OTM INTRODUCTION AND IP PRIMER Patrick E. Reed, Director, Office of Technology Management

OTM INTRODUCTION AND IP PRIMER

Patrick E. Reed, Director, Office of Technology Management

• What is OTM?

• Bayh-Dole

• Intellectual Property

• Technology Transfer

AGENDA

• The Office of Technology Management is under the Vice Chancellor for Academic Affairs

• Responsible for managing the university’s intellectual property– Help translate university

research into products on the market

• Doubled the size of the office in February 2013!

• Open Door Policy

ABOUT US

BAYH-DOLE ACTPatent and Trademark Law Amendment Act, adopted in 1980 (codified in 35 USC § 200-212)

• Federal patent policies inconsistent and ineffective

• No uniform policy among agencies

• No statutory authority that gave agencies a right to hold patents or license technology

• Colleges and universities rarely given exclusive control except through lengthy greater rights determinations

• Result: inventions not commercialized

WHY BAYH-DOLE?

• Gives nonprofit organizations and small business firms rights to inventions under government grants, contracts, and cooperative agreements

• Promotes commercialization and public availability

• Encourages researchers to disclose inventions

• Encourages small businesses to participate in government supported research and development efforts

• Government is granted certain nonexclusive and march-in rights

WHAT DOES BAYH-DOLE DO?

• Prompt reporting of inventions to funding agency

• Grant the government their license

• Report on the utilization of the subject invention

• Make reasonable efforts to work with small business

• Insure substantial manufacture within the U.S.

INSTITUTIONAL OBLIGATIONS UNDER BAYH-DOLE

INTELLECTUAL PROPERTY

The DNA of technology transfer

• Patents

• Trademarks

• Copyrights

• Trade Secrets

TYPES OF INTELLECTUAL PROPERTY

• The legal right to exclude others from • making, • using, • selling,• offering to sell, or• importing, or offering to

import, a patented item • A patent does not grant an

affirmative right. Patent rights are exclusionary.

WHAT IS A PATENT

WHAT CAN BE PATENTED?

Any new and useful:• Process• Machine• Manufacture• Composition of matter• Any new and useful

improvement of the above

• Utility (aka usefulness)- 35 USC § 101

• Novelty- 35 USC § 102

• Non-obviousness- 35 USC § 103

• Disclosure

CONDITIONS OF PATENTABILITY

• Word, name, symbol, or device that identifies the source of goods or services

• Protects against likelihood of confusion

• Rights are based on use or registration

• State or federal registrations

TRADEMARKS

TRADEMARKS MUST BE DEFENDED

COPYRIGHT •Protects the expression of an idea, not the idea itself•Protects against copying, not against independent development of an identical work•Copyright protection occurs automatically once the original work is fixed in a tangible medium•Registration of the copyright is NOT required for protection (but it may be required to sue for infringement).

© 2013 Board of Supervisors of Louisiana State University and

Agricultural and Mechanical College through its

LSU Health Sciences Center New Orleans

ALL RIGHTS RESERVED

COPYRIGHT NOTICE

LET’S GET THIS OUT OF THE

WAY….

• LSU, if conceived or first reduced to practice, in whole or in part, during activities that are: • (1) carried on by, or under the

direction of, LSU personnel, regardless of when or where conception or reduction to practice occurs; or

• (2) supported by funds under the control of LSU; or

• (3) conceived, created, designed, developed, or conducted with the use of LSU facilities, equipment, or supplies.

Part II, Chapter VII of the Bylaws and Regulations of LSU

WHO OWNS INVENTIONS I CREATE?

• An invention or discovery that is wholly conceived and wholly first reduced to practice during activities that satisfy each of the following four conditions:• The activities occur during the

personal, off-duty time of all involved LSU personnel; and

• The activities are not supported by funds under the control of LSU; and

• The activities are not performed with the use of LSU facilities, equipment, or supplies; and

• The activities are unrelated to any current or past field or area of expertise, responsibility, or employment of any involved LSU personnel.

WHAT’S NOT AN “LSU INVENTION?”

SO, UNLESS YOU’RE A BIOCHEMIST AND YOU INVENT A MORE EFFICIENT ROCKING CHAIR ON A SATURDAY IN YOUR GARAGE, IT’S LIKELY AN LSU INVENTION

WHO OWNS COPYRIGHTED WORKS I CREATE?

• LSU, but….• LSU releases its interest in any

copyright to a book, article, lecture, thesis, dissertation, other literary work, work of art, Course Material, or musical composition

• UNLESS:• LSU must contractually

deliver such work to a third party

• LSU publishes the work itself

• No automatic release for Software or Databases

• Defined as, “all LSU Supervisors, Officers, Faculty, Staff, Research Associates, Postdoctoral Fellows, Instructors, Graduate Students, and other employees of LSU, whether part-time or full-time.”

• Includes:• Visiting faculty• Adjunct faculty• Emeritus faculty• LSU undergraduate and

professional students employed by LSU when those persons act within the course and scope of their employment with LSU

“LSU PERSONNEL”

The sooner the better!

As soon as you recognize that you have something that might be useful to others and could be turned into a commercial product or service, you should contact the Office of Technology Management. It’s important to do so before you publicly disclose the invention.

WHEN SHOULD I TELL YOU ABOUT MY IDEA?

• Written publications: manuscript, book chapter, journal article, proceedings, thesis, white paper

• Oral presentations• Prototypes and samples• Sale or public use  • Meetings and other

communications such as email or postings on websites

WHAT IS A PUBLIC DISCLOSURE?

The more detailed the better!

• Inventor details• Description of the technology• History of your development of the

technology• Sponsorship

www.lsuhsc.edu/administration/academic/otm/Forms.aspx

• NOTE: A Technology Disclosure Form does not protect the invention; it is simply a record of your invention.

DISCLOSURE FORM

TECHNOLOGY TRANSFERFrom the bench to the bedside…

HOW IS TECHNOLOGY TRANSFERRED?

• Research- publications, reports, presentations, dissertations, etc.

• Students• Continuing education and

professional development• Consulting, service on

government panels• Licensing

WHAT IS THE TECHNOLOGY REVIEW PROCESS?

Review for

public disclosu

re

Review sponsor

ship

Perform prior art search

Perform market assessment

Determine best route to commercializati

on

License

Ensure public benefit from LSU Health Sciences Center

research

Provide inventor satisfaction and motivation

Meet LSU Health Sciences Center’s obligations to

sponsors and compliance with Intellectual Property Policy

Generate revenue to support research and research

infrastructure

LICENSING:WHY DO WE DO IT?

• Grant of rights to a company allowing them to make, use, and sell the licensed technology– Exclusive vs. nonexclusive– Startup vs. BigCo– Diligence provisions:

• Performance milestones and financial requirements to insure licensee does not shelve the technology

LICENSING

Most licenses will

include:

WHAT ARE THE FINANCIAL TERMS?

• 40% to the inventors– Personal income, not

research dollars

• 15% to the inventors’ departments

• 10% to the Office of the President

• 35% to the Chancellor’s Office– To be funneled back into the

research enterprise

ROYALTY DISTRIBUTION

QUESTIONS?

Patrick E. Reed, DirectorOffice of Technology Management433 Bolivar St., Suite 827504-568-3619preed3@lsuhsc.eduhttp://www.lsuhsc.edu/administration/otm/