2 mark and susan ip checklist
-
Upload
obrsandiego -
Category
Documents
-
view
106 -
download
0
Transcript of 2 mark and susan ip checklist
LAB TO LAUNCH: “IP CHECKLIST”
Mark Nuell and Susan Gorman
Lab to Launch – San Diego
© 2012 Birch, Stewart, Kolasch & Birch, LLP
Type of Protection
Utility Patent Design Patent
Copyright Trademark – Service Mark
What is Protected?
The device, process steps, machine, article of manufacture, or composition of matter
Ornamental designs
Literary, musical, dramatic, artistic, photographic, architectural or other intellectual works
Words, names, symbols or devices that serve to identify the source of a product or service
Standard for Protection
Novel and non-obvious
Novel and non-obvious
Originality Useful to identify and distinguish goods or service
Term of Protection 20 years from filing application
14 Years from grant
Life of author plus 50 years
Common law use: as long as mark is properly used; Fed. Registration: 20 years, but also renewable for 20-year periods
Useful internet links
www.uspto.govwww.ipo.orgsearch“depatisnet”
www.uspto.govwww.ipo.org
www. copyright.gov
www.uspto.govwww.inta.org
KINDS OF INTELLECTUAL PROPERTY
Lab to Launch – San Diego
© 2012 Birch, Stewart, Kolasch & Birch, LLP
• A Patent right is defined by its claims.
• A Patent is a “deed” to an invention.
• A Patent claim is a property right and thus is a right to exclude others from practicing the invention.
Some Important Ideas:
Lab to Launch – San Diego
Patent Claims The “Claims” of
a patent define the scope of the invention. In the U.S., peripheral claiming is used. That is, the claim language defines the “edge” of the property right.© 2012 Birch, Stewart, Kolasch &
Birch, LLP Lab to Launch – San Diego
© 2012 Birch, Stewart, Kolasch & Birch, LLP
35 USC § 101
Whoever invents ...any new and useful process, machine,manufacture, or composition of matter, or any new and usefulimprovement thereof, may obtain a patent therefor, ...
Lab to Launch – San Diego
© 2012 Birch, Stewart, Kolasch & Birch, LLP
35 U.S.C. § 112, first paragraph tells what description must be provided to support the scope of a claim...
Lab to Launch – San Diego
© 2012 Birch, Stewart, Kolasch & Birch, LLP
Structure of the Invention
How to Make the Invention
How to Use the Invention
Best Mode
Lab to Launch – San Diego
© 2012 Birch, Stewart, Kolasch & Birch, LLP
The requirement for novelty of 35 USC §102 means that a patent claim cannot include what is already in the prior art.
Prior Art Limits The Scope Of Patent Claims
Lab to Launch – San Diego
Infringement
© 2012 Birch, Stewart, Kolasch & Birch, LLP
“Infringement” of a patent occurs when a competitor makes, uses, sells, offers to sell or imports an embodiment of the invention without the permission of the patent owner.
Lab to Launch – San Diego
© 2012 Birch, Stewart, Kolasch & Birch, LLP
claim
Non-infringing embodiment
Infringing embodiment
Infringement
Lab to Launch – San Diego
Infringement
© 2012 Birch, Stewart, Kolasch & Birch, LLP
• The typical remedies for infringement are:– Damages ($$$)– Injunction (stop use by
infringer)
Lab to Launch – San Diego
IP Checklist• Ownership!
– Rights in IP must be clear or investors will balk.– Check employment agreement for obligations to assign– License back or purchase from present owner
• Exclusive license preferred• Make sure they are clear owners
• Scope of protection– Your IP rights must cover the commercialized
embodiments of your invention– Geography … Pharmaceuticals likely require
international protection
• Freedom to operate– Be sure that you are not infringing someone else’s IP
rights or that you can obtain a license
© 2012 Birch, Stewart, Kolasch & Birch, LLP Lab to Launch – San Diego
Chris is working as a post-doc at THE University. Chris wrote an NSF post-doc grant which was funded and is paid exclusively from that grant.
