Intellectual Asset Management
February 17, 2015
Maria Emanuel, Ph.D. – Associate Director UNHInnovation
Agenda
- UNHInnovation
- Intellectual Assets/IP Rights
- Patents
- Trademarks
- Copyrights and Copyright Licenses
- Intellectual Asset Management
- Lifecycle of a (Research) Relationship
- Collaborative Efforts with SPA and BSCs
- Potential Red Flags
Evolution of UNHInnovation
Intellectual Assets
What are Intellectual Assets?
- Intellectul Property (IP): Intangible products of creative effort, e.g. technical information, inventions, software, databases, designs, models, methods, literary works, data. Like tangible real or personal property, IP may be bought, sold, or leased.
- Intellectual Property Rights (IPR): Legal protections for different forms of IP, e.g. patents, copyright, database rights, design rights, trademarks
- Know-How: expertise in knowing how to make things work effective
- Collectively: Intellectual Assets
Intellectual Property Rights:
Patents
Patents
- Often considered a contract between government and an inventor
- A limited and temporary monopoly granted by the government in return for a full disclosure by the inventor of the details of their invention
- Specifically, rights to exclude others from making, using, selling, offering to sell or importing the patented invention (35 USC 271)
- Criteria for patent protection:
- Novel
- Non-obviousness
- Useful
What May Be Patented?
Utility Patent
- Any new and useful process, machine, manufacture, or composition of matter, and new and useful improvements (35 USC 101)
Plant Patent
- Any new and distinct, invented or discovered asexually reproduced plants (35 USC 161)
Design Patent
- Any new, original, and ornamental design for an article of manufacture (35 USC 171)
FY2014 US Issued Patents
*NHIRC project with Presstek
# Federal funding via NSF grant for Center for High-Rate Nanomanufacturing
^ Federal funding via DTRA SBIR contract
Patent Process
- At UNH:
- Provisional Patent Application (PPA)
- Optional
- Holds priority date for 1 year
- Not examined by USPTO
- Useful if public disclosure is to occur soon (retain ww rights)
Patent Process (cont)
- Nonprovisional (utility) Patent Application
- Must be filed within 1 year of PPA
- Reviewed by USPTO
- Application published 18 months after filing (includes PPA filing date)
- Cannot be filed if invention has been sold or offered for sale
- International (PCT) – foreign patent protection
Bars to Obtaining Patents
- Enabling public disclosure
- US is first to file (since March 16, 2013/AIA)
- Statutory bars
- On sale bar (includes “offer for sale”)
- Publications – includes inventor’s own articles
- Public use/disclosure
- Documentation
- Lab notebooks vs. Napkins
- Invention disclosure forms
Why Patent?
- Right to exclude others from making, using selling, offering for sale, or importing the patented invention for the term of the patent
- From a patent holder’s perspective:
- Protection of innovation
- Freedom to operate
- But:
- No guaranteed right to practice invention
- Idea can be patentable but dominated by other patents
Patent Considerations
- Patent applications are expensive and can take 3-4 years before granted/rejected by the USPTO
- Full disclosure of your invention
- Sidebar about trade secrets:
- Formulas, processes, and other information that derive economic value from not being generally known AND the owner has attempted to keep the information secret through various mechanisms (including confidentiality provisions, non-competes, processes, systems)
- If you need = 20 years of protection, patents probably aren’t the answer!
