Transcript OTM Introduction and IP Primer

OTM
INTRODUCTION
AND IP PRIMER
Patrick E. Reed,
Director, Office of Technology Management
AGENDA
• What is OTM?
• Bayh-Dole
• Intellectual Property
• Technology Transfer
ABOUT US
• The Office of Technology Management
is under the Vice Chancellor for
Academic Affairs
• Responsible for managing the
university’s intellectual property
– Help translate university research
into products on the market
• Doubled the size of the office in
February 2013!
• Open Door Policy
BAYH-DOLE
ACT
Patent and Trademark Law Amendment Act, adopted in
1980 (codified in 35 USC § 200-212)
WHY BAYHDOLE?
• Federal patent policies inconsistent
and ineffective
• No uniform policy among agencies
• No statutory authority that gave
agencies a right to hold patents or
license technology
• Colleges and universities rarely given
exclusive control except through
lengthy greater rights determinations
• Result: inventions not commercialized
WHAT DOES
BAYH-DOLE
DO?
• Gives nonprofit organizations and
small business firms rights to
inventions under government grants,
contracts, and cooperative
agreements
• Promotes commercialization and
public availability
• Encourages researchers to disclose
inventions
• Encourages small businesses to
participate in government supported
research and development efforts
• Government is granted certain
nonexclusive and march-in rights
INSTITUTIONAL
OBLIGATIONS
UNDER BAYHDOLE
• Prompt reporting of inventions to
funding agency
• Grant the government their license
• Report on the utilization of the subject
invention
• Make reasonable efforts to work with
small business
• Insure substantial manufacture within
the U.S.
INTELLECTUAL
PROPERTY
The DNA of technology transfer
TYPES OF
INTELLECTUAL
PROPERTY
• Patents
• Trademarks
• Copyrights
• Trade Secrets
WHAT IS A
PATENT
•
The legal right to exclude others from
•
•
•
•
•
•
making,
using,
selling,
offering to sell, or
importing, or offering to import,
a patented item
A patent does not grant an
affirmative right. Patent rights are
exclusionary.
WHAT CAN BE
PATENTED?
Any new and useful:
• Process
• Machine
• Manufacture
• Composition of matter
• Any new and useful improvement of
the above
CONDITIONS OF
PATENTABILITY
•
Utility (aka usefulness)- 35 USC § 101
•
Novelty- 35 USC § 102
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•
Non-obviousness- 35 USC § 103
Disclosure
TRADEMARKS
•
Word, name, symbol, or device that
identifies the source of goods or
services
•
Protects against likelihood of
confusion
•
Rights are based on use or
registration
•
State or federal registrations
TRADEMARKS MUST BE DEFENDED
COPYRIGHT
•Protects the expression of an idea, not
the idea itself
•Protects against copying, not against
independent development of an identical
work
•Copyright protection occurs
automatically once the original work is
fixed in a tangible medium
•Registration of the copyright is NOT
required for protection (but it may be
required to sue for infringement).
COPYRIGHT
NOTICE
© 2013 Board of Supervisors of Louisiana
State University and Agricultural and
Mechanical College through its
LSU Health Sciences Center New Orleans
ALL RIGHTS RESERVED
LET’S GET THIS
OUT OF THE
WAY….
WHO OWNS
INVENTIONS I
CREATE?
• LSU, if conceived or first reduced to
practice, in whole or in part, during
activities that are:
• (1) carried on by, or under the
direction of, LSU personnel,
regardless of when or where
conception or reduction to
practice occurs; or
• (2) supported by funds under the
control of LSU; or
• (3) conceived, created, designed,
developed, or conducted with the
use of LSU facilities, equipment,
or supplies.
Part II, Chapter VII of the Bylaws and
Regulations of LSU
WHAT’S NOT
AN “LSU
INVENTION?”
