2 mark and susan ip checklist

LAB TO LAUNCH: “IP CHECKLIST”

Mark Nuell and Susan Gorman

Lab to Launch – San Diego

© 2012 Birch, Stewart, Kolasch & Birch, LLP

Type of Protection

Utility Patent Design Patent

Copyright Trademark – Service Mark

What is Protected?

The device, process steps, machine, article of manufacture, or composition of matter

Ornamental designs

Literary, musical, dramatic, artistic, photographic, architectural or other intellectual works

Words, names, symbols or devices that serve to identify the source of a product or service

Standard for Protection

Novel and non-obvious

Novel and non-obvious

Originality Useful to identify and distinguish goods or service

Term of Protection 20 years from filing application

14 Years from grant

Life of author plus 50 years

Common law use: as long as mark is properly used; Fed. Registration: 20 years, but also renewable for 20-year periods

Useful internet links

www.uspto.govwww.ipo.orgsearch“depatisnet”

www.uspto.govwww.ipo.org

www. copyright.gov

www.uspto.govwww.inta.org

KINDS OF INTELLECTUAL PROPERTY


http://www.uspto.gov/

http://www.ipo.org/





• A Patent right is defined by its claims.

• A Patent is a “deed” to an invention.

• A Patent claim is a property right and thus is a right to exclude others from practicing the invention.

Some Important Ideas:


Patent Claims The “Claims” of

a patent define the scope of the invention. In the U.S., peripheral claiming is used. That is, the claim language defines the “edge” of the property right.© 2012 Birch, Stewart, Kolasch &

Birch, LLP Lab to Launch – San Diego


35 USC § 101

Whoever invents ...any new and useful process, machine,manufacture, or composition of matter, or any new and usefulimprovement thereof, may obtain a patent therefor, ...



35 U.S.C. § 112, first paragraph tells what description must be provided to support the scope of a claim...



Structure of the Invention

How to Make the Invention

How to Use the Invention

Best Mode



The requirement for novelty of 35 USC §102 means that a patent claim cannot include what is already in the prior art.

Prior Art Limits The Scope Of Patent Claims


Infringement


“Infringement” of a patent occurs when a competitor makes, uses, sells, offers to sell or imports an embodiment of the invention without the permission of the patent owner.



claim

Non-infringing embodiment

Infringing embodiment

Infringement


Infringement


• The typical remedies for infringement are:– Damages ($$$)– Injunction (stop use by

infringer)


IP Checklist• Ownership!

– Rights in IP must be clear or investors will balk.– Check employment agreement for obligations to assign– License back or purchase from present owner

• Exclusive license preferred• Make sure they are clear owners

• Scope of protection– Your IP rights must cover the commercialized

embodiments of your invention– Geography … Pharmaceuticals likely require

international protection

• Freedom to operate– Be sure that you are not infringing someone else’s IP

rights or that you can obtain a license

© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego

Chris is working as a post-doc at THE University. Chris wrote an NSF post-doc grant which was funded and is paid exclusively from that grant.

Chris’ research relates to signal transduction through a cell-surface receptor; activation of the receptor activates cell proliferation and Chris is working out the genes/proteins involved in the pathway between ligand binding and when/how cell proliferation begins…


Case Studies


Chris is an inveterate gamer. Chris has an incredible idea for a new game that is unlike anything on the market. Even better, it could work as an application on mobile platforms.

Realizing that the dudes that developed Angry Birds could have done a better job with their IP, Chris wants to get a patent on the new game. So, Chris works at home on the weekends to develop the game.


#1 – Game App


• Can Chris start a business making and selling the game app?

#1 – Game App


• Probably yes–Chris’ employment contract requires

disclosure of all inventions, BUT–The game app has no direct

correlation with Chris’ research–Chris used no University resources

(lab space, computer power, consumables, etc.) in developing the game app

#1 – Game App


Chris is diligent in the lab and has unusual insight into biological systems. Chris concludes that the cell proliferation pathway could actually be inhibited through an intermediate in the signaling pathway that is initiated when the ligand binds the receptor. Chris dreams up some novel chemical compounds that bind to that intermediate and gets Chem Post-doc Pat to synthesize them. They perform as expected.


#2 – Novel Intermediate Antagonists


• Can Chris start a business making and selling the novel intermediate binding compounds?



• NO–Chris is paid by the University even though the Post-Doc grant is to Chris–Chris’ University employment contract requires disclosure of all inventions–Chris used University resources to develop the invention



•What if Chris contracted with Sigma-Aldrich to have the compounds made and did not use any University resources?



• Still NO–Chris is still working for the University–The invention was a direct result of Chris’ research



• Chris can still form a company–Talk to the Tech Transfer

Department at the University–Request a license–Procure separate lab space (not

University owned/operated)–Build a “wall” between the Post-doc

work and the company work

What can Chris do?


• Is there a provision about allocation of IP rights in an employment agreement? (Read it!! – see, Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems Inc., 131 S.Ct. 2188, 98 USPQ2d 1761 (2011) for an interesting story.)

• Is the new company forming around an invention made “in the course of” the university research?

• Were university resources used in the research that led to the invention? (This includes government grants!)

• How much time can a researcher spend on the company?


Typical Issues Raised


• Talk to the Technology Transfer offices sooner rather than later – the time that you are making a pitch for financing is NOT the time to learn the university believes it has a stake in the invention.

• Policies relating to IP, technology transfer, and conflicts of interest for UCSD can be found at: http://invent.ucsd.edu/researchers/policies.shtml and http://invent.ucsd.edu/researchers/.

• USCD policy relating to outside consulting can be found at www.ucop.edu/ott/documents/consult.pdf.

(Thank you Denise!)


Some Resources


Mark Nuell, Ph.D.Direct (858) 356-5959

[email protected]

Susan Gorman, Ph.D.Direct (858) 345-4981

[email protected]

12770 High Bluff Drive, Suite 260San Diego, CA 92130


Contact Us

2 mark and susan ip checklist

Documents

kolasch birch

san diego llp

llp lab

patent claim

scope of patent

patent right

patent owner

patent onthe new game