Protecting Your Ideas and Intellectual Property

Nick Maull, Esq.

Intellectual Property Associate

Sonia Kim, PhD

Manager for Marketing and Industry Partnerships

AGENDA
Intellectual Property Basics Do Northwestern students have intellectual property rights? INVO/Commercialization process How can INVO help YOU?

TYPES OF INTELLECTUAL PROPERTY 1. PATENTS

- USEFUL, NOVEL, NONOBVIOUS 2. TRADEMARKS - USED IN COMMERCE 3. COPYRIGHTS - FIXED IN A TANGIBLE MEDIUM

NORTHWESTERN UNIVERSITY INTELLECTUAL PROPERTY POLICIES

http://www.invo.northwestern.edu/policies

BASICS
Patent and Invention Policy Who All post-doctoral associates, graduate students and undergraduate students Copyright Policy All post-doctoral associates, graduate students and undergraduate students

What
Where When Ownership Rights

All inventions, discoveries and tangible research properties

Location is not an overriding factor At all times

All copyrightable subject matter

Location is not an overriding factor At all times

Well get to these

WHEN THE UNIVERSITY CAN ASSERT Invention Discovery Tangible Research OWNERSHIP
Property 1 Yes Within scope of employment or responsibility owed Sponsored research Uses Northwestern University resources 2 Voluntarily Assigned to the University Classroom assignments
1

Yes

Yes

Yes Yes Yes

Yes Yes Yes Yes - Well get to these next

Yes Yes Yes

Includes, but is not limited to, materials, software, databases, engineering designs, prototype devices, antibodies, cell lines, and genetically modified animals. Certain cases of computer software may be released after University review 2 Excluding library and meeting places when made in fulfillment of a classroom assignment

COPYRIGHT DISPOSITION
Traditional Work 1 Non-Traditional Work 2

Other Agreement
Patent and Invention Policy

University may own

Author may own

University may own

University may own

Work for Hire 3

1

University

University

Includes, but is not limited to, journal articles, manuscripts, academic presentations, theses, etc. 2 Software 3 A copyright authored in performance of an administrative task or which the writer specifically agreed to author by contract

CLASSROOM ASSIGNMENTS
The University can assert ownership in inventions made in fulfillment of a classroom assignment that: uses substantial or essential contributions of the University, such as, funds, space, materials or facilities; is developed under a sponsored research agreement or other agreement the University entered into with a third-party; is a work for hire; or is developed in collaboration with faculty members not responsible for teaching the class.

WHY DOES NU ASSERT RIGHTS?

Government obligations Better society promote sharing of knowledge and ideas Generate revenue for the University e.g. LYRICA

STUDENT RELEASES
http://www.invo.northwestern.edu/process/students Before attempting to commercialize inventions, discoveries or tangible research property request a release of University rights. The University cannot grant a release on an invention before its conception. If release is granted the University will not: make a claim in the subject matter disclosed; be responsible for any costs associated with the invention; provide legal representation for the inventor in case of litigation.

HOW CAN INVO HELP A STUDENT?!?!?! INVO has various professionals that can help you protect ANSWER: RESOURCES
and develop your idea!

Phds to help develop your technology Marketing professionals to market your invention to companies for licensing or acquisition Lawyers to help you protect your invention and build a business strategy Business professionals to help you build a start-up company

HOW CAN INVO HELP A STUDENT?!?!?! Patent costs are extremely high, 20k for a simple device, up to ANSWER: $$$$$$$
100k for a complex invention

Consulting services can be extremely costly Facilities for product development are not cheap, INVO can help you find affordable resources Business strategy can make or break your commercial potential, having guidance is key Network INVO has an established network of venture capital contacts and companies looking to spend their money on NU ideas!

INVOs GOAL

To Create a Strong Foundation for Innovation and an Entrepreneurial Culture

Translation
Center for Developmental Therapeutics (CDT) NU Clinical & Translational Sciences (NUCATS) Entrepreneurs-in-Residence Commercialization Clinics

Transaction
Process NU Invention Disclosures File Intellectual Property Negotiate Agreements Oversee & Manage Compliance

Commercialization
License inventions to companies Partner with companies, investors & advisors Provide resources for startup companies

What we do:
USPTO Intellectual Property

1. 2. 3. 4.

Evaluate disclosures and develop a licensing strategy Process patents Market inventions to industry Negotiate licensing agreements
IM @ INVO Sonia Kim

$
- INVESTORS - INDUSTRY Licensing & Partnerships

5. Provide commercialization resources for start-ups

Jeff Coney

NU

INVENTOR & ENTREPRENEUR

NU

Start-Up

INVENTOR

14

http://www.invo.northwestern.edu

PATENT LAWS ARE CHANGING! MARCH 16, 2013

MOVING FROM A FIRST TO INVENT, TO FIRST TO FILE SYSTEM HOW DOES THIS AFFECT YOU AS A STUDENT? Costs will be more of a consideration Public Disclosures students and faculty Consult INVO early!

TAKEAWAYS
CONSULT INVO!!!! AND CHECK OUT

http://www.invo.northwestern.edu/

Contact
Nick Maull, Esq. Intellectual Property Associate Innovation and New Ventures Office 1800 Sherman Ave., Suite 504 Evanston, IL 60201 Phone: (847) 467-2097 Email: invo@northwestern.edu Web: http://www.invo.northwestern.edu/