IT‘S CLOSING TIMEHOW TO GET AHEAD ON INTELLECTUAL PROPERTYBY GETTING STARTED NOW

NGMA LIVE WEBINAR, MAY 4, 2017

Presented by Andrea Adkins, Assistant Director

Office of Technology Transfer, University of Central Florida

Intellectual property has the shelf life of a banana.”

Bill Gates

Co-founder Microsoft

Co-chairman, Bill & Melinda Gates Foundation

WHY IS INTELLECTUAL PROPERTY IMPORTANT?

Measures progress—from problems to solutions

Improves lives—comfort, convenience, healthier, safer

Attracts more research and investment capital

Rewards for creators, encouraging development of new ideas

Innovation makes a global impact

THE IP PUZZLE 3DWhich pieces fit together and why?

PUBLICATIONPublishing information that describes new intellectual property: when, where, what is disclosed?

COPYRIGHT OWNERSHIPCreator, employer, sponsor, government—what about data rights?

Use of open source license models for software?

CONFIDENTIALITYCollaborators, sponsors need

confidentiality assurances to exchange novel ideas, invention disclosures,

prepublication reviews.

COMMERCIAL SALES & REVENUES

Income derived from option, license, sublicense, cross-license, assignment

agreements; enforcement of rights..

LICENSE RIGHTSSponsor rights, commercial licenses,

rights retained by Grantee.

PATENT OWNERSHIPCreator, employer, sponsor, government

AGENDAIt’s Closing Time: How to Get Ahead on IP by Getting Started Now

1

Context for Intellectual Property2

Funding, IP & Innovation

3 Closing Events & Actions

4 Systems Management & Reporting

5 Contact, Resources, Attributions

FUNDING, IP & INNOVATION

FUNDING, IP & INNOVATIONWhy it’s important

Enhance Competitiveness

Globally

Organization Growth Awards/Recognition

Societal benefits

Revenues from Licensing

Job Creation Source Identifier

Asset growth: Portfolio of intellectual property

ORGANIZATION TYPES—FUND INNOVATION

FOR-PROFIT LARGE FEDERAL AGENCIES & LABS

NON-PROFIT EDUCATIONAL INSTITUTION SMALL BUSINESS

STATE OR LOCAL GOVERNMENT

BASICSIP TO INNOVATION

FOUR TYPES OF INTELLECTUAL PROPERTY

PATENTS

Novel, useful, non-obvious

Rights to exclude others from making, selling, offering for sale

Types:

Utility—how something works

Design or Industrial Design—how something looks

Plant

COPYRIGHTS

Rights to copy, distribute, display, perform, make derivative works/modify

Works of authorship fixed in a tangible medium

Books, articles, sound recordings, paintings, photographs, software, dance sequences …

TRADE/SERVICE MARKS

Phrase

Word

Name

Logo, Symbol

Color

Design

Sound

TRADE SECRET

Formulas

Patterns

Devices

Compilation of information

Know-how

MUST HAVE COMMERCIAL VALUE

ASSOCIATED WITHGOODS or SERVICES

INTELLECTUAL PROPERTY RIGHTS GRANTED BY JURISDICTION

Where will products be made, sold, imported?

What countries enforce IP rights?

Are there treaties or international conventions that protect IP rights?

Who will license IP?

Where will you need to file, maintain and enforce your IP rights?

PATENTSDesign, Utility, Plant (“Subject Inventions”)

Design Patent Example: Apple v. Samsung Infringement of design and utility patents

Utility Patent Example: Can tops--evolution

Eligible: process, machine, article of manufacture, compositions of matter, improvements

File application in each jurisdiction (country)

14-year life for Design

20-year term for Utility, Plant

High Cost: tens of thousands per patent, per jurisdiction

Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology."

Elon Musk, Founder

COPYRIGHTSExamples

Term

95 years from first publication, or 120 years from creation

Author’s life plus 70 years

Cost: low $55

Copyright attached as soon as expression is fixed in tangible medium

To enforce rights in court, must register in federal U.S. Copyright office, international jurisdictions covered through Berne Convention participation

Nintendo’s Mario Kart MariCar Cart Rental in Tokyo, Japan

Nintendo suing MariCar karting company over copyright infringement

Software AppsPublished Periodical

Does your institution receive trade secrets, create them?

TRADE SECRETSWhat trade secrets does your institution hold?

