how do i protect my ideas and ip

7/29/2019 How Do I Protect My Ideas and IP

1/19

Nick Maull, Esq.Intellectual Property Associate

Sonia Kim, PhDManager for Marketing and Industry Partnerships

Protecting Your Ideas and

Intellectual Property


2/19

Intellectual Property Basics

Do Northwestern students have

intellectual property rights?

INVO/Commercialization process

How can INVO help YOU?

AGENDA


3/19

1. PATENTS

- USEFUL, NOVEL, NONOBVIOUS

2. TRADEMARKS- USEDINCOMMERCE3. COPYRIGHTS

- FIXEDINATANGIBLEMEDIUM

TYPESOF INTELLECTUAL PROPERTY


4/19

NORTHWESTERN UNIVERSITY INTELLECTUAL

PROPERTY POLICIES

http://www.invo.northwestern.edu/policies


5/19

BASICSPatent and Invention Policy Copyright Policy

Who All post-doctoral associates,

graduate students and

undergraduate students

All post-doctoral associates,

graduate students and

undergraduate students

What All inventions, discoveries and

tangible research properties

All copyrightable subject matter

Where Location is not an overriding

factor

Location is not an overriding

factor

When At all times At all times

Ownership

Rights

Well get to these


6/19

WHENTHE UNIVERSITY CAN ASSERTOWNERSHIP

Invention Discovery Tangible Research

Property 1

Within scope of

employment or

responsibility owed

Yes Yes Yes

Sponsored research Yes Yes Yes

Uses Northwestern

University resources 2

Yes Yes Yes

Voluntarily Assigned

to the University

Yes Yes Yes

Classroom

assignments

Yes - Well get to these next

1 Includes, but is not limited to, materials, software, databases, engineering designs, prototype devices,

antibodies, cell lines, and genetically modified animals. Certain cases of computer software may be

released after University review2 Excluding library and meeting places when made in fulfillment of a classroom assignment


7/19

COPYRIGHT DISPOSITION

Traditional Work1

Non-Traditional Work2

Other Agreement University may

own

University may own

Patent and

Invention Policy

Author may own University may own

Work for Hire 3 University University

1 Includes, but is not limited to, journal articles, manuscripts, academic

presentations, theses, etc.

2 Software3 A copyright authored in performance of an administrative task or which the

writer specifically agreed to author by contract


8/19

CLASSROOM ASSIGNMENTS

The University can assert ownership in inventions made infulfillment of a classroom assignment that:

uses substantial or essential contributions of the University,such as, funds, space, materials or facilities;

is developed under a sponsored research agreement or otheragreement the University entered into with a third-party;

is a work for hire; or

is developed in collaboration with faculty members notresponsible for teaching the class.


9/19

WHYDOES NU ASSERTRIGHTS?

Government obligations

Better society promote sharing ofknowledge and ideas

Generate revenue for the University e.g.LYRICA


10/19

STUDENT RELEASES http://www.invo.northwestern.edu/process/students

Before attempting to commercialize inventions, discoveries ortangible research property request a release of University rights.

The University cannot grant a release on an invention before its

conception.

If release is granted the University will not:

make a claim in the subject matter disclosed;

be responsible for any costs associated with the invention;

provide legal representation for the inventor in case oflitigation.
http://www.invo.northwestern.edu/process/studentshttp://www.invo.northwestern.edu/process/students


11/19

HOWCANINVOHELPA

STUDENT?!?!?!ANSWER: RESOURCES INVO has various professionals that can help you protectand develop your idea!

Phds to help develop your technology

Marketing professionals to market your invention tocompanies for licensing or acquisition

Lawyers to help you protect your invention and build a

business strategy

Business professionals to help you build a start-upcompany


12/19

HOWCANINVOHELPA

STUDENT?!?!?!ANSWER: $$$$$$$ Patent costs are extremely high, 20k for a simple device, up to100k for a complex invention

Consulting services can be extremely costly

Facilities for product development are not cheap, INVO can helpyou find affordable resources

Business strategy can make or break your commercial potential,

having guidance is key

Network INVO has an established network of venture capitalcontacts and companies looking to spend their money on NUideas!


13/19

To Create a Strong Foundation forInnovation and an Entrepreneurial

Culture

INVOs GOAL

Translation Center for Developmental

Therapeutics (CDT) NU Clinical & Translational

Sciences (NUCATS) Entrepreneurs-in-Residence Commercialization Clinics

Transaction Process NU Invention

Disclosures File Intellectual Property Negotiate Agreements Oversee & Manage

Compliance

Commercialization License inventions to

companies Partner with companies,

investors & advisors Provide resources for start-

up companies


14/19

14

What we do:

INVENTOR

NU

IM@ INVO

1. Evaluate disclosures anddevelop a licensing strategy

4. Negotiate licensing agreements

Jeff ConeyNU

INVENTOR &ENTREPRENEUR

Start-Up

5. Provide commercializationresources for start-ups

2. Process patents

USPTO

Intellectual

Property

$

- INVESTORS- INDUSTRY

Licensing &Partnerships

3. Market inventions to industry

Sonia Kim


15/19

http://www.invo.northwestern.edu


16/19


17/19

PATENTLAWSARECHANGING!

MARCH 16, 2013 MOVING FROM A FIRST TO INVENT, TO

FIRST TO FILE SYSTEM

HOW DOES THIS AFFECT YOU AS ASTUDENT?

Costs will be more of a consideration

Public Disclosures students and faculty Consult INVO early!


18/19

TAKEAWAYS

CONSULT INVO!!!!

AND CHECK OUThttp://www.invo.northwestern.edu/
http://www.invo.northwestern.edu/http://www.invo.northwestern.edu/http://www.invo.northwestern.edu/


19/19

Contact

Nick Maull, Esq.Intellectual Property Associate

Innovation and New Ventures Office1800 Sherman Ave., Suite 504

Evanston, IL 60201Phone: (847) 467-2097Email: [email protected]: http://www.invo.northwestern.edu/
mailto:[email protected]://www.invo.northwestern.edu/http://www.invo.northwestern.edu/mailto:[email protected]

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