Transcript Document
Intellectual Property and Licensing at RIT Varda N. Main Director, Technology Licensing Office PI Institute – January 16, 2003 Agenda IP at RIT Processes – – RIT Technology Licensing Office Inventor’s/Author’s Role Students and IP Ownership Protecting Intellectual Property Bringing Technology to the Marketplace Federal Funding and University IP IP Considerations When Working With External Sponsors Resources INTELLECTUAL PROPERTY AT RIT Intellectual Property at RIT Purpose of RIT IP Policy (C3.0) – – – Anticipated Outcomes of RIT IP Policy – – RIT Technology Licensing Office Support educational mission of RIT Enhance reputation of RIT and its faculty Leverage RIT IP to benefit faculty, staff, students and the Institute Encourage faculty and staff to engage in scholarship, research, and special projects Benefit creators and the Institute What IP has RIT Created? Educational materials and tools – – – – – Inventions – – Devices Methods or processes Recent product launches – RIT Technology Licensing Office Videotapes Software Instructional guides Training programs Plays, artistic works – ASL Video Dictionary and Inflection Guide C-Print® Pro The Inventor’s/Author’s Role To promptly and completely disclose creations to RIT To be a team member in assessing the commercial potential of the creation and then in the marketing and actual commercialization To share in resulting licensing fees and royalties – RIT Technology Licensing Office 50% after deducting allowable expenses You’ve Created Something…..Now What? Disclose it to RIT in a timely manner – – – – There may be requirements to disclose to your funding agency/sponsor Submit completed Invention Disclosure Form to GCIP If possible make your disclosure to RIT before making any public disclosures For copyrighted material mark with © 2003 Rochester Institute of Technology – RIT Technology Licensing Office For greater protection also register with US Copyright Office (through TLO) For trademarks register through Candy Fischbach, Bus Svces How to Determine Who Owns the IP? RIT Technology Licensing Office Was the work in your annual Plan of Work? Was the work a commissioned work? Did you use RIT facilities and resources? Did RIT or other sponsors fund the work? Does Bringing Something to the Marketplace Mean I Can’t Publish? NO You can publish research results and protect the IP – – RIT Technology Licensing Office It’s a matter of timing and balance TLO can help you with this Students and IP Ownership RIT does not own student IP unless: – The student was paid by RIT to perform the work that led to the IP RIT Technology Licensing Office As part of RIT employment Through grant or contract funding secured through RIT PROTECTING IP Forms of Intellectual Property Copyrights Trade Secrets Trademarks – – – Trademark Service Marks Trade Name Patents – United States – RIT Technology Licensing Office Provisional Full application International Trade Secrets Definition – Factors in determining if it is a trade secret – – – – RIT Technology Licensing Office Confidential, unpatented information that is protected by keeping the information secret Extent information is known in industry Extent measures taken to safeguard secrecy Value of information to owner and competitors Ease/difficulty in independent development Trade Secrets Advantages – – – – Easy to control Easy and inexpensive (relatively) to protect Indefinite term (determined by degree of protection) No patentability requirements to qualify Disadvantages – Limited ability to exploit information – – No protection against independent development No statute law protecting trade secrets Remedy – RIT Technology Licensing Office Reverse engineering – Injunction or damages Onus is on owner to establish case Patents What is patentable? – – Key elements: – – – RIT Technology Licensing Office Any new and useful art, process, machine, manufacture or composition of matter or any new and useful improvement Includes software and mask works Novelty Utility Non-obviousness U.S. Patents RIT Technology Licensing Office First to invent vs. first to file in rest of world Term is 20 years from date of application One year grace period for prior disclosure Application published 18 months after filing Software Patents Software-based inventions Patentability criteria evolving and include: – – – – RIT Technology Licensing Office Produces new/useful data interpretation Controls device performing new/useful function Solves computer-related problem Improves existing computerized process What Can One Copyright? Protects manner of expression; not the idea, process or concept Precludes actual copying Exists automatically on creation of work – Term – – RIT Technology Licensing Office Legal registration enhances protection author’s