No government office to register trade secrets; no cost

No expiration

Must have commercial value

Enforcement through Defend Trade Secrets Act of 2016 UCF crystal growth method

Kentucky Fried Chicken secret recipe coating

Coca-Cola Formula

TRADE MARKS & SERVICE MARKSWhat trademarks do you recognize?

Identifies the source of goods or services in commerce.

TM used from initial first date of first use & prior to official registration

® used when mark is registered

Can be registered in state, federal, international jurisdictions through USPTO or via Madrid Protocol in each country

Life span—as long as you can continue prove use in commerce

TIMELINESIP Protection & Innovation

PRODUCT LAUNCH

2-15 years Manufacturing Marketing Distribution Sales

TRADEMARKS

Maintain use in commerce; indefinitely

COPYRIGHTS

70 – 120 years

PATENTS

14 years, 20 years (from initial filing)

REGULATORY APPROVALS

2-10 years

2017 2027 2037 2047 2057 2067 2077 2087 2097 3000 Timeline

NEW PRODUCT LINE

Marketing Finance Distribution Sales

INTELLECTUAL PROPERTY FOUND IN EVERY INDUSTRY

TELECOMMUNICATIONSENERGY PROVIDERMANUFACTURING INDUSTRY

LOGISTICSPUBLIC SERVICESAUTOMOTIVE

CONSUMERTRADEARTS

CONTEXT FOR INTELLECTUAL PROPERTY

WHO OWNS INTELLECTUAL PROPERTY?

THE CREATOR—THE AUTHOR, THE INVENTOR

The Congress shall have power to ... promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

The Constitution of the United States, Art. 1,

Sec. 8, Par. 8

FEDERAL LEGISLATION ON INTELLECTUAL PROPERTYAuthorizes entities to own IP derived from federal funding; Technology Transfer activities; Patent Reform

Year Year

Bayh-Dole Act

&

Stevenson-Wydler

Technology Innovation Act

Year

Federal Technology Transfer Act

YearYear

Technology Transfer

Commercialization

Act

Patent Act

Title 35 U.S. Code 101

&

Copyright Act

Title 17 U.S. Code 101

America Invents Act

Permits universities, non-profits, small business to elect title to inventions developed with federal funding.

Bayh-Dole

Establishes CRADAs, makes technology transfer a site responsibility of federal laboratories, its scientists, engineers.

Federal Technology Transfer

Federal agencies must have formal technology transfer programs.

Stevenson-Wydler Technology Innovation

Federal government laboratories to grants licenses to federally owned inventions.

Technology Transfer Commercialization

TECHNOLOGY TRANSFER ACTSWhat does it mean to you?

EMPLOYERS

Policies: own and can assign to others

Employment contracts

Regulations, statutory authority to own

Assignment from creators

SPONSORS OF PROJECT

Terms of accepting the funding include transfer of ownership rights to creator or employer’s IP rights.

Ownership rights may extend to subcontractors and consultants; recipient secures for the sponsor.

FACILITIES USE

Terms of using a facility, its equipment and/or services provided.

Visiting scientist agreements

Government purpose license rights may attach for federal facilities use.

STATE OR LOCAL GOVERNMENTS

Review terms of a grant or contract carefully. Ask if state or local government entity, by statutes or charter, own IP created by its employees, contractors, or issue licenses, or collect revenues from same.

WHO OWNS IP, IF NOT THE CREATOR?

USPTO records written assignments for patents and trademarks and are publically available through PUBLIC PAIR portal.

https://assignment.uspto.gov/patent/index.html#/patent/search

U.S. Copyright Office also records creator assignments and ownership, available through eCO.gov

https://www.copyright.gov/document.html

How will you know?

EMPLOYER

Assignment of rights to employer to issue licenses, to retain licenses, to collect revenues, to distribute revenues, to enforce IP rights.

Regulations, statutory authority to own

Assignment from creators

INVENTORS/CREATORS

Absent agreements to the contrary

Jointly owned or solely owned

Rights reserved to the inventors/creators by license agreements

LICENSEES

Rights conveyed by license agreements

Enforce legal rights

All rights or partial rights conveyed

Exclusive, non-exclusive Field of Use limits Purpose: academic and research

COLLABORATIVE AGREEMENTS

WHO CONTROLS THE IP?

Allocation of Rights Agreements

Intellectual Property Management Plans

Interinstitutional Agreements

Consortium Agreements for IP

CAN YOUR ORGANIZATION OWN OR CONTROL IP?