- UNH does not accept trade secrets
- Invention usability may become limited to a larger audience
Intellectual Property Rights:
Trademarks
Trademarks
A word, name, symbol or device which is used in trade with goods and services that distinguishes the goods and services from others
- Letter combinations - ABC, CBS, NBC
- Alphanumeric combinations - V-8, 7-ELEVEN
Slogans – “Intel Inside”
Images
- Colors
- Pink (Owens Corning insulation)
Purple (AstraZeneca’s Nexium for heartburn)
- Musical Notes - NBC chimes
Trademarks
- Trademark rights may be used to prevent others from using a similar mark, but not to prevent others from making the same goods or offering the same services
- ™ or ℠ used when organization regards name or slogan to be their trademark or service mark
- ® used when trademark or service mark is registered by USPTO
Functions of a Trademark
- Indicates the source of origin of goods or services
- Helps guarantee the quality of goods bearing the mark
- Creates and maintains a demand for the product
- Can be used as a marketing tool to build a brand
- Can have great financial value
Know Your Power vs. Know Your IX
- Know Your Power®
- Promotional services, namely, providing social marketing campaigns to teach that everyone in the community has a role to play in ending sexual assault, relationship violence and stalking
- Know Your IX
- Empowering students to stop sexual violence
- [Know Your IX is not associated with the Know Your Power Program®. You can find the Know Your Power Bystander® Social Marketing Campaign at …]
Intellectual Property Rights:
Copyrights
Copyrights
- Copyright protection covers published and unpublished literary, scientific and artistic works, whatever the form of expression, provided such works are fixed in a tangible or material form.
- Copyright is a bundle of rights:
- Reproduce work
- Publish / distribute work
- Adapt work / create derivative works
- Perform / display work
- Sell or assign copyrights to others
- One can license these rights to others: some, all, none
What may be copyright protected?
Copyrights
- Original works of authorship
- literary works
- sound and video recordings
- audiovisual works
- building designs
- pictorial, graphic and sculptural works etc.
- Examples
- software
- curriculum, guides, evaluation forms
- graphically displayed scientific results
UNH Copyrights (Non-Software)
UNH Copyrights (Software)
Copyright Ownership
- Vests in the author the moment the work is fixed in a tangible medium of expression
- Vests in employer if work created by employee within scope of employment
- Work-for-hire
- Exempted Scholarly Works
- Can be governed by agreement
- Note: Works created by an officer or employee of the United States Government, acting within the scope of his or her official duties are not copyright protected.
Registration and Notice Requirements
- Registration is not required but is a requirement to file a copyright infringement suit
- Copyright notice is recommended:
- Informs the public that a work is protected by copyright
- Prevents an infringer from using the innocent infringer defense
Copyright Notice
© 2015 University of New Hampshire.
or
Copyright 2015 University of New Hampshire.
Copyright and Patent Differences
Copyright Considerations
- “I found the text on the Internet, so I can just copy it.”
- Depends, only if the information is in the Public Domain
- “I copied this graph from a journal article and don’t need to seek permission because I’m using the information for an educational seminar.”
- Depends, if use of the graph can be defended under Fair Use
- “I web-posted my students’ portfolios from last year as an example for this semester. I don’t need their permission because this was work created for my course.”
- Each student owns the copyright for any work that they created; in this example, the instructor needs to seek permission from each student in order to continue to use their work
Intellectual Property Rights:
Copyright Licenses
Mobile Apps
- License is based on platform used for app
- Consideration – include funding for mobile app development in grant proposal
Copyright Licenses
|
Creative Commons
- Not recommended for software
- Free (no license fees, no royalties)
- http:/creativecommons.org/
- Downstream considerations
- Generally, 6 license types, with a number of different iterations (most current is 4.0)
- License terms may cover: attribution, derivative works, financial gain, carry-forward terms
|
Open Source
- Intended for software
- Generally free, no royalties, but you need to read the fine print
- www.opensource.org
- Downstream considerations
- Hundreds of open source licenses
- License terms may cover: attribution, derivative works, financial gains, carry-forward terms
|
Intellectual Asset Management
Deriving maximum benefit from the knowledge that we create
Universities and IAM
- Vitamin D
- Wisconsin Alumni Research Foundation (WARF)
- Dr. Harry Steenbock, 1923
- 2008: WARF has a nearly $2B endowment; contributes over $30M annually to UW-Madison to further research; 70% of income comes from Vitamin D
UNH and IAM
- Background: Bayh-Dole Act
- The Bayh-Dole Act was passed in 1980. The purpose of the policy is to encourage utilization of inventions produced under federal funding to stimulate the U.S. economy
- The policy permits universities (all non-profits) and small businesses to elect to retain title to inventions made in performance of the federally funded program.
