Developing/Protecting Your Idea Peter H. Durant Nixon Peabody LLP [email protected] March...
20
Developing/Protecting Your Idea Peter H. Durant Nixon Peabody LLP [email protected] March 30/31, 2005 Copyright © 2005 Nixon Peabody LLP
-
Upload
alison-woods -
Category
Documents
-
view
221 -
download
0
Transcript of Developing/Protecting Your Idea Peter H. Durant Nixon Peabody LLP [email protected] March...
Developing/Protecting Your Idea
Peter H. DurantNixon Peabody LLP
March 30/31, 2005
Copyright © 2005 Nixon Peabody LLP
Clients
“We go to market in 10 minutes and
we need to copyright/patent/trademark
our drug/software/surgical technique.”
Me
Overview
Learn more than you wanted to know about:
– Patents & Copyrights
– Inventorship
– Bayh-Dole Act
– Issues/options to exploit your idea
Patents/Patent Rights
Machine, process, article of manufacture, chemical composition, plants, software, and improvements to any of the above
Right to exclude others 20-year term from filing, protracted
examination First to invent vs. first to file
Requirements For Patentability
Invention must be novel, non-obvious and useful
Enablement/Best Mode– Description must enable others to make
and use the invention
– Application must have best mode of practicing invention then known to inventor
• Duty to disclose all information known to be material to patentability, e.g., prior art, prior uses/publications, offers to sell, etc.
Inventorship
U.S. patent applications are filed in the name of inventor(s)– Determining ‘inventorship’ is …
determining who conceived thesubject matter at issue, whetherthat subject matter is … in aclaim in an interference.”
Inventorship (cont’d)
Ownership– No contractual obligation inventor is the
owner
– Contractual obligation can change ownership and/or rights
– Joint inventors have undivided interest in the whole invention with no duty to account to other inventors (absent a written agreement)
Joint Inventorship
Joint inventors need not physically work
together or at the same time JI’s need not contribute to same degree Inventive contribution to a single claim
is sufficient for joint inventorship Can usually correct inventorship unless
error made to manipulate ownership
Good Notebook Practices
Bound notebook Written in ink Dated/Signed Witnessed by non-inventor Explanation of
experimental work and its significance
Copyright
Copyright protects “tangible expression” of original creative work of authorship (not idea, process, or concept)
No protection against independent creation
Rights exist on creation of work– Legal registration enhances protection
Term – life of author + 70 years
RIT Students & IP Ownership
RIT does not own student’s IP unless:– Student paid by RIT to perform work
leading to IP
– IP resulted from grant/contract funding
– Student contractually argues, e.g., to take a particular cause
Work For Hire Employees
If employee is author and work is created within scope of employment employer (RIT) owns
RIT policy gives ownership to authors of articles/books
When in doubt, get a written assignment of copyright rights
Work for Hire Consultants
If work is commissioned, contractor is author only IF:– work is listed in the statute (collective work,
audiovisual work, translation, supplementary work, compilation, instructional text, test, test answers, or atlas) AND
– written agreement states work is to be considered a work made for hire
Practical result: Get assignment!
Bayh-Dole Act (1980)
Applies to federally-funded projects and resulting patentable inventions
Faculty/staff/employees must disclose IP to RIT and RIT must disclose IP to govt agency
RIT may elect to take title RIT cannot assign ownership of IP to third
parties (other than patent management firm)
Bayh-Dole Act (cont’d) Government receives royalty-free, non-
exclusive license (government use rights only)
Preference to small companies for licenses
RIT must share (no set amount) license fees/royalties with inventors - balance applied to scientific research/education
RIT cannot agree to royalties in advance
I.R.S. Rev. Proc. 97-14
Applies to IP developed at facility financed by tax-exempt bonds and says:
– RIT must own IP
– Cannot license IP to sponsor until IP exists
– Sponsor must pay fair market price
U.S. [Software] Export Controls
Extremely detailed area of law subject to constant change
5 Key factors– Tech characteristics of exported item
– Ultimate destination
– End-user
– End-use
– Other activities of receiving/importing party
What is Possible Illegal“Export” of Software?
Shipment of U.S. – origin software or products derived from such software
Visual look at code by foreign nationals Email/oral exchange of info re code Application abroad of knowledge or technical
experience code acquired in U.S. Downloading/other electronic transmission of
code to websites accessible outside U.S.
ConstitutionArticle 1, Section 8
Congress shall . . . promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive ___ ___ ___ ___ ___ to their respective Writings and Discoveries . . .
