techroadmap what you don’t learn in grad school ip tips for grad students bruce a. horwitz...

TechRoadmap

What You Don’t Learn in Grad School

IP Tips for Grad Students

Bruce A. HorwitzTechRoadmap [email protected]

Copyright 2005 TechRoadmap Inc.

TechRoadmap

Could this be your email?Sent: Tuesday, April 26, 2005, 15:26:36

To: [email protected]

Subject: Harvard Researcher looking to pursue patent on its own

I have been a research fellow at Dana-Farber for the past year, after finishing my PhD in Applied Mathematics at Harvard.

I'm in the process of leaving due to a conflict with the lab director.

Pre-conflict, we had filed an invention disclosure on a computer visualization algorithm I developed (all by myself). Recently, I received an email from the Dana-Farber patent office saying they are dropping the patent due to some prior art papers …

There's a clause in the Dana-Farber rulebook that says if Dana-Farber drop the patent, the inventors are given the chance to pursue it themselves. Basically, if you find it to be viable, I would like to go forward with the patent application myself.


TechRoadmap

Goals for today

Why is IP is important for you and the logic behind Patent laws/rules

Good IP practices for academia and beyond.


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TechRoadmap

Why Gordon Gould is rich

Gas Laser

High RMirrors

Mode-Locking

Mode-Locked Ar Ion Laser


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What is Intellectual Property?

Property = Ownership rights

Primary right = the right to exclude House & Land = No trespassing Journal article = No copying (copyright) Invention = No use or sale (patent)


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Three recognized forms of IP Trademarks – Exclude others from using your

business reputation. Copyrights – Exclude others from copying

Journal articles are copyrighted Covers only the expression not the idea Your “products” are the ideas

Patents – Exclude others from profiting from your creativity.

“Useful” devices/methods A bargain with society that rewards innovation


TechRoadmapExcerpts from McMaster’s IP policy

The purpose of McMaster University includes the discovery, communication, and preservation of knowledge.

It is possible that, at times, the academic and research missions of the Institutions may conflict with the potential commercialization of intellectual property. As the academic and research missions of the Institutions should take priority, the following principles shall take precedence over any other aspect of this policy where applicable:

Academic Researchers […] have the [sole] right […] to determine whether or not any new creation or discovery for which they are responsible should be commercialized.

No member of the Institutions shall be required to engage in any work or research which prohibits the results of the work or research from publication or disclosure to the public […]


TechRoadmap

Reasons to patent Improve your competitive edge in the market.

Block/hinder competitors from copying YOUR product Maintain freedom to operate – cross-license “currency” Reduce the risk of innovating

Non-Technical (added value to your organization) Add market value to your company Attract strategic partners, customers, and employees Enhance branding, market effectiveness Improve bottom line through licensing Deter new competition

You may join a start up based on your invention Looks good on your resume


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Taking it with you

The case of Dr. John Madey vs. Duke The “research, academic, or

experimental use” exemption. Very narrow – “solely for amusement, to

satisfy idle curiosity, or for strictly philosophical inquiry”


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Reasons not to patent

There’s no foreseeable commercial value to your work.

There’s no competitive advantage in your work

You can’t afford to enforce it if you get it.

You value the open exchange of ideas in your community of scholars.


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Should Grad Students patent Dr. Keith Knox

“Knox-Thompson” algorithm (1974) Cited 30 years later


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A CONTRACT WITH SOCIETY

Limitedtime

“monopoly”

learns of your

invention

You Society


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Benefits of the contractFor the inventor Gives you sole use of a

competitive advantage Blocks others from

improving their ideas Bargaining chip for

cross-licensing

For Society Simulates investment in

R&D Knowledge revealed

advances state-of-the-art and stimulates other inventions.

When your patent expires, everyone has the knowledge to make, use, and sell what had been your secret.


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“Contract” terms: “Novel” – If it’s already available to the

public, why should you get the benefits? “Non-Obvious” – It’s no benefit to society

if every mundane change, adaptation, or new combination is locked up in a patent.

“Reduced to Practice” – If you can’t convince me you know how to make it work, why should you get control?


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Budgeting for a [U.S.] patentSteps Conception Reduction to Practice Patent Disclosure Prior Art Search Patent Application Office Action Issue fee Maintenance Fees

Total Cost

Costs Indirect Indirect 5 to 20 labor hours $500 ~ $2000 and up $7.5k ~ $10k and up $3k ~ 5k per Action $1370 $940; $2150; $3320

( 3.5; 7.5 ; 11.5 years) $15,000 ~ $25,000


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Is it worthwhile to file a patent?

How broadly patentable? Claims capture the value? Easy to design around patent? Enforceable? Any dominating patents? Regulatory barriers? Cover intended product? Cover competitors products?


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Classic academic mistake

KSU case Poster presentation

Unattended for 60 hours Interested audience Small volume of key info

Patent application 2 years later Rejection for prior public publication


TechRoadmap

Could this be your email?Sent: Tuesday, April 26, 2005, 15:26:36

To: [email protected]

Subject: Harvard Researcher looking to pursue patent on its own

I have been a research fellow at Dana-Farber for the past year, after finishing my PhD in Applied Mathematics at Harvard.

I'm in the process of leaving due to a conflict with the lab director.

Pre-conflict, we had filed an invention disclosure on a computer visualization algorithm I developed (all by myself). Recently, I received an email from the Dana-Farber patent office saying they are dropping the patent due to some prior art papers …

There's a clause in the Dana-Farber rulebook that says if Dana-Farber drop the patent, the inventors are given the chance to pursue it themselves. Basically, if you find it to be viable, I would like to go forward with the patent application myself.


TechRoadmap

Common Mistakes/IP Tips1. The first words out of our mouths!

Think carefully about value of patenting2. Making a public disclosure prior to filing.

Accept the loss of academic interaction3. Poor search to identify dominating patents, prior

art. You are the expert; your invention must be novel

and non-obvious; find the prior art!4. Not maintaining a good notebook.

More important in US (first to invent)5. Not understanding your claims

Insist that someone “translate”


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Common Mistakes/IP Tips

6. Assuming that filing a patent provides protection;Forgetting that application will usually be published Keep your invention secret as long as possible.

7. Believing that a provisional application [US] can be a “napkin with a cover sheet” GIGO

8. Filing on each invention made9. Filing in more/less countries than needed

Have an IP strategy10. Assuming you know “novel and non-obvious”

Get advice from experienced professionals


TechRoadmap

ConclusionsPatents encourage and reward creativity by letting

inventors keep others from profiting from their inventions.

Society benefits because inventors are encouraged to invent.

Academics must trade the benefits of being part of a community of knowledge for the rewards of commercializing their inventions.

techroadmap what you don’t learn in grad school ip tips for grad students bruce a. horwitz...

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