Download ppt - Sumita Ghosh

Tech Fair 2007
IP, GCS, RA and U
[Intellectual Property, Grants and Contracts Services,
Research Administration and (YOU and UTA)]
Sumita Ghosh, J.D., Ph.D. (Director, Office of Technology Management)
Sarah Panepinto, Assistant Director, Grant & Contract Services
Article 1, Section 8 (US Constitution)
Section 8. 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 Office of Technology Management’s “Customers”
 University community
“help me protect my idea”
“stop someone from stealing my idea”
“help me make $” (personal and for laboratory)
Inventors share 50% of royalties from licenses/ University gets other
50%--- minus patent expenses. VERY GENEROUS compared to industry
 Local, national and international organizations
“good stewards of taxpayer dollars”
“economic development engines”
 Commercialization partners
“help us make $”
 A BALANCING ACT- COMPROMISE+ REASONABLENESS
System Policy: Who and what is covered?
 WHO : EVERYONE
All System/UTA employees
Anyone using System facilities under the supervision of System personnel
Undergraduate and graduate students
Postdoctoral fellows
 WHAT: ALL TYPES OF INTELLECTUAL PROPERTY (IP)
Inventions/Discoveries
Trade secrets/Know how
Writings, Art Works, Musical compositions and performances, Architecture
Software
Trade and service marks
Trade Secrets
 Underlying Theory
Freedom of contract; protection against unfair means of
competition
 Source of Law
State statute (e.g. Uniform Trade Secrets Act); common law
 Subject Matter
Formula, pattern, compilation, program, device, method,
techniques, processes
 Standard for Protection
Information not generally known or available; reasonable efforts to
maintain secrecy; commercial value
Trade Secrets (Contd.)
 Scope of Protection
Protection against misappropriation--- acquisition by improper means or
authorized public disclosure
 Period of Protection
Until becomes public knowledge
 Disclosure
Loss of protection (unless under confidentiality e.g. Non-Disclosure
Agreement)
 Rights of Others
Independent discovery; reverse engineering
 Costs of Protection
Security expenses; personnel dissatisfaction; litigation costs
 Licensing and Assignments
Discouraged by inherent nature of bargaining (seller wants guarantee
before disclosure; buyer wants to know what is offered)
Trademarks
 Underlying Theory
Perpetual protection for distinctive nonfunctional names, services, and
dress in order to improve the quality of information in the marketplace
 Subject Matter
Trademarks; service marks; certification marks (e.g. Good Housekeeping);
collective marks (e.g. Toy Manufacturers of America); trade dress (§43(a));
no protection for functional features, descriptive terms, geographic names,
misleading aspects, or “generic names” (e.g. thermos)
 Standard for Protection
Distinctiveness; secondary meaning (for descriptive and geographic
marks); use in commerce (minimal); famous mark (for dilution cases)
 Scope of Protection
Exclusive rights in U.S.; likelihood of confusion; false designation of origin
(§43(a)); dilution (for famous marks)
 Period of Protection
Perpetual, subject to abandonment
Trademarks and Copyrights
 CONTACT OTM regarding Institutional interest in Obtaining Trademarks.
We generally DO NOT encourage formal registration but rely on
Common Law rights.
COPYRIGHTS: ALL THE OTHER SPEAKERS/TALKS TODAY.
Literary, musical, choreographic, dramatic and artistic works
limited by idea/expression dichotomy (no protection for ideas,
systems, methods, procedures); no protection for facts/research
Patents
 Underlying Theory
Limited monopoly to encourage production of utilitarian works in exchange for
immediate disclosure and ultimate enrichment of the public domain
 Source of Law
Patent Act (federal)
 Subject Matter
Process, machine, manufacture, or composition of matter; plants (asexually
reproducing); designs. Excludes: laws of nature, natural substances, printed matter
(forms), mental steps
 Standard for Protection
Non-Provisional Utility
Patentable subject matter
Written Description/Enablement
Utility
Novelty
Non-obviousness
Distinctiveness for plant patents
Ornamentality for design patents
Patents (Contd.)
 Scope of Protection
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


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Right to exclude others from making, using or selling innovation; extends to
“equivalents” of elements in claims
Period of Protection
20 years from filing (utility); extension up to 5 years for drugs, medical devices and
additives
14 years (design)
Disclosure
Right to file patent application lost if inventor delays too long after public
disclosure; full disclosure is required as part of application; notice of patent
required for damages
Rights of Others
Only if licensed; can request reexamination of patent by Patent and Trademark
Office
Costs of Protection
Filing, prosecution (legal fees), issue and maintenance fees; litigation costs
Licensing and Assignments
Encouraged by completeness of property rights; subject to antitrust complaints and
validity challenges
WHO OWNS WHAT?
Within scope of employment
Unrelated to job responsibilities
With System/UTA time, facilities, or
financial support by System
Invention released to inventor
As a work for hire or Institutional
project
IP is a scholarly work- scholarly,
educational (i.e. course materials),
artistic, musical, literary or
architectural work in the author’s
field of expertise.
From research supported by Federal
or third party sponsorship
↓
IP owned by Board of Regents
↓
IP owned by Inventor/Author
LESSON: If you’re not sure you own it, please don’t try to negotiate for it.
