Intellectual Property - University of Kentucky

Intellectual Property - University of Kentucky

Intellectual Property Natasha Jones, MS, JD, MSLS Licensing Associate UK Intellectual Property Development Office ASTeCC A144 (in the engineering quad...

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Intellectual Property Natasha Jones, MS, JD, MSLS Licensing Associate UK Intellectual Property Development Office ASTeCC A144 (in the engineering quad) 218-6554 [email protected]

What is intellectual p property p y ((IP)? ) UK Administrative Regulation 7:6 defines intellectual property (IP) as the “tangible tangible or intangible results of research, development, p , teaching, g, or other intellectual activity.” In other words, IP is any innovation or discovery conceived or developed by faculty, staff, t ff or students t d t using i university i it resources.

IP at UK UK owns any innovation or discovery conceived or developed by faculty, staff, or students using UK resources. “Use • • • • • •

of UK resources” is broad employee time student time equipment supplies facilities clinical practice

Benefit to inventor: this allows UK to protect your rights to use the IP, and you can continue to build on your research

IP at UK UK does not claim any ownership rights in “traditional products of scholarly activity, activity ” such as • journal articles • textbooks • reviews i • works of art including musical compositions • traditional course materials UK considers these items the unrestricted property of the author or originator. originator

Types yp of IP  Trademark

federal & state law

C Copyright py g

federal law

 Trade Secret

primarily state law

 Patent

federal law

Trademark words, names, phrases, symbols, and/or designs that distinguish goods and services from those manufactured or sold by others Term: can be renewed forever as long as it is being used in commerce

Trademark markings g xxx®

registered trademark

goods & services

advantages of federal registration • a notice to the public of the registrant's claim of ownership of the mark, mark • a legal presumption of ownership nationwide, and • the exclusive right g to use the mark on or in connection with the goods or services set forth in the registration xxxTM xxxSM

unregistered trademark unregistered servicemark

goods services

Copyright py g protects original works of authorship that have been fixed in a tangible medium 1. 2. 3. 4 4. 5. 6. 7. 8.

Literary works Musical works & accompanying music Dramatic works & accompanying music Pantomimes and choreographic works Pictorial, graphic, and sculptural works Motion pictures and other audiovisual works Sound recordings Architectural works

Copyright py g Exclusive rights: • reproduce it • prepare derivative works from it • distribute it • perform it • display it rights exist at the moment of creation Term:

life of author + 70 years

ii.e., only l th the copyright owner has the right g to do these things with the work

Copyright py g Notice Puts others on notice that the owner asserts copyright p protection Encouraged, but not required to claim protection If a traditional scholarly work Otherwise

© 2014 (name of author) © 2014 University of Kentucky

Additional information identifying the unit or how to contact the author may also be included immediately below the copyright notice.

Trade Secret information that companies keep secret to give them an advantage over their competitors As the name implies, there can be no public disclosures.


KFC’s 11 herbs & spices formula Coca-Cola’s formula


indefinite (as long as you can keep it secret)

Types yp of Patents 1. Utility 2. Plant 3. Design

Utilityy Patent a property right granted by the federal government to an inventor to exclude others from • making, • using, • offering g for sale,, or • selling the invention throughout the U.S. • or importing the invention into the U.S.

this does not give you the right to do these things yourself lf

in exchange for public disclosure of the invention when the patent is granted Term:

20 years from the date the patent application was filed

Utilityy Patent: Patentabilityy Criteria Your invention or discovery must fall into one of these categories: A. Process OR anyy new and useful B Machine B. improvement on one those C. Manufacture 4 categories D. Composition of matter AND must have all 3 of these characteristics 1. New / novel — not patentable if each and every element of the invention was previously known 2. Useful — has some real world purpose 3. Non-obvious ▫ at the time the invention was made AND ▫ to a person having “ordinary skill in the art”

Utility Patent: Disclosure Requirement Written Description •

Sufficient description to inform a skilled artisan that the applicant was in possession of the claimed invention as a whole at the time the application was filed Example: Discovery of a new target in a biochemical pathway; contemplate p method for treating g disease byy inhibiting g activity; y; no example of inhibitors

Enablement • •

Sufficient description to inform a skilled artisan how to make and use the claimed invention without undue experimentation Example: Discovery of a compound having anti-cancer activity for one type of cancer; contemplate class of compounds for treating cancer

The New First-to-File Rule Leahy-Smith America Invents Act (AIA) Rewards the first inventor to file a patent application with the USPTO • same rule as the rest of the world • note: you still have to be an inventor to be granted the patent The old law was a first-to-invent rule

Preserving g Patent Rights g What actions can limit or destroy the ability to obtain patent protection? • public use • public sale • offer for sale • publication

Publication = Publicallyy Accessible factors • length of time the information was exhibited • expertise of the target audience • existence of reasonable expectation that the information would not be copied p • simplicity or ease with which the information displayed could have been copied

Examples p of Publications • journal articles • grants or studies made publicly available • dissertation/thesis catalogued in a university library or available online • public dissertation/thesis defense • poster presentation • oral presentation • pretty tt much h anything thi putt on th the web b exceptt where password protected So let our office know if you have a publication coming up for an invention you disclosed to us!

