Transcript Slide 1

(Session #40 -- 10:30-11:45 a.m.)
Intellectual Property (IP) 101:
“What Research Administrators
Should Know about Faculty IP
Responsibility”
by Tom Kelly,
Office of Intellectual Property Administration (OIPA),
WSU Research Foundation (WSURF), and WSU Ag
Research Center (ARC)
What You Should Take Away from
This Presentation:
--An general understanding of intellectual
property (IP) and the invention disclosure
process at WSU
--The rights and obligations of WSU faculty
regarding invention disclosure
--The function of the Office of Intellectual
Property Administration (OIPA) and the WSU
Research Foundation (WSURF) in invention
disclosure, IP protection, and technology
licensing
Some basics first…
What Is Intellectual Property?
Standard Definition: Intellectual property
(commonly referred to as “IP”) is anything that
is created by the intellect in a tangible form.
Translation: An invention, such as a new and
useful process, machine, manufactured item,
composition of matter, and any new, useful
improvement of the above (which is disclosed
on the invention disclosure form)
Purpose of Protecting
Intellectual Property:
•By protecting your invention—and depending
upon the form of protection used and the type
of invention involved—you can exclude others
from making it, growing it, propagating it,
using it, selling it, offering to sell it, importing
a protected product, or importing a product
made using a protected process.
•By not protecting your IP, it may become part
of the public domain, where anyone can use
it, and it’ll be outside of your control.
Pros & Cons of Patenting
Risks of not patenting
-Legitimate re-discovery
-Reverse Engineering
-Patenting may be forever barred if application
is not filed
Cons – Exposure
-Invention and research strategy exposed to
the public
-Infringement is difficult to detect
-Trade secret status destroyed
Protecting Your IP: Forms of U.S.
Intellectual Property Protection
•Patents
•Copyrights
•Plant variety protection (PVP)
•Trademarks
•Trade secrets and Know-how
The Most Common Form of IP
Protection: The Patent
• To be patented, an invention must be useful, novel,
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non-obvious to one skilled in the art, and it must work.
Patents are governed by federal law.
They are property ownership documents similar to a
lease on a car.
Patents give the owner the right to exclude others from
making, using, or selling the invention.
They are valid for 20 years from the first filing date of
the patent.
But, patents are expensive and involve a long-term
commitment and on-going maintenance payments.
Advantages of Disclosing,
Protecting, and Licensing WSU IP
• Extends WSU’s research mission by fostering
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investment in innovation, through licensing and
start-up company development.
Furthers WSU’s extension mission by providing
new products and services to society.
Promotes economic development in the state of
Washington and in the nation.
Provides income to WSU to further its research
and scholarship activities.
Improves WSU’s standing in the research
institution hierarchy, which tends to attract
leading researchers and high quality students.
Provides a financial incentive to inventors.
Who Owns Faculty IP?
Official WSU Policy: “The University shall own
the rights to all patentable property and other
tangible research and scholarship developed
as a result of University employment, or when
the equipment, supplies, facilities, employee
time or proprietary information of the
University are used.
After the employee terminates his or her
Washington State University employment and
is re-employed elsewhere, the University
retains ownership of subsequent inventions
where the invention is a direct outgrowth of the
University's business or University research
and development.”
WSU’s Copyright Policy
“The University shall not assert
ownership in the following works
created by faculty within the faculty’s
scope of employment, unless (1)
substantial kinds or amounts of
University resources...were used to
create the works; (2) the works are
created pursuant to a written agreement
between the employee and the
University; or (3) the works are created
pursuant to a third-party sponsored
agreement, contract, or grant,
specifically allocating ownership rights
to the University:
•Scholarly material
•Educational material
•Art works
•Musical compositions
•Dramatic and non-dramatic literary
works”
Invention Disclosure
Process/Faculty Requirements:
•Faculty, during their employment at WSU, are
required to disclose all potentially patentable
inventions and discoveries (i.e., IP) to WSU’s
Office of Intellectual Property Administration
(OIPA).
•The disclosure process starts when the
faculty member completes an invention
disclosure form available on the OIPA website.
Confidentiality
--Prior to disclosure of IP to OIPA: When a
faculty member needs to discuss a potentially
patentable invention with a company prior to
disclosure of the IP to OIPA, whether it’s prior
to submission of a research proposal or while
conducting the research, The faculty member
should so inform OGRD, and OGRD should
sign a non-disclosure agreement (NDA) with
the company prior to the discussion.
--Following disclosure of IP to OIPA: Once the
IP has been disclosed to OIPA by the faculty
member, prior to the discussion, OIPA should
sign a confidential disclosure agreement
(CDA) with the company.
IP Protection Scenario
A company wants to sponsor research but first wants
to discuss the research with the faculty member.
What should the researcher do next?
Set up an NDA via OGRD.
Discuss the research; submit proposal to company.
OGRD negotiates the SRA.
Company wants to send materials to researcher.
Material Transfer Agreement (MTA) negotiated by
OGRD. Company sends materials.
Conduct the research. An invention results.
Submit invention disclosure to OIPA.
OIPA evaluates disclosure, negotiates with company.
Perhaps another CDA and/or outgoing MTA needed.
Why is Confidentiality Important?
--If a faculty member discloses confidential
information to a company without a signed
NDA/CDA in place, the company may use that
information to file its own patent on the
invention.
--Such public disclosures could result in loss of
patent rights.
--In the U.S., you have one year to file a
patent after public disclosure.
