IP Commercialization Primer

Presented by:Dr. Jan Payne and Jaipreet Bindra

WORLDiscoveriesTM

ES 050 - Engineering DesignJanuary 22, 2010

Outline Introductions WORLDiscoveries Transfer of IP (Intellectual Property) from University Evaluation of Commercial Potential Importance of IP Types of IP Protection Concept of Inventorship A Few Tricks When to Contact Us Questions and Discussion

Introductions Dr. Jan Payne Jaipreet Bindra

Services provided by WORLDiscoveriesTM

Evaluate, provide legal protection and commercialize Western inventions

Provide advice on IP matters Negotiate legal agreements involving IP Start-up creation

WORLDiscoveries’ Objectives:

Help streamline technology transfer activities across institutions

How does a University transfer IP?

We give it away: Publications, Conferences, Posters…

We hire it out: Know how and skills (graduates,

co-op students) We commercialize it:

Copyright and license the technology (publications, software)

Patent and license it Get trademarks (cool new names:

DQE Instruments, Agri-Therm) Set up new companies (spinoffs) Register designs and license them

Evaluation of Commercial PotentialGood Science is only the beginning…

Commercial Viability? Market size (current and future) Competitive technologies How easy is it to make and use? How expensive is it to make? Is there a need for the invention

Patentability? Is it patentable? Is the invention reduced to practice? Is it novel? Prior disclosures? Major technological leap forward?

Importance of Protected IP

Provides rights to a limited monopoly Basis of competitive advantage Basis of new companies Basis of new products and increased profitability Benefits to society

Economic Development Job Creation Improved Health

Intellectual Property Protection

Patents Copyright Trademarks Trade Secrets

The “Oddballs”: Industrial Designs Integrated Circuit Topographies Plant Breeders’ Rights

Patent

Inventors reveal to public the best way to practise an invention through published patent

In return they receive an exclusive right of sale, use or manufacture, secured by statute

Can be a process, product, composition or apparatus e.g. Prozac, automobile airbag system, many wacky ideas…

Bird Diaper

US 5,934,226

...featuring an enclosed pouch... and apertures to accommodate both the wings and the tail of the bird…for use by a pet bird outside its cage to avoid fouling of the home.

Where to Search?

gb.espacenet.com *Europe’s comprehensive network of patent databases*

SciFinder Scholar *available via UWO libraries *

www.uspto.gov US Patent and Trademark Office

cipo.gc.ca Canadian Intellectual Property Office

Patentability Criteria

Novel

Inventive

(non-obvious)

Useful

Patenting around the World

Canada, US and Mexico Grace period of one year

before filing

Rest of the World Requirement for absolute novelty

Copyright

Right of an author to produce or reproduce their work in printed or electronic media

Computer software (i.e. notation of code) also protected by copyright

NOTE: Copyright protects the EXPRESSION of an idea, not the idea itself.

Trademarks

Mark used to distinguish the goods or services of one person or company from those of its competitors

example

Trade Secrets

Any information or method used in business - if it is not generally known to the public and precautions are taken to

keep it secret.

e.g. Methods for designing microprocessors –

Legal agreements are used to protect trade secrets, such as confidential disclosure agreements, employment agreements, etc.

DURATION:

1) Patent 20 years (from filing)

2) Trademark Renewed indefinitely

3) Copyright Lifetime + 50 years

4) Trade Secret Infinite

5) Industrial Design 10 years

Intellectual Property Protection

The Concept of InventorshipWill the Real Inventors Please Stand Up?

Inventorship is a legal matter A patent can be declared

invalid if not all inventors are included

Unlike authorship not all members of a research team are necessarily inventors

The only members qualifying as inventors are those who made an enabling contribution to the invention

1949 Inventors of point-contact and junction transistor

A Few Tricks Lab Books & Notebooks

Patent law: US – First to Invent Canada – First to File

Lab books: bound (not loose-leaf), and paginated Reflect the thought process Ideally they are accurate, up-to-date

Witnessed (understood) and signed The witness should NOT be a co-inventor

Never use “Obviously” ... Think ahead!

Please Come Talk to Us…

Before publishing (always feel free to call and ask) Conference abstracts, posters, journal articles, graduate

student theses

Before sharing the idea publicly Demonstrating it,

or telling everyone at the pub…

Before collaborating with industry

Discussion and Questions

More information at

www.worldiscoveries.ca