A Basic Primer on Intellectual Property

Kathryn Atchison, DDS, MPHVice Provost, Intellectual Property and Industry Relations

Associate Vice Chancellor for ResearchProfessor, Dentistry and Public Health

What is UCLA IP?

Patents – e.g. Nicotine Patch, Portable Kidney, Bio fuels Copyrights

Faculty owned (textbooks, manuscripts) Regental owned (commercial, course-related

materials) Trademarks

Logos, Bruin Bear (managed by ASUCLA) Trademarked Clinics or Programs (OIP & Campus

Counsel) Don’t do Trade Secrets…..

Patents:give you the right to exclude others from making, using or selling products/services that incorporate the invention

Copyrights:give you the right to exclude others from making copies, derivative works, and distributing the specific expression of your ideas.

Patents and Copyrights are Exclusionary Rights

Patents and Copyrights Compared

Patents Copyrights

Protect ideas20 year life

Must file applicationLicensableExpensive

Intangible value

Protect implementation of ideas70 - 120 year life

Automatic protectionLicensable

Inexpensive“Tangible” value

Compositions of matter, devices

Methods

New uses for known substance

Any idea that is useful: software, biological material

What is Patentable Subject Matter?

Novel

Useful

Non-

obvious

What are the Requirements for a Patentable Invention?

Technology Transfer Mission is to support UCLA's research, education and public service mission by: Educating the academic community about

appropriate methods for protecting intellectual property

Accelerating the development of UCLA discoveries for the public good

Promoting economic growth in California

Facilitating collaborations with industry for next-generation scientific breakthroughs.

Bayh-Dole Act (35 U.S.C. §200-212) fostered Academic Tech Transfer

Federal law enacted in 1980 A fundamental change to patent ownership University owns patent rights to inventions

sponsored by the U.S.A. government University reports inventions to government and

tries to commercialize Government gets a non-exclusive license Preference for Small Business licensee Royalties must (1) be shared with inventor and; (2)

be used for research and education

Technology Transfer Outcomes for Top 12 Universities, AUTM data 2008

Start-Ups Formed

Northwestern University $824M 4

University Of California System $146M 55

Columbia University $134M 10

New York University $104M 6

Wake Forest University $90M 2

MIT $88M 20

University of Minnesota $84M 1

University of Washington $80M 9

University of Rochester $72M 6

Stanford University $62M 9

University of Wisconsin at Madison $54M 6

University of Florida $52M 14

University of California, Los Angeles $32M 21

Name of Institution Licensing Income

How Does UCLA Oversee IP?

Office of Intellectual Property accepts faculty invention disclosures

Determines patentability Files patents or copyright Markets invention to potential business licensees or

research entities Reports on patents to sponsors. All for 20 years until the patent expires!

When to License…….

Consider licensing if a big player is committed to developing the technology Most startups fail, and not just due to technology

(financing, management, economic climate) You are just as likely to see upside from licensing as from a

startup Licensing can bring in sponsored research to your lab A big player can bring developmental resources &

sales/marketing that no startup can

When to do a Startup……

Disruptive technology that no company is currently seeking.

To bring in sponsored research to your lab Not to aggregate/”control” your IP UC bears costs of patenting and seeking commercial

partners/structuring deals- once you start a new company this cost is shifted to you

Rare that UC would choose to license to a company that you objected to working with- we want our interests to be aligned!

What Types of Problems Arise During the Oversight of IP?

Disagreement over inventorship or authorship Failure to disclose IP to UC and loss to company which

can then deny faculty to continue to work on it Failure to report patent to federal sponsor, which has

rights to use the invention Conflict of interest in selecting appropriate licensee Infringe on another’s patent rights Use another’s copyrighted material in course or for

pleasure (Fair Use)

Communication is Essential

Students should discuss authorship/ inventorship as early as possible with faculty mentor

Appropriate use of university materials and resources to avoid business use of State property

Prevent inadvertent public disclosure Keep public’s best interests in mind

Ownership of Data Data include any information obtained during the

process of research, no matter in what form it is produced, or in what form it is stored.

Medical information - belongs to the research participant and must be protected for privacy

Grants–University owns it and shares with PI Drug studies with the sponsor and sometimes the

university Trainees own no data, not even what they worked on

Ethical problems with ownership of science Broad Gene patents

Allowing a company to tie up diagnosis preventing others from developing a new diagnostic test

Broad Stem Cell patentsAllowing a company to tie up diagnosis preventing others from developing new treatments

Conflicts of Interest - Money

A case in point…..Imagine a faculty member who develops IP, licenses it from the university to her newco; sponsors research in a junior colleagues’ lab who is doing research in the area; decides she wishes to license that IP too, but doesn’t think the junior colleague has quite ‘fulfilled the terms of the contract’; reprimands the colleague for not finishing the research…. And arguing that she should be an inventor of the technology because she proposed the research

Are there ethical issues?

Thank you!