FOR-PROFIT LARGE FEDERAL LABS

NON-PROFIT EDUCATIONAL INSTITUTION SMALL BUSINESS

STATE OR LOCAL GOVERNMENT

PROJECT COLLABORATIONS CAN RESULT IN JOINT-OWNERSHIP OF IP AMONG PARTIES

Who is responsible for managing IP disclosures?

Who can manage the timeline, the statutory deadlines?

How will it be owned?

Who pays the cost to protect IP?

Who will lead patent filing, prosecution, maintenance?

Who will lead licensing and marketing the technology?

SUBCONTRACTORS, CONSULTANTS & COLLABORATORS

CLOSING EVENTS & ACTIONS

GRANT CLOSEOUT – HIT YOUR TARGET DATE

PROPOSAL

AWARD

TIMELINE 90 dAYS fROM Project end

EVENTS THAT TRIGGER GRANT CLOSING

GRANTTRANSFER TO

DIFFERENT ORGANIZATION

KEY PERSONNEL

LEAVES PROJECT

TERMINATIONGRANT EXPIRES

SPONSOR BANKRUPTCY

What is the impact on intellectual property rights?

WHAT ABOUT IP OWNERSHIP & RIGHTS?Project Events

Transfer to different organization Termination IP created at recipient organization,

vests with recipient, unless waived to inventor(s), or new organization.

If federal funding involved, permission from government required to waive title to inventor or other entity.

Interinstitutional Agreement (IIA) may be needed to manage future new IP, licensing responsibilities for new technologies created during project.

Ensure sponsor current with all obligations.

Review license or assignment terms of the project funding agreement.

Consult with your organization’s IP expert on specific matters related to the IP and reasons for early termination of project.

Project expires Key personnel leaves project Typical closeout process applies—

don’t forget subcontractors

Follow internal policies for IP disclosure, IP protection and ownership; report IP to grantor.

Issue licenses as appropriate to award terms and conditions.

If IP was disclosed, it vests with the grantee per policies vs. inventor.

Executed assignment of rights forms

Grantee and/or Grantor may waive ownership to inventor upon request.

Guidelines & conditions for proposal & award

Proposal documents

Conflict of interest disclosures

Equipment purchases, software licenses, travel, accounts payable, accounts

receivable , payroll

Agreements such as confidentiality, allocation of rights, MOUs

Award terms and conditions

Invention disclosures, patent applications, licenses

GuidelinesAward

Proposal

Related Agreements

COI

Inventions Financials

KUNDEN

NUTZEN

REVIEW FOR CLOSEOUT PREPARATION

GRANT/AWARD

Were results published?

Was a patent or copyright licensed?

IP WAS REPORTED. CAN YOU CLOSE ON TIME?

Was a license granted & issued to sponsor?Was a license issued to another party?

Was a license granted & issued to U.S. government?

Was an invention reported by prime or sub?

Was the sponsor notified?

Was a patent filed or copyright registered?

Was the sponsor notified?

Was the sponsor notified?

Did grantee elect title to invention?Was the sponsor notified of election?

PROPOSAL

AWARD

Was a product sold?

DURING OR POST-CLOSEOUT, YOU DISCOVER

IP created, But NOT DISLOSED, REPORTED, title elected or PROTECTED

Risks to GRANTEE REMEDIES / BEST PRACTICES

POSSIBLE LOSS OF GRANTEE PATENT RIGHTS

Failure to elect title or request extension in timely manner.

Waived to government, if federally funded

Loss of rights beyond the U.S. if patentable subject matter publicly disclosed or published prior to patent filing.

Loss of rights in U.S. if patentable subject matter publicly disclosed or published more than 12 months prior to patent filing.

NOTIFY FEDERAL OR OTHER FUNDING AGENCY

Review agency specific guidelines/policies, as each federal agency has program specific regulations, procedures, and contacts for IP matters

Report to federal agency via portal, forms, or email.

Request waivers, permissions to reopen closed grants, as needed.