UNH and IAM (cont)
- UNHInnovation (UNHI)
- Building public-private partnerships that result in research investments and technology-based economic development
- Assure Bayh-Dole compliance
- Identify, evaluate, protect, and license University-developed innovations
- Develop and manage non-disclosure/confidentiality agreements, material transfer agreements, IP-related terms and conditions of sponsored research agreements, and license agreements
- Support spin-out companies for the commercialization of University-developed innovations
UNH IP Policy
- Intellectual Property Ownership (Sections 6-8):
- A Covered Individual shall own all IP discovered, created, or developed by the individual unless:
- IP discovered, etc. while conducting University duties for which the individual is employed (receives salary, wages, stipend, or grant funds)
- IP resulted from an individual making Use of University Resources beyond what is available to the non-University community
- Legal obligation otherwise restricts IP ownership (e.g. Sponsored Research Agreement, NDA, MTA)
- You own the copyright in exempted scholarly works, although the University has a royalty-free license to use it as well.
UNH IP Policy
- Acknowledgement of Intellectual Property Policy and Assignment
- Required under the Bayh-Dole Act for federally-funded projects
- Part of UNH IP Policy
- Net Income Received from IP is distributed as:
- 30% Innovator(s)/author(s)/developer(s)
- 30% Innovator’s department/college
- 30% Office of the Senior Vice Provost for Research
- 10% UNHI
- http://www.usnh.edu/olpm/UNH/VIII.Res/D.htm
Royalty Distribution: Process
- Royalties from a new Intellectual Asset
- Contact UNHI BSC to set up new distribution, determine POC for college/institute of innovator(s)
- From College POC: FOPAL information to route their portion of royalty
- Follow IP policy unless pre-approved exception
- Innovators receive automated notifications of royalty distribution (via direct pay)
- College’s BSC must approve the deposit
- Annual reporting to USNH Financial Services, summarizing royalty distributions to innovators for tax purposes
- UNHI/Paige: first POC for any questions related to royalty distributions, including inquiries from innovators
UNH and IAM
- IP asset management (IAM) supports UNH’s mission: education, research, and outreach
- It is not in the University’s best interest to give away its intellectual assets
- Demonstration of outcomes to sponsors
- Relationships with external partners
- Ways to protect institutional IP
- UNH IP Policy and rights of faculty, staff, and students
- Proposals, Grants, CRADAs, MTAs, NDAs/CDAs, License Agreements, End User Agreements seek to protect IP assets and rights of innovators
A Continuum of Options
- There are a continuum of commercialization options
- Open Source/Creative Commons
- Copyright/trademark licenses
- Patentable innovations that are not patent protected
- Patented innovations
A Continuum of Options (cont)
- UNH Examples:
- Polyfrag software (Meghan MacLean)
- Plant varieties developed by Brent Loy
- Itaconic acid polymerization (Itaconix/Yvon Durant)
- InterOperability Lab (IOL) Test Tools
- Royalties Since 2012: $168K
- Drive Consortia Memberships
- Beta versions to develop more robust tool
Lifecycle of a (Research) Relationship
Structuring a Research Relationships
- Life-cycle of a research relationship
- Exploring a Relationship
- Funding Research & Creating Intellectual Property
- Intellectual Property Commercialization
- Outcomes
Exploring a Relationship: NDAs
- Non-Disclosure Agreements (NDAs):
- Aka Confidential Disclosure Agreement (CDAs) aka Confidentiality Agreements
- Interest in sharing confidential, proprietary, unpublished information with another party
- Information disclosure for evaluation of technical feasibility, novelty, and potential commercial value
- Protects non-public business information
- Allows the parties to have detailed conversations, evaluate technology, explore a potential relationship
