University of OklahomaNorman, Health Sciences Center, and Tulsa

http://www.otd.ou.edu

Regina K. McNabbTechnology Transfer

AdministratorNorman, HSC, and Tulsa

Campuses405/325-3800

rmcnabb@ou.edu

Mission Statement

The mission of the University of Oklahoma

Office of Technology Development (OTD) is to stimulate the creation of intellectual property and manage the resulting assets in support of the mission of the University of Oklahoma.

What isIntellectual Property?

KNOW-HOW

TRADE SECRETS

Almost any subject matter qualifies, but must be SECRET

COPYRIGHTS

Ads, Labels, Brochures, Software, Manuals

TRADEMARKS

Words, Slogans, Logos, Shapes

PATENTS

Machines, Products, Processes,

Compositions

DESIGN PATENTS

Ornamental Features of Manufactured Products

Intellectual PropertyPatent – Form of protection provided to an

Invention; Novel, Non-obvious, UsefulCopyright – Form of protection provided to

authors of “original works”Trademark – Form of protection for a word,

name, symbol, or device that is used in trade of goods

Trade Secret – Form of protection to not share outside of company/university

Know-How – The expertise of the inventor(s)

Life of a Technology

• Discovery Process• Disclosure Process• Triage/Assessment Process• Protection Process• Commercialization Process

Discovery Process• Identify Invention – Inventor(s)

• Document Discovery – Lab Notebooks

• Prior Art Search – Inventor(s)

• Publications?

• Question how novel is the idea?

• Official Disclosure to OU – Disclosure Form

Technologyfrom

Sponsored Research

Technologycreated from

Basic Research

Disclosure Form

Completed by Inventor(s)Answers questions on technology

Intellectual Property (IP)www.otd.ou.edu

Office of Technology DevelopmentUniversity of OklahomaLife of a Technology – Phase I

Filed with the

Office of TechnologyDevelopment (OTD)

Identify Identify Identify Identify Identify Identify Identify

Identify Identify Identify Identify Identify Identify Identify

University of OklahomaIntellectual Property Policy

• Ownership• Disclosure• Processes• Royalties

University of OklahomaRoyalty Distribution

• Inventor(s) 35% (before exp.)• Expenses deducted from balance• College/Department 31%• President’s Office 7.5%• Vice Pres. for Research 7.5%• OTD 23%• Growth Fund 31%

Percentages based on Royalties

received less Inventors’ share and Expenses.

Disclosure Process

• OTD website: www.otd.ou.edu

• Completion of Disclosure Form

• Short Form/Full Disclosure

• Disclosure Form signed and sent to OTD

TriageTechnology

Office of Technology DevelopmentUniversity of OklahomaLife of a Technology – Phase II

3rd PartyValidation

MarketingAnalysis

InventorContacts

ResolveOwnership

Assess Assess Assess Assess Assess Assess Assess Assess Assess

Assess Assess Assess Assess Assess Assess Assess Assess Assess

Triage/Assessment Process• Decision Time

– Market under a Non-Disclosure Agreement– Pursue Protection– Defensive Publication

• Questions to Consider – Publication Bar?– Apply for patent protection?– Copyright/Trademark registration?– Keep as Trade Secret?

• Commercialization Aspects– Is this a platform technology or not?– Do we want to start-up a company?– If so, are the requisite elements available?

Office of Technology DevelopmentUniversity of Oklahoma

Life of a Technology – Phase III

PlatformTechnology

SingleTechnology

NoCommercialization

PublishReturn to Inventor

Start Up CompanyManagement

Resources

License toFor-Profit Company

Protect IP –Patent

Trade Secret

Action Action Action Action Action Action Action Action Action

Action Action Action Action Action Action Action Action Action

Technology Protection

• Patent

• Copyright

• Trademark

• Trade Secret

Protection Process

Determination of protection needed:- Patent application - protection of an invention;- Trademark registration - protection of a word,

phrase, symbol or design;- Copyright registration - protection of an

original artistic or literary work; or- Maintenance of a Trade Secret.

Patent and Trademark Office

• Article 1, Section 8 of the United States Constitution provides the basic role of the Patent and Trademark Office (PTO). It has remained the same for over 200 years: to promote the progress of science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries.

• Any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent” subject to the conditions and requirements of the law.

Patent Process• Provisional Patent

– Benefits• Low Cost• Fast Protection against Publication

– Negatives• Provides Limited Protection• Only what is described in the patent application is

covered• Good for One (1) Year

• Regular Patent – Utility, Design, Plant– Claims– Prior Art

Patent Process, cont.• Timing Issues

– Prior Art– Public Disclosure or Use– Publication(s)

• Patent and Trademark Office– What you can expect– www.uspto.gov– Patent Attorney/Agent

• Costs– Provisional: $1-2k– Regular (Utility): $10-20k– Foreign PCT: $3-4k Over 50 countries– Each Country: $2-10k Plus Translations

Trademark

• A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

• A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.