File patents first; then collaborate, publicly disclose or publish

Use Non-Disclosure Agreements

VERIFY WITH INVENTORS WHETHER OR NOT FEDERAL FUNDING LED TO IP CREATION OR REDUCTION TO PRACTICE

IF YES, FILE CERTIFICATE OF CORRECTION WITH USPTO IMMEDIATELY, AND

ISSUE CONFIRMATORY LICENSE

Patent filed but Government funding STATEMENT OMMITTED

ISSUED PATENT CAN BE INVALIDATED

Loss of patent rights for owner

LICENSEE AT RISK FOR PATENT INVALIDATION, IF CHALLENGED

LOCATING THE IP EXPERTS IN YOUR ORGANIZATION

Intellectual Property Manager

Proposal, Contract or Award Managers

Compliance or Closeout Specialists

IP Counsel

General Counsel

Industry Sponsored Programs Officer

Licensing Manager

CHECK HERE FOR PROJECT IP GUIDANCESummary

Award terms and conditions

Program Guidelines

Federal Statutes

Code Federal Regulations

Organization’s Policies & Procedures

State or local statutes, regulations

Sponsor’s IP contact

Organization’s IP Expert

SYSTEMS MANAGEMENT & REPORTING

Interagency Edison (iEdison) web-based portal to allow government grantees & contractors to report government-funded “subject inventions”, patents, and related utilization data. 30 U.S. federal funding agencies use iEdison.

https://era.nih.gov/iedison/about.htm

UCF’s proprietary software system captures proposal through commercialization; interfaces with Peoplesoft for financials and HR data.

https://argis.research.ucf.edu/

New Technology Reporting System permits disclosure and reporting of new technologies

https://invention.nasa.gov/

RELATING GRANT ACTIVITIES WITH IP EVENTS & REPORTING

ARGIS® Software System Summary Screen

FEDERALLY FUNDED IP REPORTING - TIMELINE

https://era.nih.gov/iedison/Invention_Timeline.pdf

NIH EXAMPLE FOR INVENTION REPORTING PROCESS

https://era.nih.gov/iedison/recipient_process.pdf

FACTS NEEDED FOR IP REPORTINGSubject Inventions (as defined by federal regulations, statutes)

Invention Title

Inventors Names

Grant Number

Grantee/Contractor Organization Name

Patent Application Serial Number

Patent Filing Date

Issued Patent Number

Patent Application Type: provisional, non-provisional, divisional, PCT, CIP

Plant Variety Protection Application (PVP) included in federal regulation; applies to USDA or Ag type project

Publication or first sale date

CAUTION: The information you provide may be unpublished, and considered PROPRIETARY & CONFIDENTIAL of owner

Program income

CONFIRMATORY LICENSE* U.S. ISSUED PATENT

*Recorded at USPTO,Generate through iEdison web portal

NOTE: Information needed for confirmatory license found on patent applications, published patent applications, or issued patent

Title

Inventors

Patent Issue Date

U.S. Patent Serial No.Federal Grant No.Foreign Patent Serial No.(s)

Government Support Clause. When applicable, this will be found on column 1 of the patent application under “Statement of Government Rights”

DO

• Check with all grant recipients on whether or not IP was created.

• Report to sponsor timely when electing title; extensions can be requested.

• Check publications or presentation dates when IP subject matter (results) are included.

• Report to sponsor on events such as invention disclosures, patents filed, copyright registrations, publications containing IP, licensing events, first sale dates, product descriptions, royalty revenues.

• Continue to update sponsor on status/events, particulary when there is federal funding as a source. Use on-line portals from NIH, NASA, others. The timeline can be years!

DON‘T

• Forget to ask your subcontractors/ consultants when you address intellectual property creation, reporting, publications, licensing and sales to your sponsor/grantor.

• Forget to issue confirmatory licenses to government or other licenses to sponsors (i.e., non-exclusive licenses to collaborators, or others).

WHEN CLOSING A GRANT OR CONTRACT

QUESTIONS & ANSWERS

NGMA LIVE WEBINAR, MAY 4, 2017Presenter Contact Information

RESOURCES

PROFESSIONAL DEVELOPMENT COMMUNITIES TO SUPPORT YOU AS YOU INCREASE IP AND INNOVATION KNOWLEDGE

Association of University Technology Managers (AUTM)

http://www.autm.net/

Licensing Executives Society (LES)http://www.lesusacanada.org/

https://patents.google.com/

http://portal.uspto.gov/pair/PublicPair

https://www.copyright.gov/

QUICK LINKS FOR IP HELP

http://www.wipo.int/portal/en/index.html

ATTRIBUTIONS (GRAPHICS AND SLIDE TEMPLATES)

https://pixabay.com/

www.presentationload.com

Pixabay