Intellectual Property Basics at WPI: Inventions and Patents Workshop

Mike ManningWPI Director of Technology Transfer

Attys. Jesse Erlich and Janine Susan, Ph.D.Burns & Levinson, LLP

March 27, 2007

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OutlineOutline WPI Tech Transfer Office

– Invention Disclosure Process– Non-Disclosure Agreements– WPI IP Policy

Burns & Levinson, LLP– Patents– Trade Secrets– Copyrights– Focus area: Chemical & Biotech

http://www.wpi.edu/Academics/Depts/MGT/CEI/Programs/Workshops/20070327.html

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TTO Mission TTO Mission

To support the commercial development of innovation from within the WPI community for the benefit of WPI inventors, the university, and the

region.

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TTO Objective: CommercializationTTO Objective: Commercialization

www.educause.edu

Protect IP with commercial potential

Transfer to capable, motivated partners

Provide follow-on support & resources

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PatentsPatents

Utility, Design, Plant Confer rights to owner Prevent competitors from profiting from

the invention defined by the patent claims

Rights can be enforced in court

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Four HurdlesFour Hurdles

1. Patentable subject matter

2. Utility

3. Novelty

4. Non-obvious

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You May Have an Invention – What Next?You May Have an Invention – What Next?

Contact TTO early re: disclosure matters Identify & document invention – identify

inventive activity and keep good records: – Lab notebooks– Working notes, sketches, drawings– Draft publications– Date, sign, & witness lab records as feasible

Review technical, product, and patent literature (“prior art” awareness) regularly

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Basics About DisclosingBasics About Disclosing

Disclosure: enabling details of the invention sufficient to reproduce invention with ordinary skill in the art without additional inventive activity or extensive experiment.

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Basics About DisclosingBasics About Disclosing

Public, Private, & Institutional Disclosures– Public: publications, presentations, media

interviews, posters, internet, etc. - publicly accessible record

– Private: restricted access discussions, meetings, etc.

– Institutional: formal university document with sign-offs, etc. compliant with federal req’ts.

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Concerns About Disclosing Concerns About Disclosing

US priority based on “First to Invent”; Foreign based on “First to File” disclosure

Public disclosure impacts IP rights:– Max. 1 year to file US patent application– Loss of foreign rights in general

Private Disclosure esp. to technically skilled individuals requires discretion to avoid co-invention or separate invention of improvements

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Requirements to DiscloseRequirements to Disclose

If inventions are conceived or reduced to practice on a federally-supported research program, 37CFR401.14 (Bayh-Dole) applies:

– Timely Formal Disclosure to university TTO– Report by TTO per federal sponsor guidelines

(default: forwarding of Formal Disclosure to agency within 2 mos. of receipt by TTO)

– University agreements with inventors to disclose assign federally-sponsored inventions to university

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Requirements to DiscloseRequirements to Disclose

Corporate-sponsored project or program or other non-federal external sponsorship probably requires invention notification and other IP provisions.

WPI IP Policy conditions apply to internal support of any kind at WPI – reasonable diligence on disclosing req’d.

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Institutional Disclosure Process Institutional Disclosure Process WPI Invention Disclosure Procedure

– http://www.wpi.edu/Admin/Research/Sponsored/Handbook/invention.html

Don’t publish or present invention details until:– Discussion with WPI IP Office of prospective

invention disclosure

Research, prepare, & submit a WPI Disclosure Form if indicated

– N.B.: FILING WPI DISCLOSURE FORM DOES NOT PROTECT INVENTION - PTO APPLICATION FILING IS NECESSARY.

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Confidentiality Agreements, etc.Confidentiality Agreements, etc.

Confidentiality Agreements (“CAs”) and Non-Disclosure Agreements (“NDAs”) are means to discuss enabling details while preserving IP rights

Negotiated, signed, and held by authorized university personnel (ORA, TTO, etc.) in coordination with PIs.

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Confidentiality Agreements, etc.Confidentiality Agreements, etc.

Caution: protection of IP rights under CAs and NDAs relies on compliance of signatories – if violated and public disclosure occurs, IP rights may be lost and sole recourse is to sue violator

TAKE CARE in entering CA/NDAs and limit enabling details as feasible.

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Invention Disclosure FormInvention Disclosure Form

Fill it out Get required signatures Return to Director of Technology Transfer

www.wpi.edu/Admin/Research/Sponsored/Forms/

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Prior Art SearchPrior Art Search

Primary search by technically cognizant inventor is essential – active researchers, related patents, applications, key words, etc.

