Introduction to IP

Geoffrey Pinski, JD, Director

Technology Accelerator for Commercialization

University of Cincinnati

Intellectual Property (IP)

• What is it?

• How does it work at a University?

Types of IP

• Trade Secrets

• Trademarks

• Copyrights

• Patents

Trade Secrets

• Definition:– is not generally known to the public

– confers some sort of economic benefit on its holder (where this benefit must derive specifically from its not being generally known, not just from the value of the information itself)

– is the subject of reasonable efforts to maintain its secrecy.

• Rights Granted:– Ability to stop others from unfairly taking

How do you gain Trade Secret

protection?

• Keep your secret secret.

Examples

Trademarks

• Definition:

– A distinctive sign or indicator used to identify that the products or services originate from a unique source, and to distinguish its products or services from those of other entities

• Rights Granted:

– Ability to stop others from unfairly using

How do you gain Trademark

protection?• Use your mark on a product

• Register [Optional, but recommended]– File a registration

– Wait

– Respond to an office action (if necessary)

– Wait

– Repeat Steps 3 & 4 (if necessary)

– Have registered trademark status ®

Examples

Copyrights

• Defintition– Copyright protection subsists in original works of authorship fixed in any tangible

medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

• Rights Granted:– Ability to stop others from

• Making copies

• Prepare derivative works

• Distribute

• Perform publicly– Motion

– Audio

• Display publicly

How do you gain Copyright

protection?

• Put the work in a tangible media

• Register your copyright [Optional]

Examples

Who owns my copyright?

• Copyrights

– Written works belong to the author.

– Copyright protection lasts for life of

author plus 70 years (“Mickey Mouse

Copyright Protection Act”)

Who owns my copyright?

Exception: “Work for Hire Doctrine”

1. Works created by employees are owned

by the employer.

2. Works created by independent

contractors are property of the writer,

unless (1) the work is specially ordered or

commissioned [as part of one of 11

categories of work] and (2) the parties

agree in writing that the work is a “work

for hire.”

Patents

• Requirements:– Novelty

• Subject matter must be new - not published; not in public use; not offered for sale.

• In the US there is a one-year grace period; outside the US, there is no grace period.

– Utility• You must demonstrate that the invention is useful.

– Non-obviousness• The subject matter must not be "obvious to one skilled in the art" - i.e., a

person trained in the relevant technical area.

What rights are granted?

• Ability to stop others from

– Making

– Using

– Offering for sale

– Selling

– Importing

How do you obtain a Patent?

• 1. Draft a patent (1 to 8 weeks)

• 2. Wait (2 to 4 years)

• 3. Respond to first office action (3 to 6 months)

• 4. Wait (3 to 6 months)

• 5. Repeat Steps 3 & 4 (if necessary)

• 6. “Hopefully” have issued patent

ExamplesVelvet Type Fabric and Method of Producing the same

Velcro

ExamplesIncadescent Lamp

Edison

ExamplesGameboard

(i.e. Monopoly)

ExamplesAirborne Enhancement Device

ExamplesMethod of concealing partial baldness

Patent Parts

Patent Parts (cont.)

Patent Parts (cont.)What is claimed is:

A method of swinging on a swing, the method comprising the steps of:

a) suspending a seat for supporting a user between only two chains that are hung from a tree branch;

b) positioning a user on the seat so that the user is facing a direction perpendicular to the tree branch;

c) having the user pull alternately on one chain to induce movement of the user and the swing toward one side, and then on the other chain to induce movement of the user and the swing toward the other side; and

d) repeating step c) to create side-to-side swinging motion, relative to the user, that is parallel to the tree branch.

The method of claim 1, wherein the method is practiced independently by the user to create the side-to-side motion from an initial dead stop.

The method of claim 1, wherein the method further comprises the step of:

e) inducing a component of forward and back motion into the swinging motion, resulting in a swinging path that is generally shaped as an oval.

The method of claim 3, wherein the magnitude of the component of forward and back motion is less than the component of side-to-side motion.

Who owns my patent?

• Patents

– A US patent application must be filed in the

name of the inventor(s).

– A US patent provides protection for 20

years from the date of filing.

Who are the Inventors?

• Sole Inventor

• Teams of Inventors

– The inventors are those who made a

creative contribution - not “pairs of hands.”

– Inventorship is defined under patent law.

– Sometimes can’t be determined until the

patent application is written.

– May change during prosecution.

Who owns my patent?

• Assignments

– An assignment is a formal transfer of

ownership from one party to another.

– When a patent is assigned, the transfer is

recorded in the US Patent Office.

– Employers will typically require an

assignment for any employee invention.

Summary of Intellectual Property

• Gives you the right to exclude others– Trade Secret – unfair use

– Trademarks – confusion or dilution

– Copyright – unfair use or copying

– Patents – making, selling, offering for sale, importing

• For a length of time– Trade Secret – as long as it’s a secret

– Trademarks – as long as it is used in commerce

– Copyright – life of the author + 70

– Patents – 20 years from filing

What does UC do with IP?

• Disclose

• Assess

• Protect

• Market

• License

• Reward

University Policy on IP

• This policy applies to all discoveries, inventions or patents that result from research or investigation conducted

– By any person, whether employee, student or volunteer, in any experiment station, bureau, laboratory, research facility, or other facility of the university or with funding, equipment, or infrastructure provided by or through the university; or

– By an employee of the university acting within the scope of his or her employment, regardless of the location of the research or the nature of the funding, equipment or infrastructure used.

Pipeline Realities

Disclosehttp://commercialization.uc.edu/faculty-students/forms

Assess

• What is the Invention?

• Market Potential– What other products are out there?

• Commercial or otherwise

– How is this product different than the other products?• Advantages and disadvantages

• IP Strength

– How close is it to an existing patent?

• Development Stage

– Do we have a prototype?

• Implementation/Adoption

– Are there issues with it being adopted?

Startups

Protect

• How do you protect it?

– Patent

– Copyright

– Trademark

– Trade Secret

Market

• Identify Targets– Exactly who wants to buy this product?

– Are there other uses which this product can be used for?

– Who else does this? How does their product compare?

• Create Leads– Direct Mailing

– Website

– Relationships

– Social Media

License

• Licensing = renting– A license agreement is in its simplest form a sale

• The goal is to find the interested parties who want the product and meet the valuation of the product

• Find interested parties that share the same valuation of the technology

• License– Non-Exclusive vs. Exclusive

– Terms vary

Reward

• Policies exist for licensed items to reward the creators/inventors for their contributions

Office Links

Website:

http://commercialization.uc.edu

Facebook:

http://www.facebook.com/oeatc

Twitter:

http://twitter.com/oeatc

Contact Information

Geoffrey Pinski, JD, Director

Address: University of Cincinnati

Technology Accelerator for Commercialization

51 Goodman Dr., Suite 240

Cincinnati, Ohio 45221-0829

Phone: (513) 558-6293

Email: geoffrey.pinski@uc.edu