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Intellectual Property 101 - University of New Hampshire
 

Intellectual Property 101 - University of New Hampshire

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At the core of university-based innovation is intellectual property. Whether it's patents, copyrights, or trademarks, this presentation explains how intellectual property is protected in general and ...

At the core of university-based innovation is intellectual property. Whether it's patents, copyrights, or trademarks, this presentation explains how intellectual property is protected in general and managed at UNH.

This presentation covers the basics of IP and how understanding intellectual property can actually accelerate the advancement of knowledge in your area, whether it be academic, entrepreneurial, creative expression, etc.

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    Intellectual Property 101 - University of New Hampshire Intellectual Property 101 - University of New Hampshire Presentation Transcript

    • Intellectual Property 101 Maria Emanuel Senior Licensing Manager, ORPC maria.emanuel@unh.edu© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Welcome (and some housekeeping) • 2011-2012 Innovation Catalyst Seminar Series kick-off  4th Thursday of every month, except for a few  http://www.unh.edu/research/innovation- catalyst-seminar-series  Networking Hour • 5-7P, Ballard’s on Main Street • 21! (Must be at least 21 to attend)© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Sponsors! • Much appreciation to our sponsors for this series© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • America Invents Act© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Agenda • America Invents Acts • What is Intellectual Property  Patents • Trade Secrets  Trademarks  Copyrights • Resources • Upcoming seminars© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • What is Intellectual Property?© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Some Definitions • Intellectual Property (IP): Intangible products of creative effort, e.g. technical information, inventions, software, databases, designs, models, methods, literary works, data. Like tangible real or personal property, IP may be bought, sold, or leased. • Intellectual Property Rights (IPR): Legal protections for different forms of IP, e.g. patents, copyright, database rights, design rights, trademarks • Know-How: expertise in knowing how to make things work effectively • Collectively: Intellectual Assets© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Patents© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Patents • Often considered a contract between government and an inventor • A limited and temporary monopoly granted by the government in return for a full disclosure by the inventor of the details of their invention • Specifically, rights to exclude others from making, using, selling, offering to sell or importing the patented invention (35 USC 271) • Criteria for patent protection:  Novel  Non-obviousness  Useful© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Inventions • Patentable  New processes  Machines  Compositions of matter  Designs  Certain plants  New and useful improvements • Non-Patentable  Anything occurring naturally  Processes done entirely by human motor coordination  Inventions only useful for illegal purposes  Printed matter that has no unique shape  Non-operable inventions, such as perpetual motion machines© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • ExamplesUtility Patent  Any new and useful process, machine, manufacture, or composition of matter, and new and useful improvements (35 USC 101)Plant Patent  Any new and distinct, invented or discovered asexually reproduced plants (35 USC 161)Design Patent  Any new, original, and ornamental design for an article of manufacture (35 USC 171)© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Patent Process • At UNH:  File Invention Disclosure with ORPC  http://www.unh.edu/research/sites/unh.edu.research/files/ORPC1.pdf • Provisional Patent Application (PPA)*  Holds priority date for 1 year  Not examined by USPTO  Useful if public disclosure is to occur soon (retain worldwide rights)  Can be filed up to 1 year after public disclosure • Complete Patent Application  Must be filed within 1 year of PPA or public disclosure*  If filed after public disclosure, not eligible to pursue protection outside of the U.S.  Reviewed by USPTO  Application published 18 months after filing (includes PPA filing date)  Cannot be filed if invention has been sold or offered for sale * For now…America Invents Act passed 9/16/2011© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Why Patent? • Right to exclude others from making, using selling, offering for sale, or importing the patented invention for the term of the patent • But:  No guaranteed right to practice invention  Idea can be patentable but dominated by other patents© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Cost of Patents • $$  Patent Search $3K+  Patentability evaluation $3-5K  Prepare patent application $15K+  Filing fees  Office actions  Maintenance payments© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Cost of Patents – Other than $$ • Full disclosure of your invention • Sidebar about trade secrets:  Formulas, processes, and other information that derive economic value from not being generally known AND the owner has attempted to keep the information secret through various mechanisms (including confidentiality provisions, non-competes, processes, systems)  If you need ≥ 20 years of protection, patents probably aren’t the answer!  