– Textbooks– Journals– Technical magazines– Manufacturers’ catalogs– Patents - www.uspto.gov

Gordon Library Reference Resources

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Post-WPI Disclosure Form SubmissionPost-WPI Disclosure Form Submission

Evaluation of Disclosure Form information (e.g. complementary search, market assessment, etc.) for patentability, commercial potential, and WPI “fit”

– WPI owns:• We will designate a patent attorney• You will need to work with that attorney

– You own: • We will sign a letter relinquishing any WPI claims• You work with your patent attorney

Patent application is prosecuted Patent Issues

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Patent Protection ProcessPatent Protection Process

Application Options

– Provisional (USPTO, $4K) - not examined unless later dispute arises, establishes first to invent priority, 1 year to file utility

– Utility (USPTO, $12K; Int’l/PCT $4K) – full filing for examination

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Post-Application Disclosure Post-Application Disclosure 18 months from priority date patent offices will

publish original utility application, provide status information, and access to other case documents

Prior to publication disclosure of invention details described within filed provisional or utility applications is protected, HOWEVER

Exercise caution in post application technical discussions – improvements and developments to invention not specified in applications are not protected.

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Intellectual Property PolicyIntellectual Property Policy

Inventions Ownership Royalty division Copyrights/mask rights/service and

trademarks Appeals Students, faculty, staff

www.wpi.edu/Pubs/Policies/intell.html

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Inventor CategoriesInventor Categories

- All persons performing research or scholarship at WPI, utilizing WPI resources/facilities, or deriving funds from WPI are either students or faculty/staff

- - RAs are considered faculty/staff- - TAs are considered students

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Inventor OwnershipInventor Ownership

Faculty/Staff

- Own time, facilities, and resources

- Not within stated objectives of current sponsored research, PLAN projects, thesis or dissertation research

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WPI OwnershipWPI OwnershipFaculty/Staff Rules

- Within stated objectives of current sponsored research, PLAN projects, thesis, or dissertation research, OR

- Significant use of WPI facilities and resources (i.e. appreciable expenditure of WPI funds), OR

- Faculty/staff while in role of student (project, thesis, directed study or research, course work)

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Royalty Rule IRoyalty Rule I

If WPI pursues the patent, then WPI will absorb the costs and will share royalties on a 50-50 basis with the inventor(s), after the costs of the patent are recovered, or will share royalties in accordance with WPI institutional agreements.

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Royalty Rule IIRoyalty Rule II

If the student(s) wish to pursue the patent, WPI will assign any ownership rights it may have to the student through a jointly signed agreement providing that the student will give 10 percent of net future financial gains from the patent to WPI. The student will absorb the costs of pursuing the patent. Alternatively, if the student wishes to have WPI absorb the costs of pursuing the patent, then Rule I applies.

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Royalty Rule IIIRoyalty Rule III

The inventor(s) will pay all costs associated with patenting the invention, and will receive all benefits from the patent.

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Multiple Inventors: Rules PrecedenceMultiple Inventors: Rules Precedence

- Rule I takes precedence over Rules II and III

- Rule II takes precedence over Rule III

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Student Rule 1Student Rule 1

For an invention made by students, on their own time, with their own facilities and resources, and in research/projects not within the stated objectives of their current sponsored research, PLAN projects, or thesis or dissertation research, the invention is owned by the inventor(s). Royalties for such inventions are covered by Rule III.

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Student Rule 2Student Rule 2

For an invention made by students while employed on a sponsored project (research or educational), including off-campus PLAN projects, the invention is owned by WPI, subject to any other agreements. Royalties for such inventions are covered by Rule I.

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Student Rule 3Student Rule 3

For an invention made by a student as a part of any project or sufficiency report, thesis, dissertation, course work, directed study, directed research, or examination, the invention is owned by WPI, subject to any other agreements. Royalties for such inventions are covered by Rule II.

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Student Rule 4Student Rule 4

For an invention made by students without significant use of WPI resources, the invention is owned by the inventor(s). Royalties for such inventions are covered by Rule III.

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Student Rule 5Student Rule 5

For an invention made by students with significant use of WPI resources, the invention is owned by WPI, subject to any other agreements. Royalties for such inventions are covered by Rule II.

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Copyright Ownership RightsCopyright Ownership Rights

WPI Ownership- - Official university matters: faculty

committee output, specifically requested output with additional compensation, staff output within specified job description are all considered “works for hire”

- Authorial Ownership- - all other items of expression

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Contact InformationContact Information

Mike Manning

Director of Technology Transfer

1st Floor, Boynton Hall

508/831-5834

mmanning@wpi.edu

http://www.wpi.edu/Admin/Research/TTO/