Plant Patents for the invention or discovery and asexual reproduction of a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state right to exclude others from asexually reproducing, selling, or using the plant so reproduced limited to a plant in its ordinary meaning: • A living plant organism which expresses a set of characteristics determined by its single, genetic makeup or genotype, which can be duplicated through asexual reproduction, but which can not otherwise be "made" or "manufactured.“ cludes spo sports, ts, mutants, uta ts, hybrids, yb ds, a and d ttransformed a s o ed pla plants ts • includes ▫ ▫ ▫

• Term:

Sports or mutants may be spontaneous or induced. Hybrids may be natural, from a planned breeding program, or somatic in source. While natural plant mutants might have naturally occurred, they must have been discovered in a cultivated area.

Algae and macro fungi are regarded as plants, but bacteria are not. 20 years from the date of filing the application

Plant Variety Protection Act of 1970 (PVPA) applies to sexually reproduced or tuber propagated plant varieties certificate gives you the right to exclude others from selling, selling offering for sale sale, reproducing, importing, exporting, or using it in producing a hybrid or different variety 1.

2. 3. 4.

new — has not been sold or otherwise disposed of for purposes of exploitation for more than 1 year in the US or more than 4 years abroad (or 6 years in the case of a tree or vine) distinct — clearly distinguishable from any other publicly known variety; based on p g p physiological, y g or other characteristics one or more identifiable morphological, uniform — any variations are describable, predictable, and commercially acceptable stable — the variety, when reproduced, will remain unchanged with regard to its essential and distinctive characteristics within a reasonable degree of commercial reliability


20 years from the certificate's date of issue (25 years for trees & vines)

How can I p protect myy IP? First, document your research findings. • be consistent in recording work • paper notebooks ▫

bound numbered pages bound, pages, dated dated, signed

• electronic notebooks are fine if they are permanent ((i.e.,, cannot be readilyy altered)) p Second, notifyy UK about the existence of yyour invention. •

UK’s IP Protection Process invention or innovation complete disclosure form 1‐2 weeks


IPDO Director determines if a  commercialization assessment is  needed

structured interview 2‐4 weeks

commercialization assessment  report is prepared

no IPC Chair schedules IPC meeting date and time

IPC meeting IPC meeting Inventors are not required  to attend but may do so

inventor should inventor should  conduct additional  research 

UK pursues the UK pursues the  appropriate protection for  the invention continued on next slide

invention is released to  invention is released to the inventor*

2 weeks for notification  by campus mail

* release must be in accordance  with the terms of  the applicable grant or funding agreement

UK’s IP Protection Process (cont’d) UK pursues the  appropriate protection for  the invention

copyright, trade secret,  other protection within 1 year

provisional application

within 1 year

full patent application

patent prosecution IPDO, inventor, and patent attorney communicate  with US Patent & Trademark Office patent issues patent issues

approx. 3 months and  $1000 (paid by UK)

patentability opinion

positive  opinion

negative opinion invention is released to  the inventor*

managed  by IPDO

approx. 3‐5 years and  $25,000 (paid by UK)

application is abandoned application is abandoned

* release must be in accordance  with the terms of  the applicable grant or funding agreement

What can be done with IP? Patents, copyrights, trademarks, and trade secrets can be licensed • our office negotiates terms terms of license agreement • term of agreement (years) • field of use • geographic area of use • exclusive or non-exclusive • sublicenseable or non-sublicenseable • commercialization milestones • reporting requirements • financial ▫ ▫ ▫ ▫

up-front license fee milestone payments based on product development royalty payments based on sales pay for patent expenses

Royalties y licensee to use the technology royalties (licensor)



(li (licensee) )

royalties 40% to 20% to 20% to 20% to

inventor inventor’s department inventor’s college University of Kentucky Research Foundation (UKRF)



MTAs & CDAs Material Transfer Agreement • use when sending or receiving research materials Confidential Disclosure Agreement • use when confidential/proprietary information will be shared h d with i h or b by another h party ((school, h l company, individual, etc.) • a.k.a. nondisclosure agreement and secrecy agreement Authorized signatory: Director of IP Development NOT faculty, staff or students Contact: [email protected]; 218-6554

http://www research uky edu/IP