Techtransfer[1] - Intellectual Property Basics at Johns...

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Unformatted text preview: Intellectual Property Basics at Johns Hopkins University Allison M. Okamura Presentation from: R. Keith Baker, Ph.D., M.B.A. Johns Hopkins Technology Transfer The Johns Hopkins University Technology Transfer & JHTT Bringing the benefits of discovery to the World Intellectual Property Basics for the Academic Environment Intellectual Property Basics Types of Intellectual Property Patent Basics Patent Prosecution Issues in an Academic Environment Inventorship Documenting Inventions Public Disclosure Encumbered Research Types of Intellectual Property Trade Secrets Confidential designs, devices, recipes, processes etc., e.g. recipe for Coca-Cola ® soft drink Last indefinitely but must be protected vigorously (NDAs) Copyright (handled by Library of Congress) Covers expression of work - such as songs, artwork, films, software, video games Copyright is secured automatically when the work is created Use “ © Johns Hopkins University 2007” ; beneficial but no longer required 2007” Life of author plus 70 years Name of product or service Use as a modifier, not a noun (Kleenex ® tissues) Use TM or SM to claim right; ® if you register the mark Must be used, and used appropriately Registration is renewable every 10 years Trademarks (handled by USPTO) Patents (USPTO) Allows a monopoly for a limited period of time (20 years from date of filing) in exchange for public dissemination Does not guarantee the inventor the right to practice the invention, only the right to exclude others 4 Types of Patents Provisional patent application • • • “Cover sheet provisional” often used at universities provisional” Not examined by a patent examiner Expire in 12 months New processes, machines, compositions of matter Utility patent • Divisionals Continuations, Continuations-in-Part (CIP) • • Application publishes after 18 months Expire 20 yrs after filing of the non-provisional application (some extensions) Nonfunctional, ornamental or aesthetic design elements Expire in 14 years Asexually or sexually reproducible plants Expire in 14 years Design patent • • Plant patents • • 5 Utility Patent Basics To be patentable, an invention must be: • Novel (new) • Useful • Non-obvious to one of ordinary skill in the art Reduction to practice • Actual reduction to practice (e.g. actually build the invention) • Constructive reduction to practice (i.e. provide instructions in the patent application so that someone could build the invention) Best mode revealed • Inventor must describe the best means of producing or practicing the invention • If best mode is held back, patent can be invalidated Known prior art must be disclosed to the examiner or inventor could be accused of “inequitable conduct” and patent will be invalidated 6 Patent Prosecution Decision Primarily a Business Decision • File provisional patent application ($105) • File an ordinary US utility patent application ($8K-$30K) Takes priority date of the provisional if there was one Will publish at USPTO after 18 months from priority date Could take several years to issue • File a PCT (Patent Cooperation Treaty) patent to capture foreign protection Possible if invention was not published Need to designate specific countries at 30 months (including US) $8-$12K for original draft $2K-$9.5K per country at national phase decision point PCT patents DO NOT issue, but they do publish at 18 months if filed at USPTO • Individual country validation Patents issue country by country Annuities (foreign); maintenance fees in US at 3.5 yrs., 7.5 yrs., 11.5 yrs. Translation costs $200K + for worldwide protection over the life of a patent 7 Patent Prosecution Process May take 3 years or more before a USPTO patent examiner is assigned Correspondence from USPTO examiner is known as an “office action” First office action is almost always a rejection. “102 rejection” 35 USC 102 (a) Invention was published or offered for sale more than one year before the application “103 rejection” 35 USC 103(a) Obviousness rejection- invention would have been obvious at the time to someone of ordinary skill in the art “112 rejection” 35 USC 112 Enablement requirement; claims must not be broader than the specification Best mode not revealed Restriction requirements Examiner decides there are multiple inventions in the application and you must choose one or the other or file multiple applications 8 Patent Anatomy Inventors Assignee (owner) Filing Date, Issued Date, any adjustments