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IP & Tech Transfer

Introduction to IP and CIT Tech Transfer Process
by

Ronan Coleman

on 14 October 2013

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Transcript of IP & Tech Transfer

Technology Transfer & Commercialisation
“SOFT IP”
Secrets, Know-how, Confidential Information
UNREGISTERABLE
Copyright & related rights.
Literary & Artistic Works, Databases, Software, etc.
IP
Commercialisation of Research & IP
Ronan Coleman

October 14th 2013
Protects an idea or discovery with
technical application

Invention must be
novel, not obvious
, and must be capable of being used in
industry
And must not relate to
subject matter excluded by statute
- mathematical equations, natural laws, medical treatments, etc

Right to stop others making or using commercially

- negative right

Not “ownership” of the patented material

Does not protect a product itself - it protects a technical problem & solution used in the product
Absolute novelty in Europe
US now aligns with Europe.
-“First to file” has replaced “First to invent”.

“Prior art” everything made available to the public by means of a written or oral description, by use, or in any other way

“Enabling disclosure”
-Enough information to make the technology
-Cannot hold key information back

Use http://ie.espacenet.com/ to search existing patents
Not obvious to a person "skilled in the art"

Involves an inventive step

Always contentious;
- take advice from experts

EPO (European Patent Office) are very hard to convince
YEARS
1
0
21
20
19
18
17
16
15
---------
10
9
8
7
6
5
4
3
2
Patent Fees
US, Canada & Mexico - $31,835
Europe (6 countries) - $92,355
Japan - $29,665
South Korea - $24,671
China - $16,570
Total $195,186

This does not include patent agent costs!
Issued Patent – while renewal fees are paid
National Applications
US, EPO, JP, CH, etc
Patent Granted
PCT
Application
30
Months
Search
Report
18 months
NOVELTY
INVENTIVENESS (OBVIOUSNESS)
Patent Timeline & Costs
Preliminary
Application
A Beginners Guide
Intellectual Property
Trademarks
Trademarks
Any sign which is capable of distinguishing the goods or services of one person/company from those of another person/company.

Conventional: name, word, phrase, logo, symbol, design, image or a combination of these elements.

Unconventional: appearance, shape, sound, smell, taste and texture.

Two Types
- Registered ®
- Unregistered ™
Trademarks
If you are considering forming a company or creating a product name, logo, slogan, etc.
- search first
Europe – OHIM
US – USPTO
Make sure the matching website domain name is available!

Very expensive to re-brand afterwards

Trademarks can have a huge value
Coca Cola’s most valuable asset
Estimated brand value of $76 billion
43% of overall company value ($170 billion)
Register in Irish patent office (€247), OHIM (€900) or WIPO ($375)
Usually takes 4-5 months
10 years protection initially and then infinite duration if fees are paid annually
Advantages
Deterrent to others considering adopting the mark
Right to take action against anyone using same/similar mark for same/similar goods/services
Protects company's own use of the mark
Much easier and cheaper to take action if registered rights
More valuable
TM Protection
Protects the form of the expression of the idea - represented in a physical embodiment (book, CD, painting, etc)
-Literary, dramatic and artistic works; film, sound recording, computer programs, etc.

Does not protect the idea itself – use a patent!

Very important for multimedia, software, Apps, if you use someone else's copyright you need a license!
Copyright
Copyright
Copyright - Ownership & Rights
Copyright - Protection
Protection is automatic on creation – no formal registration is required.
- Registration is not possible in Ireland

Need to be able to show that you were the first person to create the copyrighted material

Methods:
Registered letter posted to yourself and not opened
Lodge with solicitor or bank or some IP offices
Register in country that does registration – check whether its acceptable in court
Owned by the author/employer

Need to be able to prove ownership when asserting ownership rights

Lasts for
70 years after
authors death

Only infringed when copying is proved which can be expensive

Rights Granted
Reproduction Right:
right to copy, duplicate, transcribe, or imitate the work
Modification Right
: right to modify the work to create a new “derivative” work.
Distribution Right:
right to distribute copies by sale, rental, lease, or lending.
Public Performance Right:
right to recite, play, dance, act, or show the work at a public place or to transmit it to the public.
Public Display Right:
right to show a copy of the work directly or by means of a film, slide, or television image at a public place.
Design Rights
Design Rights
What is an Industrial Design?
The
appearance
of the whole or part of a product resulting from the
features
of, in particular, the lines, contours, colours, shape, pattern, texture or materials of the product or its orientation
The aesthetic “
look and feel
” of an object
Monopoly right to prevent a third party, in the territory, from applying the same design (or a similar one) to a product

Two types of Design Right
Unregistered – 3 year period
Registered – initial 5 year period but renewable up to a maximum of 25 years

Traditionally was used to protect creative designs - it has now become more relevant after the recent Apple V Samsung smartphone case in the US
Design Rights - Protection
What can be registered as an Industrial Design?
Any design that is:
- New
- Has an individual character

