Transcript Intellectual Property and Undergraduates

An Introduction to
Intellectual Property
David Dickson, IP & Licensing Manager
Office for Commercialization and Corporate Development
What is Intellectual Property (IP) and why does it exist?
• “Creations of the mind”
• Confers actual property rights (i.e., exclusivity and
transferability)
• Incentivize innovation
• Bring inventions into the public record
Types of IP
1. Patents
2. Copyright
3. Trademark
4. Trade Secret
IP rights are in our Constitution!
• Article 1, Section 8:
• “The Congress shall have the power… To promote the progress
of science and useful arts, by securing for limited times to
authors and inventors the exclusive right to their respective
writings and discoveries”
Who owns the IP?
• The creator, author, or inventor
• The person(s) who actually developed the IP
• The assignee
• Entity which has ownership of rights.
• Example: OSU is the assignee of inventions developed by its employees
within the scope of their job duties.
Understand your rights. OSU IP policy for students:
http://oregonstate.edu/research/occd/sites/default/files/IPGuidelinesforStudents.pdf
How do I protect my ideas?
Keep detailed notes!
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What you did
When you did it
Very detailed
Sign and date every page
Non-confidential summaries
Formal IP
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Copyright
Trademark
Patent
Trade Secret
Agreements
• Confidentiality (or NonDisclosure)
• Memorandum of
Understanding
• Material Transfer
• License
Trademarks
• Commercial marks  Brand recognition
Trade Secrets
• Just that, it’s secret!
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Coke formula
Mrs. Fields Chocolate Chip Cookies
Kentucky Fried Chicken
NYT Best-Seller list
WD-40
Krispy Kreme Doughnut recipe
Big Mac Special Sauce
Thomas’ English Muffins
Google search algorithm
Copyright Basics
• Protection for the
author/owner of “original
works of authorship”
• Creator owns that
“expression”
• Literary - books, periodicals, software
• Musical – including accompanying
words
• Dramatic – plays, musicals
• Pictorial, graphic, sculptural, Photo’s
• Motions pictures, audiovisual
• Sound recordings
• Architectural designs
• No Protection for:
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Ideas
Facts
Lists, i.e., Recipes
Public Domain Materials
Copyright requirements
• Work must be Original: Independently created by author
• Fixed in a Tangible Medium: So the work can be “perceived,
reproduced or otherwise communicated.”
• Minimal level of creative expression
• Protection is AUTOMATIC, but… registration needed before
filing for infringement
©
= copyrighted
® = registered copyright
Rights under a Copyright
• In general, copyright gives the copyright owner the exclusive right to do,
and authorize others to:
• Reproduction (copy)
• Derivative Works
• Distribution
• Public Performance and Display
• Digital Audio Transmissions of Sound Recordings
• Limited Moral Rights (Visual Artists Rights Act of 1990, 17 USC §106A)
• United State Copyright Office, part of the Library of Congress
• http://www.copyright.gov/
OPEN SOURCE: Special considerations
• Publicly available source code, which is copyrighted
• Linux, Apache, Drupal, Mozilla, etc.
• Intent: Enable collaborative development
• Licensee (you) is allowed to copy, modify, and redistribute w/o
royalties or fees, provided you abide by terms in license
Open Source licenses
© The Regents of the University of Minnesota
Author: Chris Ghere
Patent Basics
• Protects a “process, machine, manufacture, or composition of
matter
• Government-granted monopoly in exchange for full disclosure
to the public record
• Incentivizes innovation
What is patentable?
• Patentable:
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New ways to make semiconductor nanoparticles (process)
New bipedal robot for emergency response (machine)
New engineered bacterium that produces butanol (manufacture)
New solar absorber material (composition of matter)
• Subject must be: Novel, Useful, and Non-Obvious
• NOT patentable
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Scientific principles or fundamental phenomena
Mathematical algorithms or equations
Naturally occurring material
Abstract ideas
Types of Patents
• Utility Patent (most
common)
• Other forms of patent filings:
• Provisional patent application
• Design Patent
• Plant Patent
• Patent Cooperation Treaty (PCT)
application
More Information: Visit the USPTO website
http://www.uspto.gov/
Common patent misconceptions
• You can patent an idea
• Patents are quick
• Patents are cheap
• Employers automatically
own patent rights of
employees
• Patents stop infringers
• Patents give you freedom to
practice your invention
• Patents are secret
• Patent law is stable
• A US patent gives
international rights
Assignments and Licenses
• Assignment:
• Transfer of ownership rights
• Includes declaration of
originality by inventors
• License
• Grants rights to practice IP for
commercial activity
• May include royalties (~1/3 of
which go back to OSU inventors)
• Inventorship does NOT change
• Gives Assignee right to manage
asset
• LEGALLY BINDING!
• Exemptions for academic
activity
• LEGALLY BINDING!
Confidentiality, or Non-Disclosure Agreements
• Agreement to share confidential information (any form of IP)
for a variety of reasons
• Usually includes:
• Requirement of “due care”
• Fair recourse for breach
• Reasonable duration
• Clear exemptions and termination
• A few other common legal clauses
• LEGALLY BINDING!
• Example language at NOLO.com
How many of you have licensed IP rights?
“For content that is covered by intellectual property rights, like
photos and videos (IP content), you specifically give us the
following permission, subject to your privacy and application
settings: you grant us a non-exclusive, transferable, sublicensable, royalty-free, worldwide license to use any IP content
that you post on or in connection with Facebook (IP License).
This IP License ends when you delete your IP content or your
account unless your content has been shared with others, and
they have not deleted it.”
Thanks!!!
IP Questions? Please contact David Dickson
[email protected]
(541) 737 3450
Other resources:
• Austin Lab: http://business.oregonstate.edu/programs/aep/weatherfordgarage
• Advantage Accelerator: http://advantage.oregonstate.edu/advantageaccelerator