on term of patent References Cited Abstract Drawings Specification - supporting information for the claims Field of Invention Description of Prior Art Summary of Invention Description of Drawings Examples, Preferred Embodiment Claims (most important part) Independent or Dependent Method or Apparatus 9 Provisional Patent Example Utility Patent Example Issues in an Academic Environment Inventorship • • • “Conception” v. “Reduction to Practice” Joint inventions Assignments Documenting Inventions • First to Invent Concept • Best Practices for Documentation Public Disclosure • Oral public disclosure • Written public disclosure • U.S. v. International Encumbered Research • • • U.S. Government Industry Partners Material Transfer Agreements (MTAs) 12 Inventorship Determined by who “conceived” the invention • “Formation in the mind of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice” • Must have contributed to at least one claim of the invention • Someone who helps “reduce to practice” only is not an inventor – no “intellectual domination” over the invention • Changes during experimentation may result in co-inventorship Joint inventions • Determined on a claim by claim basis • Even the smallest contribution entitles an inventor to the full rights of the patent 13 Inventorship (cont.) Assignments • Inventors are the default/initial owners– patent issued only to inventors • Transfer of inventor’s rights in the patent • Must be by an "instrument in writing“ JHU IP Policy • • • Requires disclosure of inventions Faculty and staff are required to assign their rights to JHU WSE students who receive CASH from JHU must assign their rights to JHU • Cash is the “bright line” test – use of equipment or facilities not sufficient 14 Documenting Inventions First to Invent Concept U.S. system only Other countries use a “First to File” system Controversial Patent Reform Act before Congress may change Need evidence of conception, reduction to practice and diligence 15 Documenting Inventions Notebooks Ideally, you should: Document in a timely manner anything you think might be an invention in a bound, page-numbered notebook. Date your entries. Avoid erasures (cross-out instead), and avoid blank sections. Get dated signatures from witnesses who are not co-inventors. Put notation: “Read and Understood”. Conception date, efforts to reduce to practice (diligence), and reduction to practice date are all important if there is a dispute as to who is entitled to a patent (who invented first). Don’t discuss your invention with anyone outside of JHU without a non-disclosure agreement (NDA) in place 16 Public Disclosure Definition • Transfer of information about your invention, written or oral, into the public domain or to any party not obligated to keep the information confidential • Enabling? Oral Public Disclosure • Any discussions where another party could take detailed notes that describe your invention • Examples - formal talks, meeting presentations, departmental seminars, oral theses defense and even discussions with a single person. 17 Public Disclosure (cont.) Written Public Disclosure • Published materials – journal articles, abstracts, posters, newspaper articles, book chapters and proceedings • Electronic submissions – abstracts, articles or research reports • Non-confidential meeting or conference materials - Demonstrations, exhibits, slides or projected material • Private correspondence – letters, e-mails • Catalogued graduate theses • Grant proposals - accessible under the Freedom of Information Act • Websites – descriptions of departmental research projects U.S. v. International Implications • U.S. – 1 year to file from time of disclosure • International - “Absolute novelty” required in most foreign countries 18 Encumbered Research U.S. Government Funded • Bayh-Dole requirement to disclose all inventions • Government rights to inventions Right to use March-in rights May include taking the lead on patenting joint inventions (IIAs) Industry Partnerships • Individually negotiated agreements that may determine patent ownership and licensing rights • ERC IP Policy for Industrial Collaboration Core technology v. Application technology Non-exclusive licensing ONLY to Industrial Sponsor for Core Technology (royalty or non-royalty bearing) unless approved by ERC steering committee Exclusive licensing to Industrial Sponsor for Application Technology (royalty bearing basis) MTAs • May grant certain rights to provider of materials 19 Academic Tech Transfer … prior to 1980 all inventions conceived or reduced to