Where to apply
National – Irish patent office (€70 plus renewal every 5 years)
European – OHIM (€350 plus renewal every 5 years)
International – WIPO (400 Swiss francs plus renewal every 5 years)
Design:

Unregistered
Copyright:
Design drawings
Packaging
Instructions
Manufacturing data
Advertising media
Trademarks:
OnQ, Aeroneb, Aerogen
Patent Number:
WO2002IE00154
 
Secret “Know-How” – Soft IP
Manufacturing process??
Typical Product & IP
Also known as Secret Know-How and Trade Secrets
No specific definition (some US states define Trade Secrets)
Intellectual assets which are not included in industrial property or in literary or artistic works, but have an important value for organisations.

Components
Know-how, trade secret, confidential information.

Protection of Soft IP
Are not protected by registration and specific IP legislation
Free
of charge
Do not require a long or complex registration process , BUT
requires management
Relies on maintenance of
secrecy
(Coca Cola - 1888)
Use
Non-Compete and Non Disclosure
agreements with employees
DuPont v. Kolon Industries (Kevlar)
- $919million to DuPont
- 18 months imprisonment for former DuPont employee ( Michael Mitchell)
Soft IP
Role of ILO (TTO)
Create & promote awareness of IP within CIT;
Reward CIT Staff, Researchers & Students for their commercialisable discoveries;
Generate income for education and future research
Create and build strong links with industry;
Promote economic growth within the region; and
Facilitate commercialisation of the Institutes discoveries for the public good.
IP Awareness
IP Policy
Guides - Technology Transfer & Start-ups
Seminars
Guest speakers
Lectures
Training Courses
Rewards for Researchers
Income from revenues made from licenses & assignments - royalties, license fees, milestone payments, etc
Builds relationships with industry
Prestige & Satisfaction - named on patents, successful products /companies.
Opportunity to become involved in start-up companies built on your technologies/ideas.
Increased funding opportunities - a successful commercial outcome will lead to future funding opportunities
Compliance with funding agency guidelines
Industry Links
ILO works with the research centers to:
Identify potential industry research & commercialisation partners
Promote CIT's research capabilities with industry
Link diverse research groups on single projects
Agree terms with industry on access to IP produced in research collaborations
Prepare and manage IP agreements with industry
Negotiate licenses with industry partners
Economic Growth
ILO is a conduit which enables state & EU funding in research to eventually reach the market
Start-ups
Licenses of IP to industry
Assignment of IP to industry
These all lead to new products and hence new employment
Funding rules stipulate that the IP created in state funded research is first offered to Irish companies
Benefits for CIT
Income from revenues made from licenses & assignments - royalties, down payments, milestone payments, etc
Equity stakes in spin-out companies based on CIT IP.
Builds relationships with industry
Increased funding opportunities - successful commercial outcomes will lead to future funding opportunities
Compliance with funding agency guidelines
Creates greater opportunities to grow existing research capabilities and create new research centres
Attracts the best research talent to CIT
Prestige - peer reviewed publications and patents enhance the reputation of the institution
Research
Assessment
Assignment
Protection
Marketing
License
Licensing
Commercialisation
Revenue
Invention Disclosure Form (IDF)
Submitted to ILO
Describes an invention and the inventor(s)
IDF's form a repository of CIT IP
IDF
Start-Up
Patent Searches
Market research
Commercial opportunity
Commercial strategy
Legal transfer of ownership to CIT.
Only done if there is an identified commercial opportunity.
IP is owned by CIT under Employment Legislation.
Assignment makes it legally clearer due to transitory nature of research.
Patent filed if appropriate
12 months before next patent filing decision is made
Copyright, trademark, design right or Secret Know-How
Decide on publication strategy
ILO identifies potential companies or people with the necessary expertise, resources and networks to commercialise the technology
Business partner (start-up) or existing company (license)
ILO and the Rubicon Centre work with the inventors in creating a start-up
Business model & business plan will be developed
Business partner will be sought to run the company
OR
ILO identifies potential Irish licensees of the technology with capabilities & resources to commercialise the technology.
Depending on the technology there may be multiple licensees in similar or diverse markets
An agreement is negotiated with a commercial 3rd party.
CIT retains ownership of the IP.
Used with both Start-ups and existing businesses.
May use an Option agreement as a precursor to a full license agreement
The Licensee continues the advancement of the technology (Product Development)
Further investment in sales , marketing, regulatory approval, support, training, etc will also be necessary
CIT will receive revenue in the form of
Royalties, downpayments and milestone payments
Exit event in a Start-Up
Royalty revenues are distributed between CIT and inventor(s)
Tech Transfer Process
REGISTERABLE
Industrial Property
Trademarks,
Patents,
Design Rights
CIT Commercialisation Specialist
Aerogen Aeroneb Pro
Full transcript