness) regularly
8
Basics About DisclosingBasics About Disclosing
Disclosure: enabling details of the invention sufficient to reproduce invention with ordinary skill in the art without additional inventive activity or extensive experiment.
9
Basics About DisclosingBasics About Disclosing
Public, Private, & Institutional Disclosures– Public: publications, presentations, media
interviews, posters, internet, etc. - publicly accessible record
– Private: restricted access discussions, meetings, etc.
– Institutional: formal university document with sign-offs, etc. compliant with federal req’ts.
10
Concerns About Disclosing Concerns About Disclosing
US priority based on “First to Invent”; Foreign based on “First to File” disclosure
Public disclosure impacts IP rights:– Max. 1 year to file US patent application– Loss of foreign rights in general
Private Disclosure esp. to technically skilled individuals requires discretion to avoid co-invention or separate invention of improvements
11
Requirements to DiscloseRequirements to Disclose
If inventions are conceived or reduced to practice on a federally-supported research program, 37CFR401.14 (Bayh-Dole) applies:
– Timely Formal Disclosure to university TTO– Report by TTO per federal sponsor guidelines
(default: forwarding of Formal Disclosure to agency within 2 mos. of receipt by TTO)
– University agreements with inventors to disclose assign federally-sponsored inventions to university
12
Requirements to DiscloseRequirements to Disclose
Corporate-sponsored project or program or other non-federal external sponsorship probably requires invention notification and other IP provisions.
WPI IP Policy conditions apply to internal support of any kind at WPI – reasonable diligence on disclosing req’d.
13
Institutional Disclosure Process Institutional Disclosure Process WPI Invention Disclosure Procedure
– http://www.wpi.edu/Admin/Research/Sponsored/Handbook/invention.html
Don’t publish or present invention details until:– Discussion with WPI IP Office of prospective
invention disclosure
Research, prepare, & submit a WPI Disclosure Form if indicated
– N.B.: FILING WPI DISCLOSURE FORM DOES NOT PROTECT INVENTION - PTO APPLICATION FILING IS NECESSARY.
14
Confidentiality Agreements, etc.Confidentiality Agreements, etc.
Confidentiality Agreements (“CAs”) and Non-Disclosure Agreements (“NDAs”) are means to discuss enabling details while preserving IP rights
Negotiated, signed, and held by authorized university personnel (ORA, TTO, etc.) in coordination with PIs.
15
Confidentiality Agreements, etc.Confidentiality Agreements, etc.
Caution: protection of IP rights under CAs and NDAs relies on compliance of signatories – if violated and public disclosure occurs, IP rights may be lost and sole recourse is to sue violator
TAKE CARE in entering CA/NDAs and limit enabling details as feasible.
16
Invention Disclosure FormInvention Disclosure Form
Fill it out Get required signatures Return to Director of Technology Transfer
www.wpi.edu/Admin/Research/Sponsored/Forms/
17
Prior Art SearchPrior Art Search
Primary search by technically cognizant inventor is essential – active researchers, related patents, applications, key words, etc.
– Textbooks– Journals– Technical magazines– Manufacturers’ catalogs– Patents - www.uspto.gov
Gordon Library Reference Resources
18
Post-WPI Disclosure Form SubmissionPost-WPI Disclosure Form Submission
Evaluation of Disclosure Form information (e.g. complementary search, market assessment, etc.) for patentability, commercial potential, and WPI “fit”
– WPI owns:• We will designate a patent attorney• You will need to work with that attorney
– You own: • We will sign a letter relinquishing any WPI claims• You work with your patent attorney
Patent application is prosecuted Patent Issues
19
Patent Protection ProcessPatent Protection Process
Application Options
– Provisional (USPTO, $4K) - not examined unless later dispute arises, establishes first to invent priority, 1 year to file utility
– Utility (USPTO, $12K; Int’l/PCT $4K) – full filing for examination
20
Post-Application Disclosure Post-Application Disclosure 18 months from priority date patent offices will
publish original utility application, provide status information, and access to other case documents
Prior to publication disclosure of invention details described within filed provisional or utility applications is protected, HOWEVER
Exercise caution in post application technical discussions – improvements and developments to invention not specified in applications are not protected.
21
Intellectual Property PolicyIntellectual Property Policy
Inventions Ownership Royalty division Copyrights/mask rights/service and
trademarks Appeals Students, faculty, staff
www.wpi.edu/Pubs/Policies/intell.html
22
Inventor CategoriesInventor Categories
- All persons performing research or scholarship at WPI, utilizing WPI resources/facilities, or deriving funds from WPI are either students or faculty/staff
- - RAs are considered faculty/staff- - TAs are considered students
23
Inventor OwnershipInventor Ownership
Faculty/Staff
- Own time, facilities, and resources
- Not within stated objectives of current sponsored research, PLAN projects, thesis or dissertation research
24
WPI OwnershipWPI OwnershipFaculty/Staff Rules
- Within stated objectives of current sponsored research, PLAN projects, thesis, or dissertation research, OR
- Significant use of WPI facilities and resources (i.e. appreciable expenditure of WPI funds), OR
- Faculty/staff while in role of student (project, thesis, directed study or research, course work)
25
Royalty Rule IRoyalty Rule I
If WPI pursues the patent, then WPI will absorb the costs and will share royalties on a 50-50 basis with the inventor(s), after the costs of the patent are recovered, or will share royalties in accordance with WPI institutional agreements.
26
Royalty Rule IIRoyalty Rule II
If the student(s) wish to pursue the patent, WPI will assign any ownership rights it may have to the student through a jointly signed agreement providing that the student will give 10 percent of net future financial gains from the patent to WPI. The student will absorb the costs of pursuing the patent. Alternatively, if the student wishes to have WPI absorb the costs of pursuing the patent, then Rule I applies.
27
Royalty Rule IIIRoyalty Rule III
The inventor(s) will pay all costs associated with patenting the invention, and will receive all benefits from the patent.
28
Multiple Inventors: Rules PrecedenceMultiple Inventors: Rules Precedence
- Rule I takes precedence over Rules II and III
- Rule II takes precedence over Rule III
29
Student Rule 1Student Rule 1
For an invention made by students, on their own time, with their own facilities and resources, and in research/projects not within the stated objectives of their current sponsored research, PLAN projects, or thesis or dissertation research, the invention is owned by the inventor(s). Royalties for such inventions are covered by Rule III.
30
Student Rule 2Student Rule 2
For an invention made by students while employed on a sponsored project (research or educational), including off-campus PLAN projects, the invention is owned by WPI, subject to any other agreements. Royalties for such inventions are covered by Rule I.
31
Student Rule 3Student Rule 3
For an invention made by a student as a part of any project or sufficiency report, thesis, dissertation, course work, directed study, directed research, or examination, the invention is owned by WPI, subject to any other agreements. Royalties for such inventions are covered by Rule II.
32
Student Rule 4Student Rule 4
For an invention made by students without significant use of WPI resources, the invention is owned by the inventor(s). Royalties for such inventions are covered by Rule III.
33
Student Rule 5Student Rule 5
For an invention made by students with significant use of WPI resources, the invention is owned by WPI, subject to any other agreements. Royalties for such inventions are covered by Rule II.
34
Copyright Ownership RightsCopyright Ownership Rights
WPI Ownership- - Official university matters: faculty
committee output, specifically requested output with additional compensation, staff output within specified job description are all considered “works for hire”
- Authorial Ownership- - all other items of expression