--In most other countries, except for
Canada and Australia, loss of patent rights
occurs upon public disclosure.
What Constitutes a Publication or
Public Disclosure?
 A thesis or dissertation
 A journal article
 A poster presentation or abstract, e.g., an on-line
abstract for a conference presentation
 A published grant proposal, which is usually
considered public information once funded
 Proposals to commodity commissions sent out in
booklet form or via e-mail to commissions,
whether or not funded
 A progress report submitted to a funding agency—
USDA, NSF, etc.
 An oral presentation
What is an Invention Disclosure?
--Definition: A 6-page form completed by the faculty
member that describes the invention
--Once completed, the invention disclosure form is
signed by the faculty member (and any coinventors), a witness, the dept chair, and the dean
of the college, and sent to OIPA. (In CAHNRS,
invention disclosures are sent to the ARC director
and not to the dean.)
--The invention disclosure form can be found at the
following web address:
http://www.wsu.edu/~oipa/index.htm
What is OIPA and What Happens to
Invention Disclosures Sent to OIPA?
--OIPA is the WSU office that collects and
evaluates invention disclosures and creates a
plan of action with the inventor for the
disposition of the disclosed technology.
--OIPA first evaluates the IP, looks for prior art,
and explores possible commercial interest in
the technology. (Questions asked: Is the
inventor working with a company interested
in licensing the technology? Are other
companies interested in licensing the
technology?)
Evaluation of Invention
Disclosures
Factors to consider:
Stage of dev’t of the technology
Technical merit of the invention
Cost of protection vs. commercial
worth of the technology
Cost of dev’t and production of
invention vs. size of market
Commercial interest
Existing patents/prior art
Other factors: long-term value,
WSU considerations
--If there is market interest in the invention,
OIPA may choose to patent or otherwise
protect the invention. (This adds value to the
potential license agreement because it allows
the patent holder more control over the
technology which the patent holder can give
to the licensee of the technology.)
--Once license negotiations are underway, and
a company is close to signing a license
agreement—generally for up-front fees,
milestone payments, royalties, etc.—OIPA
officially assigns the IP over to the WSU
Research Foundation (WSURF), which
finalizes and signs the license agreement.
--There are variations to the above theme: For
example, a WSU technology might be
licensed to the WSU inventor’s start-up
company in exchange for minimal fees and/or
an equity position in the company. Or, an
existing company may want to create a startup company around a WSU technology for
any combination of monetary or equity
consideration.
--On the other hand, if an inventor’s technology
proves unmarketable, it is either returned to
the inventor or turned over to the federal
agency that funded the invention.
Once the technology is in WSURF’s hands,
WSURF will:
• Work with the inventor and attorney to
prosecute the patent
• Monitor the continued prosecution of the
patent (or other IP protection)
• Once the patent is granted, pay appropriate
issue and maintenance fees
• Monitor the fulfillment of license agreement
terms
• Do whatever else is required along the way
Invention Flow Chart
Invention
Faculty
Invention
disclosure
Licensing
WSURF
Licensing/
Company Formation
WSURF
Evaluation
and
Marketing
OIPA
assignment
Patenting
Patent Atty
patent
prosecution
WSURF
What is the Difference between WSURF
and OIPA?
--The same people work for both OIPA and WSURF,
and all are WSU employees.
--OIPA is part of WSU and collects and evaluates
invention disclosures, markets inventions, and
pays initial patent application costs.
--WSURF is a separate 501(c)(3) non-profit
corporation apart from WSU. (We are not the WSU
Foundation, the folks with the big bucks, the
endowments, and the 17A accounts.)
What Else Do OIPA and
WSURF Do?
--OIPA also is part of the Office of Research, which
includes OGRD. At times, OIPA assists OGRD with
the IP portion of complicated research agreements.
--Sometimes OIPA gets involved in writing the IP
portions of large research proposal submissions,
where significant technology transfer activities or IP
is expected.
--OGRD handles incoming transfers of material under
material transfer agreements (MTAs); WSURF
handles outgoing transfers of material, and prepares
and signs outgoing MTAs. No commercial use of
materials is allowed.
--WSURF manages the Research and Technology Park
and the residents in the Park.
Distribution of License Revenue
from Patented Technologies
• WSURF deducts unreimbursed patent
expenses and then takes 20% off the top.
The rest is distributed as follows:
 $1-$10,000: Inventor gets 100% of revenue.
 $10,000-$200,000: Inventor and WSU split
revenue 50:50.
 Above $200,000: Inventor gets 25%, WSU
gets 75%.
Distribution of License Revenue
from Seed-Propagated Crops
• WSURF deducts the cost of obtaining and
maintaining legal protection.
• WSCIA collects a management fee (currently
2%) for its services in seed production and
seed distribution.
The rest is distributed as follows:
 70% goes to the ARC for the program.
 30% goes to WSURF, ARC, and the breeder
team (each gets 10%).
Distribution of License Revenue
from Asexually Propagated
Crops
• WSURF deducts the cost of obtaining and
maintaining legal protection.
The rest is distributed as follows:
 50% goes to the ARC for the program.
 20% goes to the ARC and to WSURF (each
gets 10%).
 30% goes to the breeder team.
General Contact Information
For all OIPA/WSURF employees:
--Tel: 509-335-5526
--Fax: 509-335-7237
--E-mail: [email protected]
--Website: http://www.wsu.edu/~oipa/index.htm