practice in the performance of U.S. federally funded research were owned by the U.S. government. The Bayh-Dole Act ‘80 … to stimulate the U.S. economy and generate goods and services for public benefit, Bayh-Dole facilitated technology transfer from research institutions to the private sector by: allowing Universities the option to take title to inventions conceived or reduced to practice in the performance of a federal grant under particular obligations . . . Bayh-Dole Obligations include • • • • • Disclose each new invention and report activity File, prosecute, maintain patents/applications as appropriate Efforts to license → development Share license revenues with inventor Use remainder to support research & education AUTM Licensing Survey of 2004 • $1.122 billion in gross license income • 10,517 new US patent applications, up 32.8% from FY03 filings of 7,921 • 3,680 US patents issued • 4,783 new licenses and options • 462 new companies formed Basic licensing facts Majority of all licenses to small companies (< 500 employees) > 75% of income derived from < 2% of licenses < 1% of licenses yield > $1M in annual income Technology Transfer at JHU JHTT Mission Statement The Johns Hopkins Technology Transfer office furthers the mission of The Johns Hopkins University to bring the benefits of discovery to the world, by implementing the commercialization of University innovations for the public good by: • Encouraging and supporting invention disclosure; • Encouraging and supporting entrepreneurs; • Effecting technology development and licensing; • Increasing available research funding; and • Protecting and managing the University's intellectual property Bloomberg School of Public Health Krieger School of Arts & Sciences Nitze School of Advanced International Studies The Peabody Institute School of Medicine Whiting School of Engineering School of Nursing School of Education Carey Business School JHU IP Policy As a condition of employment, Hopkins faculty and staff are obligated to report inventions made with university resources (to JHTT) and to assign title to the University in exchange for a share of net income from licensing the inventions. Revenue sharing 35% inventor’s personal share 15% inventor’s research share 15% inventor’s department 30% school, 5% university with 25/10 to school and university for royalties exceeding $300K JHU FY07 Stats 282 Inventions Disclosed ● 387 Patent Applications Filed ● 37 Patents Issued ● 79 License & Option Agreements Executed ● $9.6 Million in Revenue FY07 Statistics FY06 New Disclosures Licenses/Options Total Agreements Patents Filed US Patents Issued MTA’s 244 57 108 652 35 1,764 FY07 282 78 118 611 37 1,790 Change +16% +37% +9% -6% +5% +1.5% 31 Start-ups (formed since 2000) • • • • 30 active Companies – based in whole or in part upon JHU technology >$400 Million raised 5 publicly traded: Toronto, NASDAQ, Europe >400 people employed How to Report an Invention Report of Invention Disclosure Form (ROI) To be completed and submitted to JHTT by anyone who believes they have developed a new invention. Enables JHTT to evaluate the invention Submit this form with all inventor(s) and Department Director(s) signatures. Visit the JHTT web site at Hopkins Inventors/index.html for .pdf and Word downloadable formats of this form. JHTT Invention Management New ROI (2 days) Initial Evaluation (30 days) Initial Investment Decision (4-6 weeks) Marketing (Active/Passive) (6 Months) Final Evaluation and Investment Decision Marketing Negotiation (Term Sheet/Agreement) License (Target: 1-3 months after terms agreed) Predicting “License-ability” ● Wealth of Discovery ● Academic Inquiry ≠ Market Driven ● Early Stage Inventions Consumer Product Not Defined Defined Consumer End Product Gene, Pathway, Interaction Clinical Finding Devices Software Speculative Patenting 300 inventions disclosed / year Patent: $10K starting cost → >$100K (w/ foreign) Risk ($) Reward Stakeholder Needs PUBLIC Benefit ↓ UNIVERSITY → License Agreement INVENTORS ← ↑ CORPORATE Licensees Team Homewood IP Director (recruiting) Bill Doyle, JD Technology Licensing Associate Steve Kubisen, Ph.D. Portfolio Director Thank You Johns Hopkins Technology Transfer 1OO North Charles Street, 5th Floor Baltimore, MD 21201 Telephone: 410-516-8300 Fax: 410-516-4411 Questions? ...
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This note was uploaded on 10/18/2008 for the course MECHENG 102 taught by Professor Okamura during the Spring '07 term at Johns Hopkins.

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