IP Commercialization Primer Presented by: Dr. Jan Payne and Jaipreet Bindra WORLDiscoveries TM ES...
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Transcript of IP Commercialization Primer Presented by: Dr. Jan Payne and Jaipreet Bindra WORLDiscoveries TM ES...
IP Commercialization Primer
Presented by:Dr. Jan Payne and Jaipreet Bindra
WORLDiscoveriesTM
ES 050 - Engineering DesignJanuary 22, 2010
Outline Introductions WORLDiscoveries Transfer of IP (Intellectual Property) from University Evaluation of Commercial Potential Importance of IP Types of IP Protection Concept of Inventorship A Few Tricks When to Contact Us Questions and Discussion
Introductions Dr. Jan Payne Jaipreet Bindra
Services provided by WORLDiscoveriesTM
Evaluate, provide legal protection and commercialize Western inventions
Provide advice on IP matters Negotiate legal agreements involving IP Start-up creation
WORLDiscoveries’ Objectives:
Help streamline technology transfer activities across institutions
How does a University transfer IP?
We give it away: Publications, Conferences, Posters…
We hire it out: Know how and skills (graduates,
co-op students) We commercialize it:
Copyright and license the technology (publications, software)
Patent and license it Get trademarks (cool new names:
DQE Instruments, Agri-Therm) Set up new companies (spinoffs) Register designs and license them
Evaluation of Commercial PotentialGood Science is only the beginning…
Commercial Viability? Market size (current and future) Competitive technologies How easy is it to make and use? How expensive is it to make? Is there a need for the invention
Patentability? Is it patentable? Is the invention reduced to practice? Is it novel? Prior disclosures? Major technological leap forward?
Importance of Protected IP
Provides rights to a limited monopoly Basis of competitive advantage Basis of new companies Basis of new products and increased profitability Benefits to society
Economic Development Job Creation Improved Health
Intellectual Property Protection
Patents Copyright Trademarks Trade Secrets
The “Oddballs”: Industrial Designs Integrated Circuit Topographies Plant Breeders’ Rights
Patent
Inventors reveal to public the best way to practise an invention through published patent
In return they receive an exclusive right of sale, use or manufacture, secured by statute
Can be a process, product, composition or apparatus e.g. Prozac, automobile airbag system, many wacky ideas…
Bird Diaper
US 5,934,226
...featuring an enclosed pouch... and apertures to accommodate both the wings and the tail of the bird…for use by a pet bird outside its cage to avoid fouling of the home.
Where to Search?
gb.espacenet.com *Europe’s comprehensive network of patent databases*
SciFinder Scholar *available via UWO libraries *
www.uspto.gov US Patent and Trademark Office
cipo.gc.ca Canadian Intellectual Property Office
Patentability Criteria
Novel
Inventive
(non-obvious)
Useful
Patenting around the World
Canada, US and Mexico Grace period of one year
before filing
Rest of the World Requirement for absolute novelty
Copyright
Right of an author to produce or reproduce their work in printed or electronic media
Computer software (i.e. notation of code) also protected by copyright
NOTE: Copyright protects the EXPRESSION of an idea, not the idea itself.
Trademarks
Mark used to distinguish the goods or services of one person or company from those of its competitors
example
Trade Secrets
Any information or method used in business - if it is not generally known to the public and precautions are taken to
keep it secret.
e.g. Methods for designing microprocessors –
Legal agreements are used to protect trade secrets, such as confidential disclosure agreements, employment agreements, etc.
DURATION:
1) Patent 20 years (from filing)
2) Trademark Renewed indefinitely
3) Copyright Lifetime + 50 years
4) Trade Secret Infinite
5) Industrial Design 10 years
Intellectual Property Protection
The Concept of InventorshipWill the Real Inventors Please Stand Up?
Inventorship is a legal matter A patent can be declared
invalid if not all inventors are included
Unlike authorship not all members of a research team are necessarily inventors
The only members qualifying as inventors are those who made an enabling contribution to the invention
1949 Inventors of point-contact and junction transistor
A Few Tricks Lab Books & Notebooks
Patent law: US – First to Invent Canada – First to File
Lab books: bound (not loose-leaf), and paginated Reflect the thought process Ideally they are accurate, up-to-date
Witnessed (understood) and signed The witness should NOT be a co-inventor
Never use “Obviously” ... Think ahead!
Please Come Talk to Us…
Before publishing (always feel free to call and ask) Conference abstracts, posters, journal articles, graduate
student theses
Before sharing the idea publicly Demonstrating it,
or telling everyone at the pub…
Before collaborating with industry
Discussion and Questions
More information at
www.worldiscoveries.ca