- POCs: UNHI (stand-alone); SPA (part of grant/contract)
Exploring a Relationship: MTAs
- Material Transfer Agreements (MTAs):
- Governs the use of loaned material
- Examples: Antibodies, cell lines, plant varieties, software, integrated circuit designs, other unique materials
- Defines and protects rights to:
- Ownership of source material
- Improvements
- Inventions
- Patents
- Commercialization
- Ensures acknowledgment of providing source
- Loaned material for teaching, research, and evaluation only
- POC: UNHI (and EHS)
Funding Research & Creating IP
- Grants, contracts, and agreements to manage sponsored research
- Numerous opportunities for universities and industry to partner
- NSF GOALI awards
- Federal SBIR/STTR awards and contracts
- NHIRC grant program
- SPA has a standard research agreement template and industry guide for industry partners, including IP terms
Funding Research & Creating IP
- Proposals and Agreements need to address intellectual property
- IP included in proposal
- IP created during project
- Balance need for industrial support to conduct research with the need to protect innovator’s and the university's intellectual property
- Important not to violate the Bayh-Dole Act by assigning innovations partially developed with federal support to a private party
- Private sponsors usually receive options to resulting innovations and a time limit is specified during which a company may exercise its option
- POCs: SPA; UNHI for IP discussion
Commercializing Intellectual Property
- Types of Agreements
- Option Agreements
- License Agreements
- Inter-institutional Agreements
- Trial Agreements
- Assure that technology will be brought to the marketplace to benefit the public
- What is being licensed?
- IP Rights: includes patents, trademarks, and copyrights
- Can also license tangible property
- POC: UNHI
Commercializing IP: License Agreements
- Define IP
- Consideration
- Term
- Field of Use
- Patent Expenses
- Right to Sublicense
|
- Due diligence (financial and performance)
- Termination rights
- Publication clause
- Indemnity and Insurance
- Bayh-Dole obligations
|
Structuring Research Relationships
- Considerations throughout the various stages of the relationship, regardless of the agreement:
- Expectations of each party
- Publications
- Ownership of research results
- Rights of each party to pursue related future research and funding opportunities
Potential Red Flags
IP Terms and Agreements
- IP terms in agreements not managed by UNHI
- Sponsored Programs Administration
- Independent Contractor Agreements
- Purchasing
- Case study: SAS-IHPP
- 3x SAS Agreements: MLA, Services Agreement, Software Agreement
- IHPP, Purchasing, UNHI
- We include license terms in a sponsored research agreement
- Numerous UNH departments can have institution-level agreements with a company; important to have defined scope of agreement
- Red flag: Agreements that include terms of superseding all other agreements
When to Contact UNHI
- Agreements with terms for UNH-generated IP
- License/royalty payments deriving from UNH IP
- Invoices involving license arrangements for UNH IP
- Agreements referencing UNH IP
- Shipping/receiving biological specimens under contractual terms (not from a catalog or commercial vendor)
IP Resources
Other Resources (cont)
- The Association of American Universities, the Association of Research Libraries, the Association of American University Presses, and the Association of American Publishers: Campus Copyright Rights and Responsibilities: A Basic Guide to Policy Considerations
Contact UNHInnovation
|
Gregg Hall
35 Colovos Road
Durham, NH 03824
603-862-4125
innovation.unh.edu
unh.innovation@unh.edu@UNHInnovation
|
- Marc Sedam, Managing Director
- Maria Emanuel, Ph.D., Associate Director
- Timothy Willis, Licensing Manager
- Chelsey DiGiuseppe, Marketing Manager
- Paige Smith, Business Manager
- Annie Schofield, Program Support Assistant
- Andrew Schmid, UNH Law Intern
- Mike Leriche, UNH Justice Studies Intern
|