Chris’ research relates to signal transduction through a cell-surface receptor; activation of the receptor activates cell proliferation and Chris is working out the genes/proteins involved in the pathway between ligand binding and when/how cell proliferation begins…
© 2012 Birch, Stewart, Kolasch & Birch, LLP
Case Studies
Lab to Launch – San Diego
Chris is an inveterate gamer. Chris has an incredible idea for a new game that is unlike anything on the market. Even better, it could work as an application on mobile platforms.
Realizing that the dudes that developed Angry Birds could have done a better job with their IP, Chris wants to get a patent on the new game. So, Chris works at home on the weekends to develop the game.
© 2012 Birch, Stewart, Kolasch & Birch, LLP
#1 – Game App
Lab to Launch – San Diego
• Can Chris start a business making and selling the game app?
#1 – Game App
Lab to Launch – San Diego
• Probably yes–Chris’ employment contract requires
disclosure of all inventions, BUT–The game app has no direct
correlation with Chris’ research–Chris used no University resources
(lab space, computer power, consumables, etc.) in developing the game app
#1 – Game App
Lab to Launch – San Diego
Chris is diligent in the lab and has unusual insight into biological systems. Chris concludes that the cell proliferation pathway could actually be inhibited through an intermediate in the signaling pathway that is initiated when the ligand binds the receptor. Chris dreams up some novel chemical compounds that bind to that intermediate and gets Chem Post-doc Pat to synthesize them. They perform as expected.
© 2012 Birch, Stewart, Kolasch & Birch, LLP
#2 – Novel Intermediate Antagonists
Lab to Launch – San Diego
• Can Chris start a business making and selling the novel intermediate binding compounds?
#2 – Novel Intermediate Antagonists
Lab to Launch – San Diego
• NO–Chris is paid by the University even though the Post-Doc grant is to Chris–Chris’ University employment contract requires disclosure of all inventions–Chris used University resources to develop the invention
#2 – Novel Intermediate Antagonists
Lab to Launch – San Diego
•What if Chris contracted with Sigma-Aldrich to have the compounds made and did not use any University resources?
#2 – Novel Intermediate Antagonists
Lab to Launch – San Diego
• Still NO–Chris is still working for the University–The invention was a direct result of Chris’ research
#2 – Novel Intermediate Antagonists
Lab to Launch – San Diego
• Chris can still form a company–Talk to the Tech Transfer
Department at the University–Request a license–Procure separate lab space (not
University owned/operated)–Build a “wall” between the Post-doc
work and the company work
What can Chris do?
Lab to Launch – San Diego
• Is there a provision about allocation of IP rights in an employment agreement? (Read it!! – see, Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems Inc., 131 S.Ct. 2188, 98 USPQ2d 1761 (2011) for an interesting story.)
• Is the new company forming around an invention made “in the course of” the university research?
• Were university resources used in the research that led to the invention? (This includes government grants!)
• How much time can a researcher spend on the company?
© 2012 Birch, Stewart, Kolasch & Birch, LLP
Typical Issues Raised
Lab to Launch – San Diego
• Talk to the Technology Transfer offices sooner rather than later – the time that you are making a pitch for financing is NOT the time to learn the university believes it has a stake in the invention.
• Policies relating to IP, technology transfer, and conflicts of interest for UCSD can be found at: http://invent.ucsd.edu/researchers/policies.shtml and http://invent.ucsd.edu/researchers/.
• USCD policy relating to outside consulting can be found at www.ucop.edu/ott/documents/consult.pdf.
(Thank you Denise!)
© 2012 Birch, Stewart, Kolasch & Birch, LLP
Some Resources
Lab to Launch – San Diego
Mark Nuell, Ph.D.Direct (858) 356-5959
Susan Gorman, Ph.D.Direct (858) 345-4981
12770 High Bluff Drive, Suite 260San Diego, CA 92130
© 2012 Birch, Stewart, Kolasch & Birch, LLP
Contact Us