Trademark Registration• Establishes rights in a mark based on

legitimate use of the mark

• Provides notice to the public

• Legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration

Trademark Registration, cont.• Ability to bring an action concerning the mark in

federal court

• Use of the U.S registration as a basis to obtain registration in foreign countries

• Ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods

Trademark Registration, cont.• TM, SM - Any time you claim rights in a mark, you may

use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO.

• ® - You may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

Trademark Registration, cont.

• United States Patent and Trademark Office -www.uspto.gov

• File your application directly over the Internet - through Trademark Electronic Application System (TEAS) at http://www.uspto.gov/teas/index.html

Trademark Registration, cont.

• Can be filed by mail, as well; no faxes

• No attorney or agent needed

• Can be renewed on line

• Can be renewed forever

Copyright• Protects “original works of authorship”, such as

writings, music, and works of art that have been tangibly expressed - including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished

• The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords and to perform or display the copyrighted work publicly

• U.S. Code Title 17

Copyright Registration• United States Copyright Office (not PTO) –

Library of Congress - http://lcweb.loc.gov/copyright/

• Copyright Registration lasts for the life of the author plus 70 years

• Protects the form of expression rather than the subject matter of the writing

Copyright Registration, cont.• Registration requires a completed application

form, the filing fee, and a “sample” of the work mailed to the Library of Congress Copyright Office

• Copyright protection subsists from the time the work is created in fixed form. The copyright in the work of authorship immediately becomes the property of the author who created the work. Only the author or those deriving their rights through the author can rightfully claim copyright

Copyright Registration, cont.

• In the case of works made for hire, the employer is considered to be the author

• Mere ownership of a book, manuscript, painting, or any other copy or phonorecord does not give the possessor the copyright

• Copyright registration is a legal formality intended to make a public record of the basic facts of a particular copyright

Copyright Registration, cont.

• Copyright law provides several advantages for registration– Registration establishes a public record of the

copyright claim– Before an infringement suit may be filed in court,

registration is necessary for works of U. S. origin– If made before or within 5 years of publication,

registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate

Copyright Registration, cont.• Advantages of registration, cont.

– If registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney's fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner

– Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies

– Registration may be made at any time within the life of the copyright

Trade Secret

• Information that companies keep secret to give them an advantage over their competitors – can be just about anything

• Disclosed technology is not shared outside the parameters of the company or the University (in our case)

• The formula for Coca-Cola is the most famous trade secret

State of Oklahoma

State Questions 680 and 681

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Sponsored Research

• Companies – For-Profit

• Non-Profit Organizations – ACS

• State Entities – ODOC

• Federal Agencies – NSF, NIH, NOAA

• Office of Research Services

Federal Regulations

• United States Code– Title 17 – Copyrights– Title 35 – Patents

• Sections 200 to 212 – Patent Rights in Inventions made with Federal Assistance

• 37 CFR 401

• Bayh-Dole Act of 1980

Application of Intellectual Property Using Federal Funds

Bayh-Dole Act of 1980• Provides Grantee Organizations/Contractors title to

Inventions arising from federal funding agreements• Requires pursuit of technology transfer opportunities• Grantee/contractor must meet commercialization

milestones• Requires reporting of all inventions and patents that

involve federal funds• Government retains limited rights to invention• Royalty-free license to practice the invention

Invention Reporting Requirements of Grantee/Contractors – University

Administrative Requirements (per 37CFR 401.14)

• Implement Employee Agreements – as needed• Disclose Each Invention – within 60 days• Resolve Election or Waive of Title – within 2 years• File Regular Patent – within 1 yr. of election• Provide License to the Govt. – upon title election• Indicate Govt. Support on Patent – with patent appl.• Share Royalties With Inventor – when available• License Small Businesses – where feasible• Product Manufacturing in U.S. – required• Report on Invention Utilization – annually

OU/NSSL Agreement

DOC/NOAA-OU Cooperative Agreement

University of Oklahoma’s Treatment of IPwith Respect to NOAA Weather Partners

(University Memo)

Points of IP Treatment

• Government – non-exclusive, irrevocable, non-transferable, royalty-free license for governmental purposes

• OU – retains rights, title and interest in and to the IP if OU employees are sole creators

• Task I and II inventions – Joint Inventions owned by OU and NOAA/DOC; either rights may be transferred or assigned

Points of IP Treatment, cont.

• Joint Inventions – Revenues shared by inventorship

• Copyrights – Government entities cannot initiate; OU will initiate copyright and provide a mechanism to transfer a portion of the joint copyright to the Government

• CRADA’s – OU may negotiate a license with the 3rd party where 3rd party would receive same rights as if made by Gov’t employee under CRADA

Results

• Agreements– Licenses– Sponsored Research Agreements

• Royalties

• Funded Research

Effects on NSSL Employees

• OU Employees– Must notify OTD in accordance with IP Policy– Benefit of Royalties and Sponsored Research

• Federal Employees– Benefit of Royalties and Sponsored Research– Recognition in patents and copyrights

Regina K. McNabbTechnology Transfer

AdministratorNorman, HSC, and Tulsa

Campuses405/325-3800

rmcnabb@ou.edu