• An invention or discovery that is
wholly conceived and wholly first
reduced to practice during activities
that satisfy each of the following four
conditions:
•
The activities occur during the
personal, off-duty time of all involved
LSU personnel; and
•
The activities are not supported by
funds under the control of LSU; and
•
The activities are not performed with
the use of LSU facilities, equipment,
or supplies; and
•
The activities are unrelated to any
current or past field or area of
expertise, responsibility, or
employment of any involved LSU
personnel.
SO, UNLESS YOU’RE A
BIOCHEMIST AND YOU
INVENT A MORE EFFICIENT
ROCKING CHAIR ON A
SATURDAY IN YOUR GARAGE,
IT’S LIKELY AN LSU
INVENTION
WHO OWNS
COPYRIGHTED
WORKS I
CREATE?
• LSU, but….
• LSU releases its interest in any
copyright to a book, article,
lecture, thesis, dissertation, other
literary work, work of art, Course
Material, or musical composition
• UNLESS:
• LSU must contractually
deliver such work to a third
party
• LSU publishes the work itself
• No automatic release for
Software or Databases
“LSU
PERSONNEL”
• Defined as, “all LSU Supervisors,
Officers, Faculty, Staff, Research
Associates, Postdoctoral Fellows,
Instructors, Graduate Students, and
other employees of LSU, whether parttime or full-time.”
• Includes:
•
•
•
•
Visiting faculty
Adjunct faculty
Emeritus faculty
LSU undergraduate and
professional students employed
by LSU when those persons act
within the course and scope of
their employment with LSU
WHEN
SHOULD I
TELL YOU
ABOUT MY
IDEA?
The sooner the better!
As soon as you recognize that you have
something that might be useful to others
and could be turned into a commercial
product or service, you should contact
the Office of Technology Management.
It’s important to do so before you
publicly disclose the invention.
WHAT IS A
PUBLIC
DISCLOSURE?
• Written publications: manuscript,
book chapter, journal article,
proceedings, thesis, white paper
• Oral presentations
• Prototypes and samples
• Sale or public use
• Meetings and other communications
such as email or postings on websites
DISCLOSURE
FORM
The more detailed the better!
•
•
•
•
Inventor details
Description of the technology
History of your development of the technology
Sponsorship
www.lsuhsc.edu/administration/academic/otm/Forms.aspx
• NOTE: A Technology Disclosure Form does not protect
the invention; it is simply a record of your invention.
TECHNOLOGY
TRANSFER
From the bench to the bedside…
HOW IS
TECHNOLOGY
TRANSFERRED?
• Research- publications, reports,
presentations, dissertations, etc.
• Students
• Continuing education and professional
development
• Consulting, service on government
panels
• Licensing
WHAT IS THE
TECHNOLOGY
REVIEW
PROCESS?
Review for
public
disclosure
Review
sponsorship
Perform
prior art
search
Perform
market
assessment
Determine best route
to commercialization
License
LICENSING:
WHY DO WE DO
IT?
Ensure public benefit from LSU Health
Sciences Center research
Provide inventor satisfaction and motivation
Meet LSU Health Sciences Center’s
obligations to sponsors and compliance with
Intellectual Property Policy
Generate revenue to support research and
research infrastructure
LICENSING
• Grant of rights to a company allowing
them to make, use, and sell the
licensed technology
– Exclusive vs. nonexclusive
– Startup vs. BigCo
– Diligence provisions:
• Performance milestones and
financial requirements to
insure licensee does not
shelve the technology
WHAT ARE
THE
FINANCIAL
TERMS?
Upfront
license fee
Industry
standard royalty
rates
Reimbursement of
patent expenses
A percentage
of equity
Milestone
payments
Most
licenses will
include:
Minimum
annual royalty
Sublicense fees
ROYALTY
DISTRIBUTION
• 40% to the inventors
– Personal income, not research
dollars
• 15% to the inventors’ departments
• 10% to the Office of the President
• 35% to the Chancellor’s Office
– To be funneled back into the
research enterprise
QUESTIONS?
Patrick E. Reed, Director
Office of Technology Management
433 Bolivar St., Suite 827
504-568-3619
[email protected]
http://www.lsuhsc.edu/administration/otm/