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Intellectual Property Overview Academic Leadership Workshop

Intellectual Property Overview Academic Leadership Workshop






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  • Most frequent issues we receive. Time built-in for questions. Marked increase in CDA and MTAs in research and management contexts.
  • 3 Separate ownership nexuses. At OSU My a faculty or staff employee. Use of OSU resources or funding. Law codifies the Common Law employer ownership of employee IP. QUESTION – in case, PI received federal funding – Is this relevant?
  • Dr. Mine decides to leave the University and take the data. Can he?
  • Legal Affairs has interpreted Ohio laws interest in ‘discoveries’ to include the underlying data – similar to federal law.
  • 2-Part Test. 1. Not related. 2. No University resources used.
  • Academic Exception to work-for-hire doctrine.
  • OSU will claim if uses resources beyond what used in normal classroom or coursework. Ford Seat Design Example. Special Funding.
  • Indemnification. Export Control Issues.

Intellectual Property Overview Academic Leadership Workshop Intellectual Property Overview Academic Leadership Workshop Presentation Transcript

  • Intellectual Property Overview Academic Leadership Workshop February 8, 2006 Science & Engineering Library Mike Mitchell, Office of Legal Affairs Todd Guttman, Office of Research
  • Agenda
    • Intellectual Property Basics
      • Patents
      • Copyrights
      • Fair Use of Copyrighted Materials
    • IP Ownership
    • University Patent & Copyright Policy
    • Confidential Disclosure and Material Transfer Agreements
  • Legal Authority for Patent and Copyright Protection
    • U.S. Constitution and Federal Statutes
  • Patent Rights:
    • A grant by the federal government to an inventor of limited exclusive rights to an invention.
    • Grants the right to exclude others from making, using, or selling, and not the right to make, use or sell the claimed invention. Term is generally 20 years.
  • What Can Be Patented?
    • An invention must qualify as a process, machine, article of manufacture, composition of matter, or any improvement thereof, to be patentable.
    • Patentable inventions must be useful, novel and non-obvious.
  • Utility
    • An invention must be useful, that is, it must solve some practical problem. Threshold is notoriously low.
  • Novelty
    • An invention must be unique to the inventor, not something that someone else had placed in the public domain. Statutory bars to patentability: For example, a process was known or used by others in the U.S. before the subject invention. Result: Bar based on novelty (Prior Art).
  • Non-Obviousness
    • Most subjective standard.
    • If the claimed invention would have appeared obvious to someone with ordinary skill in the subject area, then one can not obtain a patent for it.
  • U.S. Statutory Bar to Patentability
    • A one year statutory bar is triggered once an applicant offers the invention for sale or publicly discloses or uses the invention.
  • Who is an Inventor?
    • An inventor is any individual who contributes to the conception of or reduction to practice of the claimed invention.
  • Case Study
    • Dr. Jones discloses a new “Composition of Matter” to OTL. A new product formed by the intermixture of two or more ingredients and possessing properties which belong to none of these ingredients in their separate state. She has combined aluminum, sand and lemonade to create an unbreakable glass.
  • Case Study #1
    • Analysis. Invention needs to be new. Has someone done this before? How? What’s new about her process? Has the approach be discussed in article or publications?
  • Case Study
    • The claimed invention must be useful. Low bar. If the inventor can point to some kind of helpfulness, auto glass, that should do it.
  • Case Study
    • Is this an obvious process? What is or is not an obvious step to take appears readily to those who do the kind of work at hand. Look to prior art in the field, ascertain the differences in the process and current examples, and determine obviousness.
  • Copyright
    • Protects an author’s artistic expression in a literary work, musical work, computer software, video, motion picture, sound recording, photo, sculpture, etc.
    • Can register the “work” with the U.S. Copyright Office
  • No Need to Register
    • Copyrights are automatic once they are fixed in a tangible medium of expression.
    • Registration gives author additional statutory rights against an infringer.
  • The Rights in Copyright
    • A copyright is a “bundle” of exclusive rights:
    • to reproduce the work in copies
    • to distribute copies
    • to perform the work publicly
    • to display the work publicly
    • to prepare derivative works
  • Creation defines ownership
    • Who owns the copyright in software?
    • The creator(s), unless . . .
