2 mark and susan ip checklist
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2 mark and susan ip checklist Presentation Transcript

  • 1. LAB TO LAUNCH: “IPCHECKLIST” Mark Nuell and Susan Gorman Lab to Launch – San Diego
  • 2. KINDS OF INTELLECTUAL Type of PROPERTY Utility Patent Design Copyright Trademark – Service Protection Patent Mark What is The device, Ornamental Literary, musical, Words, names, symbols Protected? process steps, designs dramatic, artistic, or devices that serve to machine, article of photographic, identify the source of a manufacture, or architectural or other product or service composition of intellectual works matter Standard for Novel and non- Novel and Originality Useful to identify and Protection obvious non-obvious distinguish goods or service Term of Protection 20 years from filing 14 Years from Life of author plus 50 Common law use: as application grant years long as mark is properly used; Fed. Registration: 20 years, but also renewable for 20-year periods Useful internet links www.uspto.gov www.uspto.go www. copyright.gov www.uspto.gov www.ipo.org v www.inta.org search“depatisnet” www.ipo.org© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego
  • 3. Some Important Ideas: • A Patent right is defined by its claims. • A Patent is a “deed” to an invention. • A Patent claim is a property right and thus is a right to exclude others from practicing the invention.© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego
  • 4. Patent Claims The “Claims” of a patent define the scope of the invention. In the U.S., peripheral claiming is used. That is, the claim language defines the “edge” of the property right.© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego
  • 5. 35 USC § 101 Whoever invents ...any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, ...© 2012 Birch, Stewart, Kolasch & Birch, Lab to Launch – San Diego LLP
  • 6. 35 U.S.C. § 112, first paragraph tells what description must be provided to support the scope of a claim...© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego
  • 7. Structure of the Invention How to Make the Invention How to Use the Invention Best Mode© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego
  • 8. Prior Art Limits The Scope Of Patent Claims The requirement for novelty of 35 USC §102 means that a patent claim cannot include what is already in the prior art.© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego
  • 9. Infringement “Infringement” of a patent occurs when a competitor makes, uses, sells, offers to sell or imports an embodiment of the invention without the permission of the patent owner.© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego
  • 10. Infringement Infringing embodiment Non- infringing embodiment claim© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego
  • 11. Infringement • The typical remedies for infringement are: – Damages ($$$) – Injunction (stop use by infringer)© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego
  • 12. IP Checklist • Ownership! – Rights in IP must be clear or investors will balk. – Check employment agreement for obligations to assign – License back or purchase from present owner • Exclusive license preferred • Make sure they are clear owners • Scope of protection – Your IP rights must cover the commercialized embodiments of your invention – Geography … Pharmaceuticals likely require international protection • Freedom to operate – Be sure that you are not infringing someone else’s IP rights or that you can obtain a license© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego
  • 13. Case Studies Chris is working as a post-doc at THE University. Chris wrote an NSF post-doc grant which was funded and is paid exclusively from that grant. Chris’ research relates to signal transduction through a cell-surface receptor; activation of the receptor activates cell proliferation and Chris is working out the genes/proteins involved in the pathway between ligand binding and when/how cell proliferation begins…© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego
  • 14. #1 – Game App Chris is an inveterate gamer. Chris has an incredible idea for a new game that is unlike anything on the market. Even better, it could work as an application on mobile platforms. Realizing that the dudes that developed Angry Birds could have done a better job with their IP, Chris wants to get a patent on the new game. So, Chris works at home on the weekends to develop the game.© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego
  • 15. #1 – Game App• Can Chris start a business making and selling the game app? Lab to Launch – San Diego
  • 16. #1 – Game App• Probably yes – Chris’ employment contract requires disclosure of all inventions, BUT – The game app has no direct correlation with Chris’ research – Chris used no University resources (lab space, computer power, consumables, etc.) in developing the game app Lab to Launch – San Diego
  • 17. #2 – Novel Intermediate Antagonists Chris is diligent in the lab and has unusual insight into biological systems. Chris concludes that the cell proliferation pathway could actually be inhibited through an intermediate in the signaling pathway that is initiated when the ligand binds the receptor. Chris dreams up some novel chemical compounds that bind to that intermediate and gets Chem Post-doc Pat to synthesize them. They perform as expected.© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego
  • 18. #2 – Novel Intermediate Antagonists• Can Chris start a business making and selling the novel intermediate binding compounds? Lab to Launch – San Diego
  • 19. #2 – Novel Intermediate Antagonists• NO –Chris is paid by the University even though the Post-Doc grant is to Chris –Chris’ University employment contract requires disclosure of all inventions –Chris used University resources to develop the invention Lab to Launch – San Diego
  • 20. #2 – Novel Intermediate Antagonists• What if Chris contracted with Sigma-Aldrich to have the compounds made and did not use any University resources? Lab to Launch – San Diego
  • 21. #2 – Novel Intermediate Antagonists• Still NO –Chris is still working for the University –The invention was a direct result of Chris’ research Lab to Launch – San Diego
  • 22. What can Chris do?• Chris can still form a company – Talk to the Tech Transfer Department at the University – Request a license – Procure separate lab space (not University owned/operated) – Build a “wall” between the Post-doc work and the company work Lab to Launch – San Diego
  • 23. Typical Issues Raised • Is there a provision about allocation of IP rights in an employment agreement? (Read it!! – see, Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems Inc., 131 S.Ct. 2188, 98 USPQ2d 1761 (2011) for an interesting story.) • Is the new company forming around an invention made “in the course of” the university research? • Were university resources used in the research that led to the invention? (This includes government grants!) • How much time can a researcher spend on the company?© 2012 Birch, Stewart, Kolasch & Birch, Lab to Launch – San Diego LLP
  • 24. Some Resources • Talk to the Technology Transfer offices sooner rather than later – the time that you are making a pitch for financing is NOT the time to learn the university believes it has a stake in the invention. • Policies relating to IP, technology transfer, and conflicts of interest for UCSD can be found at: http://invent.ucsd.edu/researchers/policies.shtml and http://invent.ucsd.edu/researchers/. • USCD policy relating to outside consulting can be found at www.ucop.edu/ott/documents/consult.pdf.© 2012 Birch, Stewart, Kolasch & Birch, (Thank you Denise!) LLP Lab to Launch – San Diego
  • 25. Contact Us Mark Nuell, Ph.D. Direct (858) 356-5959 DRN@bskb.com Susan Gorman, Ph.D. Direct (858) 345-4981 SWG@bskb.com 12770 High Bluff Drive, Suite 260 San Diego, CA 92130 © 2012 Birch, Stewart, Kolasch & Birch, LLP