Introduction to IP & TLC Tony von Sadovszky Software Commercialization Manager
Jan 11, 2016
How to contact me….
Tony von Sadovszky
Software Commercialization Manager
[email protected] 614-247-7354 614-292-1315 (main office) http://tlc.osu.edu
What is Intellectual Property?
Know how – what’s in your head…. Trade secrets – just that Trademarks TM, SM, ® – protect the identity/source of goods
& services Patents – protect ideas Copyrights – protect expression of an idea
No different than tangible property - combined with contracts, laws and policies, these are business tools
What is Intellectual Property? Know how – what’s in your head…. Trade secrets – just that Trademarks – protect the identity of goods & services Patents – protect ideas Copyrights – protect expression of an idea
Patents Things that are patentable – “process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent”
Novel, Useful & Non-obvious (NUN) 20 years of exclusivity to use, make, sell, import or export Cost for a US Patent ~$30,000 - and goes up from there There is no “fair use” or “research exemption” for patents
http://www.google.com/patents
Public Disclosure An enabling communication (not under a CDA/NDA)
Journal article Conference presentations, proceedings or abstracts Poster paper Dissertation publication Defense Funded grant application Discussion with a visitor (on or off campus) Offer for sale
Patent or Publish? This is not an either or choice! Requirements to publish do not preclude the exercise of
intellectual property rights
What is Intellectual Property? Know how – what’s in your head…. Trade secrets – just that Trademarks – protect the identity of goods & services Patents – protect ideas Copyrights – protect expression of an idea
What is Covered by Copyright? Any content you create
Your To-Do list at home Your monthly report Your email message Your child’s art work Your notes from this presentation Your software Your website Your home movies Etc.
Once fixed in a tangible form
What is NOT covered by Copyright?
Facts Ideas Lists Names Short phrases Website URLs “Public Domain” materials Etc.
What Rights does the Copyright Law provide?
Right to Reproduce Right to Prepare Derivative Works Right to Distribute Right to Display Publicly Right to Perform Publicly
And the right to transfer or authorize others to exercise any or all of these rights
Don’t I have to register?
No! Copyright protection is automatic One can register with the U.S. Copyright Office
http://www.copyright.gov You also may provide a Copyright notice
© 2009 The Ohio State University
© 2009 The Ohio State University Research Foundation
© 2009 Joe Bago Doughnuts
CopyrightsWork for Hire - I
Work done by an “employee” Work done by an independent contract (as long as)
Both parties sign an agreement, and….
CopyrightsWork for Hire - II
The work is: A contribution to a collective work Part of an audiovisual work A translation A “supplementary work” (e.g. forwards, appendices, etc.) A compilation An instructional text Test and test answer materials An atlas
Open Source Free redistribution Source code Derived works Integrity of the Author’s source code No discrimination against persons or groups No discrimination against fields of endeavor Distribution of license License must not be specific to a product License must not restrict other software License must be technology-neutral
Keep in mind…..it’s a license.
Overview
Intellectual Property - IP 101 Laws, policies and other considerations The TLC Office Data Sharing Q &A
What framework governs IPrelated issues & activities?
International treaties & laws Federal laws State laws Employer policies Contractual obligations Standards of practice Societal norms
Three Key Property Issues
Ownership – legal title Creatorship - Inventorship/Authorship Control
Your responsibility is to understand these in the context of your work, and clearly communicate these
considerations to those with which you work
Rule of Thumb
Data and intellectual property created in ones capacity as an employee of the Institution, or generated using significant Institutional resources, or as a product of sponsored research belongs to the Institution
This typically includes, lab notebooks, software, databases, research materials, etc.
Traditional Scholarly Works
Journal articles Textbooks Lecture notes Sculptures Musical compositions Dance choreography Architectural renderings Etc.
OSU IP Distribution PolicyRevenue up to $75,000
1/2 1/2
Creators and their heirs
1/3
1/4
Revenue Over $75,000
5/12Creators and
their heirs
Office of Research
Creators’ Colleges & Departments
$
General Patent Fund
Author’s Rights???
OSU Libraries’ Copyright Help Center
688-5649
http://library.osu.edu/sites/copyright
TLC Mission at OSU
Foster an entrepreneurial culture Catalyze faculty and staff innovations Assist in maximizing the value of OSU research
developments Accelerate the transition of OSU developments into
products, services and job creation for the public benefit
The nuts & bolts….
IP cultivation, assessment & prosecution Commercial options & licenses Faculty & staff startups (UTCCs) Confidential Disclosure Agreements (CDA/NDAs) Material Transfer Agreements (MTAs) Inter-Institutional Agreements (IIAs) Sponsored Research Agreements (SRAs) Collaboration agreements (e.g. model rights agreements) Proposal review Letters of support Etc.
Best time to call TLC…
…the earlier the better!
Before giving a seminar At the point of submitting a manuscript or abstract Before making a “public disclosure”
Anytime you have an Intellectual Property question
Subsequent steps…
Brief chat Asked to submit an “invention report” Face-to-face meeting Preliminary business assessment (i.e. sniff test) Detailed business assessment Development of commercialization and related IP strategy Do great things.…
Routes to Commercialization
Non-OSU Start-up OSU Start-up(UTCC)
Large Company Small Company
Established Companies New Companies
Licensing
Overview
Intellectual Property - IP 101 Laws, policies and other considerations The TLC Office Data Sharing Q &A
Contact information
Tony von Sadovszky
Software Commercialization Manager
[email protected] 614-247-7354 614-292-1315 (main office)
http://tlc.osu.edu