    • It’s a work made for hire or
    • It’s assigned to another party
  • Copyright Does Not Protect:
      • Underlying ideas
      • Portions in the public domain
      • Aspects dictated by constraints such as standards, specs or compatibility requirements
  • Case Study #2
    • Dr. Adams has written a computer program which allows a researcher to analyze more efficiently the content of MRI images to allow more effective clinical treatments.
  • Case Study: What Does Copyright protect in Computer Software?
    • Code
    • Manuals and documentation
    • GUIs/“Look and feel”
    • SSO: structure, sequence, organization
    • For databases, organization but not data
  • Case Study Copyright Protection vs. Patent Protection for Software
      • Protects the GUI and the code itself, but not the software’s function
      • Utility is irrelevant to protection
      • Reverse engineering is allowable
    • PATENT:
      • Protects the software’s function, can be broader than just the code
      • Utility is required for protection
      • Reverse engineering is prohibited
  • “Fair Use” of Copyrights
    • The concept of fair use is a fairness standard developed to permit use of copyrighted material without infringement for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. Must be limited and for a non commercial purpose.
  • Case Study #3
    • Dr. Al Mine, a professor in Human Ecology, has created a psychomotor testing methodology, which shows great promise as a non-invasive test for identifying repetitive workplace injuries.
    • Dr. Mine has received research funding through NIOSH – the National Institute for Occupational Safety and Health as well as through an Ohio State Innovation Grant.
    • Dr. Mine considers the methodology to be his, however, claiming that he created it while working on weekends and while consulting for private clients.
  • IP Ownership Under Ohio Law
    • Ohio Revised Code § 3345.14
    • All rights to and interests in discoveries, inventions, or patents which result from research or investigation conducted in any experiment station, bureau, laboratory, research facility, or other facility of any state college or university, or by employees of any state college or university acting within the scope of their employment or with funding, equipment, or infrastructure provided by or through any state college or university, shall be the sole property of that college or university.
  • IP Ownership Under Bayh-Dole
    • The Bayh-Dole Act was enacted into law on December 12, 1980 as P.L. 96-517 and created the following:
      • A uniform federal patent policy which granted universities title to inventions developed through government funding.
      • Universities must file patents on inventions they elect to own.
      • The government retains a non-exclusive license to practice the invention throughout the world.
  • Data Ownership
    • Federal policy and guidance supports institutional claims of data ownership for federally funded research.
    • Under OMB Circular A-110, the rights to “intangible property” belong to the institutional grantee.
    • The NIH Grants Policy Statement states that “grantees own the data generated by or resulting from a grant-supported project.”
    • The National Science Foundation gives grantees rights to their data as well.
  • The Ohio State University Policy on Patents and Copyrights
    • ADMINISTRATIVE SCOPE--Covers all students, faculty and other employees, and all units of the University.
    • SUBJECT MATTER SCOPE--Covers all intellectual property matters, e. g., inventions, works of authorship, patents, copyrights, licenses, etc., relating to sponsored programs or other research activities.
  • Continued
    • INVENTIONS--Most inventions must be reported to the Director OTL. Inventions neither directly related to the inventor's University activities or responsibilities nor involving significant use of University facilities or resources will not be claimed by the University. Others may be either claimed for development through the University or released to the inventors.
  • Contiued
    • WORKS OF AUTHORSHIP--Copyright in most books, papers, artistic works, etc., will belong to their individual authors (creators), but this does not extend to material contained in such works to which the University has independent rights (such as a computer program included as an appendix) nor to works produced as an integral part of a sponsored program or other specific responsibility.
  • Continued
    • STUDENT INVENTIONS AND WORKS OF AUTHORSHIP--Exempt unless produced in capacity as employee, as part of a sponsored program or in certain other special circumstances.
    • ROYALTY SHARING--Except for on-the-job works of authorship (including computer software) of non-faculty employees, the inventors' or creators' share of royalties received by the University (including the Research Foundation) for their inventions, etc., is as follows: For gross royalties that are up to $75,000 the individual(s) receive one half of gross. Anything beyond $75,000 one third of {gross in excess of $75,000 minus any expenses in excess of $37,500}. For example: for $200,000 cumulative gross royalties, with $42,500 cumulative expenses, the cumulative share for all individuals would be: 1/2 x 75,000 + 1/3 x [(200,000 - 75,000) - (42,500 - 37,500)] = $77,500
    • An individual's share is not dependent upon continuing affiliation with the University.