life + 70 years; lesser of 95 years from first publication or 120 years from creation for works for hire Creations and works of art drawings/prints architectural plans multimedia works musical works text motion pictures software internet-distributed content Copyright RIT Technology Licensing Office Owned by RIT as “work for hire” of RIT employee RIT policy gives ownership to authors for scholarly articles CREATE by authorship DESTROY only by express dedication to public Trademarks Definition – – RIT Technology Licensing Office Identifying mark, word, logo or symbol used by someone in commerce to identify or distinguish their goods and services from all others Sometimes confused with “tradename” which is the company name under which business is conducted. BRINGING TECHNOLOGY TO THE MARKETPLACE When is the Right Time to Bring a Product to Market? RIT Technology Licensing Office When it is ready for use in the marketplace When we have done as much development as makes sense for us to do ourselves When is the window of opportunity for the product or service? How Does RIT Decide What to Bring to the Marketplace? RIT Technology Licensing Office Invention Disclosure/patenting review process Marketability assessments performed by TLO with the inventor Options for Commercializing Technologies RIT Technology Licensing Office License Distributor Publisher Direct sales Start-up company Licensing: The View on the Other Side of the Table RIT Technology Licensing Office Perception of business risk. Who’s bringing what to the table? What are the 3 points of difference for the technology/opportunity? What would make a user switch to this product/process/service? What is needed to bring this to the commercial marketplace? Price to purchase vs. cost to develop FEDERAL FUNDING AND UNIVERSITY IP Universities and the Bayh-Dole Act Stipulates that all IP developed by a university using federal funding is owned by the university – RIT Technology Licensing Office Includes flow through funds US Government and Use of Federally-Funded Technologies The Government funds technology development – – – To meet government needs for a technology solution to a problem To assist in economic development by helping bring new technologies to the marketplace To provide a return to the US taxpayer from the technology through: RIT Technology Licensing Office Job creation in the US Substantial manufacturing in the US Net economic benefit to the US US Government and Use of Federally-Funded Technologies The government wants to encourage use of new technologies in the marketplace – The government wants to encourage further R&D – RIT Technology Licensing Office Agreement terms encourage/expect technology owners to bring technologies to the marketplace IP protection (e.g. patents and copyright) permit technology owners to disclose their technologies without losing value in the marketplace Required Terms in US Grants Government Use Rights – – RIT Technology Licensing Office The government gets a non-exclusive, royalty-free right to use technologies developed with federal funds for all government purposes This includes the ability of the government to grant licenses to government contractors to use the technology when doing work for the government Required Terms in US Grants Government March-In Rights – RIT Technology Licensing Office As the government wants to see technologies brought to the marketplace it can require the owner of a technology funded with federal dollars to license out that technology if the owner is not actively bringing the technology to the marketplace IP CONSIDERATIONS WHEN WORKING WITH EXTERNAL SPONSORS IP Considerations When Working with External Sponsors What does the sponsor need? – – – – Rights to use IP? Ownership of IP? Limitations on RIT publications and presentations? Limitations on types of personnel who can work on project? Students allowed? – RIT Technology Licensing Office Undergraduates? Graduates? Citizenship and export control considerations? IP Considerations When Working with External Sponsors Will the sponsor sign a NDA? – Can involved students sign a NDA? – Employment contracts take precedence Can you do future work in this area? – – RIT Technology Licensing Office Contamination considerations RIT by itself? With other sponsors? “To share an asset, usually it must first be divided. But knowledge is one of the few assets that multiplies as it is shared.” . . . . . Indian proverb RIT Technology Licensing Office Resources US Patent and Trademark Office – US Copyright Office – www.loc.gov/copyright/ Good IP Site – www.uspto.gov www.ipmall.fplc.edu Technology Licensing Office Varda N. Main, Director 2011 Louise M. Slaughter Building (Bldg. 78) 475-2986 [email protected] www.research.rit.edu RIT Technology Licensing Office