UNH does not accept trade secrets© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • What To Do With a Patent • Treat as real property (bought, sold, traded, or leased/licensed) • License • Cross-license to defend against infringement • Force competitors to design around patent • Build value of company/university • Create perception of innovation • Create prior art against others • Defend it© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Bars to Obtaining Patents • Enabling public disclosure  US is first to invent until March 16, 2013  Rest of world is first to file (and we are, too, after March 16, 2013) • Statutory bars  On sale bar (includes “offer for sale”)  Publications – includes inventor’s own articles  Public use/disclosure • Documentation  Lab notebooks vs. Napkins  Invention disclosure forms© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Trademarks© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Trademarks • A word, name, symbol or device which is used in trade with goods and services that distinguishes the goods and services from others  Letter combinations - ABC, CBS, NBC  Alphanumeric combinations - V-8, 7-ELEVEN  Slogans – “Intel Inside”  Images • Nike swoosh  Colors • Pink (Owens Corning insulation) • Purple (AstraZeneca’s Nexium for heartburn)  Musical Notes - NBC chimes© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Trademarks • Trademark rights may be used to prevent others from using a similar mark, but not to prevent others from making the same goods or offering the same services • ™ or SM used when organization regards name or slogan to be their trademark or service mark • ® used when trademark or service mark is registered by USPTO© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Federal Registration Of A Trademark • To obtain registration of a trademark:  Goods bearing the mark must have been shipped in interstate commerce or a bona fide intention to do so  Services under the mark must have been rendered in more than one state or a bona fide intention to do so  Perpetually renewable in ten year periods, provided the mark continues to be in use  Cost: ~ $2,500-$3,500, includes search  Mark must first be used in commerce© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • No Registration If: • Includes immoral, deceptive, or scandalous subject matter • Includes a flag, coat of arms, or other insignia of the US or of any state or municipality, or of any foreign nation • Consists of a name, portrait, or a signature identifying a particular living individual unless by consent • Resembles another registered mark so as to likely cause confusion among consumers© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • UNH Trademarks • Bringing in the Bystander™ (Prevention Innovations) Bringing in the Bystander™: Establishing a Community of Responsibility • UNHCEMS® software (Research Computing & Infrastructure) • UNH Wildcats© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Copyright© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Copyright • Copyright arises automatically the moment an original work of authorship is fixed in a tangible medium of expression, published or unpublished • “Original” means that the work was created independently by the author, and that it possesses some minimal degree of creativity • Independent creation does not mean "novel" as in patent law • Examples  A book written in manuscript form  Software code on paper  Software code in digitized form  E-mail© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • The Exclusive Rights Of Copyright • Copyright is a bundle of legal rights of an author, artist, composer, or other creator of intellectual property to control the use of the work by others  To copy the copyrighted work  To prepare derivative works based upon the copyrighted work  To distribute copies of the copyrighted work to the public  To perform the copyrighted work  To display the copyrighted work  One can license these rights to others • Can pick and choose what is licensed • Not all or nothing© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • What May Be Copyright Protected? Dramatic Musical works works Pantomime and choreographic works Pictorial and sculptural works Sound Architectural recordings works Audiovisual works Literary works© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • What Cannot Be Copyright Protected? • Facts • Ideas • Processes or Procedures • Concepts • Principles • Systems or methods of operation • Discoveries • Works created by an officer or employee of the United States Government, acting within the scope of his or her official duties.© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Differences Between Copyrights and Patents • Patents protect ideas – Copyrights protect the expression • Copyright protection runs for the life of the last surviving author plus 70 years while patents are for 20 years from “full” application • Patents prohibit anyone from making, using, or selling whereas copyrights prohibit anyone from copying the expression • Costs for registering a copyright are $35 and patent costs can exceed $20K for a US patent (application filing, prosecution, maintenance fees) • US Patent Law allows the inventor to file a patent application within 1 year of public disclosure and Copyright permits an author to register their work at any time (no time limit) • Patent Pending can only be used if application filed whereas Copyright can use © without registering with US Library of Congress© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Copyright Ownership • Vests in the author the moment the work is fixed in a tangible medium of expression • Vests in employer if work created by employee within scope of employment • Work-for-hire • Can be governed by agreement • UNH policy states that ownership rests with the author for “exempted scholarly works”© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Duration Of Copyright • Life of author plus 70 years  Measured from death of last surviving author • Works-for-hire  95 years from the year of first publication, or  120 years from the year of creation© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Registration And Notice Requirements • Registration is not required but is a requirement to file a copyright infringement suit • Copyright notice is recommended:  Informs the public that a work is protected by copyright  Prevents an infringer from using the innocent infringer defense© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Copyright Notice • © , “Copyright”, “COPR.” • Year of first publication • Name of copyright owner © 2011 University of New Hampshire© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Copyright Considerations • “I found the text on the Internet, so I can just copy it.” • “I copied this graph from a journal article and don’t need to seek permission because I’m using the information for an educational seminar.” • “I gave out my students’ portfolios from last year as an example for this semester. I don’t need their permission because this was work created for my course.”© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Copyright Considerations • “I found the text on the Internet, so I can just copy it.”  True, only if the information is in the Public Domain • “I copied this graph from a journal article and don’t need to seek permission because I’m using the information for an educational seminar.” • “I gave out my students’ portfolios from last year as an example for this semester. I don’t need their permission because this was work created for my course.”© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Copyright Considerations • “I found the text on the Internet, so I can just copy it.”  True, only if the information is in the Public Domain • “I copied this graph from a journal article and don’t need to seek permission because I’m using the information for an educational seminar.”  True, only if use of the graph falls under Fair Use • “I gave out my students’ portfolios from last year as an example for this semester. I don’t need their permission because this was work created for my course.”© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Fair Use • “Fair use” permits certain limited reproduction of copyrighted works for educational or research purposes without the permission of the copyright owner. • Not all copying or reproductions by an educational institution qualifies as fair use.© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Four Factors Of Fair Use • There are four factors to be considered when determining fair use:  The purpose and character of the use. • Is it for commercial use or for nonprofit educational purposes? • To what extent has the original work been transformed by the new work? Examples of transformation include parody, criticism, and commentary.  The nature of the copyrighted work. • Subjective evaluation of the worthiness of copyright protection for the original work.  The amount and substantiality of the portion used relative to the copyrighted work as a whole.  The effect of the use on the potential market for or value of the copyrighted work.© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Four Factors Of Fair UseCredit: University of Minnesota Libraries© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Copyright Considerations • “I found the text on the Internet, so I can just copy it.”  True, only if the information is in the Public Domain • “I copied this graph from a journal article and don’t need to seek permission because I’m using the information for an educational seminar.”  True, only if use of the graph falls under Fair Use • “I web-posted my students’ portfolios from last year as an example for this semester. I don’t need their permission because this was work created for my course.”  Each student owns the copyright for any work that they created; in this example, the instructor needs to seek permission from each student in order to continue to use their work© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • IP Resources: UNH • Office for Research Partnerships & Commercialization • http://www.unh.edu/research • Intellectual Property Policy • http://usnholpm.unh.edu/UNH/VIII.Res/D.htm • USNH General Counsel Office • http://www.usnh.unh.edu/fac/offices/counsel.shtml • Printing Services http://www.printing.unh.edu/copyright.html • Primer on Copyright Law and Recommended Resources • http://www.library.unh.edu/loan/loan/reserves_edit/pdfforms/UNH%20C opyright%20Primer.pdf • Digital Millennium Copyright Act (DMCA) Implementation at UNH • http://www.unh.edu/cis/dmca/ • Library http://www.library.unh.edu/about/polreg/copyright.shtml • Research Policies and Procedures www.unh.edu/orps/policies.html© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • IP Resources: Other • U.S Patent and Trademark Office www.uspto.gov • U.S. Copyright Office www.copyright.gov • What is Copyright Protection? www.whatiscopyright.org • U.S. Works In the Public Domain www.unc.edu/~unclng/public-d.htm • Copyright Website www.benedict.com • Copyright Clearance Center www.copyright.com • Stanford University Library: Copyright and Fair Use webpage fairuse.stanford.edu/ • United States Copyright Office: Reproduction of Copyrighted Works by Educators and Librarians • www.copyright.gov/circs/circ21.pdf • The Association of American Universities, the Association of Research Libraries, the Association of American University Presses, and the Association of American Publishers: Campus Copyright Rights and Responsibilities: A Basic Guide to Policy Considerations • www.acenet.edu/AM/Template.cfm?Section=Search&section=Legal_Issues_an d_Policy_Briefs1&template=/CM/ContentDisplay.cfm&ContentFileID=1332© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Fall 2011 Seminar Schedule • Thursday, 27 October 2011  Non-dilutiveCapital for Small Businesses – SBIR/STTR Funding and the NHIRC • Thursday, 17 November 2011  Dilutive Capital for Small Businesses – Venture Funding and the NH-ICC© 2011 University of New HampshireOffice for Research Partnerships and Commercialization
    • Office for Research Partnerships and Commercialization Marc Sedam, Executive Director Maria Emanuel, Ph.D., Senior Licensing Manager Gretchen Smith, Program Coordinator Paige Smith, Sr. Program Support Assistant Lynn Szymanski, Intern Gregg Hall 35 Colovos Road Durham, NH 03824 862-4125 www.unh.edu/research @UNHInnovation© 2011 University of New HampshireOffice for Research Partnerships and Commercialization