  • Case Study #4
    • Dr. Small, a professor in Biomedical Engineering, has been collaborating with a colleague, Dr. Klein, at Eastern Polytechnic University for years.
    • Dr. Small plans to send Dr. Large a sample of his recently-created carbon nanotubule, which his lab has successfully coated to make it non-bioreactive.
    • Dr. Small has heard of the new Export Control regulations and checks with the Office of Research before sending a sample of his nanotubules to his colleague in Prague – just to be sure.
  • Case Study #4
    • The Office of Research handles the Export Control issue, but strongly recommends that Dr. Small first have a material transfer agreement signed before sending the sample.
    • Dr. Small has been exchanging samples for years with his colleague without such formalities and is concerned that his colleague will be offended.
  • What is a Material Transfer or Confidential Disclosure Agreement (MTA or CDA)?
    • Formal agreement governing the transfer of proprietary and/or confidential information or material from one party to another
    • Can be an imbedded agreement, or be a stand-alone agreement (for example, sponsored research agreement, collaboration agreement or consulting agreement)
    • Protects the provider of information or materials from liability resulting from use of the materials or information
    • May impose restrictions on use and further transfer of the information or materials
    • Often gives providers certain rights in research results
  • Why are MTA and CDAs Needed?
    • The Past …
    • Research information and materials were freely exchanged, without formal arrangements
    • Then…
    • 1980 Bayh-Dole Act provided Universities with clear title to their inventions
    • Subsequent Supreme Court decision allowed patenting of genes
  • Why are MTA and CDAs Needed?
    • Now …
    • Increasing global competition (commercial and academic)
    • All research materials increasingly viewed as as valuable and proprietary
    • Academic institutions are following their commercial partners.
    • Result …
    • More protection and constraints
  • The Problems
    • CDA’s and MTAs are increasingly complex.
    • The terms imbedded in the agreements can have far-reaching consequences (for both parties).
    • Increasingly, information or material providers are risk-averse when sharing their proprietary materials.
    • There may be no other sources for the information or materials.
    • The researcher wants it - NOW.
    • Recipients often have little leverage in the negotiation.
  • The Result
    • One of the most difficult agreements institutions are faced with.
  • Key Provisions in CDA/MTAs
    • Scope and definition of the information or materials
    • Restrictions on research use
    • Data ownership rights
    • Commercialization rights (Patent and Licensing Rights)
  • CDA/MTA Key Principles
    • Informed participation
    • Objective decision making
    • Accessibility for research purposes
    • Open publication dissemination
    • Commitment to students
    • Legal integrity and consistency
    • Fair consideration for any commercial use
  • AUTM MTA Special Interest Group Survey in 2003
    • Most significant issues for academic institutions
    • 1. Overly-Broad definitions of Information or Materials
    • 2. Automatic non-exclusive royalty-free license (NERF) and the right to sublicense
    • 3. Developing processes to reasonably track Provider obligations
    • 4. Ownership (sole or joint) of resulting inventions
    • 5. Definition of Invention or Joint Invention
    • 6. Control of patenting and commercialization
  • Facilitating Transfers
    • NIH Simple Letter Agreement for non-proprietary research tools
    • NIH Uniform Biological Material Transfer Agreement (UBMTA)
  • UBMTA and Simple Letter Agreement
    • UBMTA resulted from a joint effort by the academic community and the NIH to simplify and expedite transfers of material between academic institutions
        • Master Agreement with a comprehensive set of clauses
        • Master Agreement executed just once and then separate implementing letters for specific transfers
        • Result is a rapid procedure for signatory institutions
    • Simple Letter Agreement is a one page MTA covering the minimum provisions for a transfer
  • Pros and Cons of the Simple Letter Agreement or UBMTA
    • Pros:
      • Straightforward and saves time negotiating
      • Status quo terms
      • Meets NIH guidelines
    • Cons:
      • Most often not accepted by commercial partners
      • Researcher may feel there is not enough control
  • Who handles?
    • Grants & Contracts vs. Tech Transfer vs. College or Department
        • Need to understand the information being exchanged or the science being performed
        • Need to understand the impact on the current projects and funding sources
        • Need to understand the legal nuances and implications of the terms
        • Need to understand impact on existing inventions
        • Must live with consequences of MTA terms
  • Other Issues & Questions