Non-Disclosure Agreements
 Mutual NDA
Technology Specific
Limited period for disclosure (usually 1 year)
Limited confidentiality period (usually 3 years)
Points of contact (UTA and general company)
State/UTA cannot warrant or indemnify
Export controls
Signatory authority
 Blanket Mutual NDA (Similar to NDA)
 Implementing Letter Amendment
Outlines specific technology
UTA points of contact
Any deviations from Blanket Mutual NDA
IP in Proposals
 NO RIGHTS CONVEYED
 Companies--- NDA in place???
“The CONFIDENTIAL INFORMATION shall remain the sole property of
the DISCLOSING PARTY”
Recommendations:
 In the specific aims/intro. section of a grant application/proposal, insert:
“The following information is proprietary and confidential and may
not be released without the prior written approval of the principal
investigator.” (recommended by DHHS)
 IN ADDITION, EACH PAGE of the application/proposal should be
marked "Information On This Page Is Proprietary and Confidential."
(just to be on the safe side)
IP in Sponsored Research Agreements
 Ownership of IP
Industry sponsors often want ownership of IP
Industry wants a return on its investment
However, university has a significant investment in research projects as well
(i.e. support personnel, facilities, etc.)
Policy on ownership is simple---OWNERSHIP FOLLOWS INVENTORSHIP
Sponsor receives right of first refusal on licensing IP
 Publication
Industry may want IP to be held as a trade secret
May want to block disclosure of the IP to maximize its value
System policy prohibits unreasonable restrictions on the right and ability
of universities to publish research findings.
However, universities may delay publication to allow a sponsor to protect
(i.e. patent) IP it believes is valuable.
IP in Subcontracts
UTA will be subcontracting to another entity
UTA is recipient of a subcontract
SAME AS WITH SRAs:
OWNERSHIP FOLLOWS INVENTORSHIP
Please don’t expect us to change patent and/or tax laws.
Materials Transfer Agreements (MTAs)
 Applies to biological materials generally but is ANY material for which IP
rights MAY be asserted
 UTA wants to keep track of where materials are going (e.g. select
agents, proprietary formulations that are not yet protected, etc.)
 UTA is a signatory of the Uniform Biological Material Transfer Agreement
(UBMTA) --- Implementing Letter for a Particular Transfer
For Non-Commercial, Academic, Research Use ONLY
 For COMMERCIAL and/or NON-RESEARCH use licenses, contact the
Office of Technology Management
Patent License Agreements (General)
 Term Sheet
 Retained rights
Board will retain the right to (a) publish the general scientific findings
from research related to licensed subject matter subject to the
confidentiality terms of the license, (b) use licensed subject matter for
research, teaching and other educationally-related purposes, and (c)
transfer licensed subject matter to academic or research institutions for
non-commercial research use.
 Equity vs. Royalty
 System cannot agree to broad indemnification/warranty clauses
 Use of Board’s/University’s name
Term Sheet for PLA
 Exclusive/Non-exclusive/Co-exclusive
 Field of Use
 Territory
 Patent/Technology Rights sought
 Financial consideration
Up-front fees
Annual license re-issue fee
Milestone payments
Royalty rates
Sublicense fees
 Patent expenses
 Termination
Software License Agreements (General)
 Under System policy, the patentability of software trumps the copyright
of the inventor/author.
“Thus, it is now apparent that equal treatment in theory has resulted in some hardship for
the inventors of software, their departments and their students, and may be resulting in lost
opportunities where publication of software has been unduly restricted or research
collaborations involving the creation of software have not been consummated because of
the manner in which the Regents' Rules have been implemented.”
“[T]he fundamental judgments that must be made in order to handle software properly will
be whether the proposed treatment is in the best interests of the University and the public
or more specifically, whether the benefits that flow from the proposed treatment are
adequate consideration for the transfer of the software.”
For more info. see
http://www.utsystem.edu/Ogc/IntellectualProperty/swadmpol.htm
Software in SRAs
Under what circumstances may rights in software
created pursuant to sponsored research
arrangements be licensed on a royalty-free basis or
given to sponsors? Software inventions may be
provided to research sponsors as deliverables
under research contracts or licensed to
sponsors on a non-exclusive, royalty-free basis,
as requested by sponsors, only when the
consideration flowing to the University is
adequate to justify the transfer.
AVOIDING PROBLEMS
 Do not make promises concerning IP to commercialization partners
 Do not discuss technical/proprietary information (University’s or
Company’s) without a Non-Disclosure Agreement (NDA)
 DO contact the Office of Technology Management with any issues,
questions, concerns
 DO have commercialization partners contact the Office of
Technology Management with any issues, questions, concerns
 DO disclose IP to the Office of Technology Management via the IP
Disclosure Form (http://www.uta.edu/ra/otm/forms.htm)
 DO report any potential conflicts of interest (COI) to the Research
Compliance Office (Form at http://www.uta.edu/ra/oric/coi/index.htm)
CONTACTS/ QUESTIONS?
 Website: http://www.uta.edu/ra/otm/
 General e-mail: [email protected]
 People: Sumita Ghosh; [email protected]
Natalia Toth; [email protected]
 Telephone: (817) 272-1119 or (817) 272-1142
 Mailing address: Office of Technology Management
Box 19161
Arlington, TX 76019-0161
 Physical address: Arlington Technology Incubator
Ste. 214; 202 E. Border St.
 UTA specific policies: http://www.uta.edu/ra/otm/handbook.htm
 UT System policies:
http://www.utsystem.edu/OGC/IntellectualProperty/index.htm