1. LAB TO LAUNCH: “IP
CHECKLIST”
Mark Nuell and Susan
Gorman
Lab to Launch – San Diego

2. KINDS OF INTELLECTUAL
Type of PROPERTY
Utility Patent Design Copyright Trademark – Service
Protection Patent Mark
What is The device, Ornamental Literary, musical, Words, names, symbols
Protected? process steps, designs dramatic, artistic, or devices that serve to
machine, article of photographic, identify the source of a
manufacture, or architectural or other product or service
composition of intellectual works
matter
Standard for Novel and non- Novel and Originality Useful to identify and
Protection obvious non-obvious distinguish goods or
service
Term of Protection 20 years from filing 14 Years from Life of author plus 50 Common law use: as
application grant years long as mark is properly
used; Fed. Registration:
20 years, but also
renewable for 20-year
periods
Useful internet links www.uspto.gov www.uspto.go www. copyright.gov www.uspto.gov
www.ipo.org v www.inta.org
search“depatisnet” www.ipo.org
© 2012 Birch, Stewart, Kolasch & Birch,
LLP Lab to Launch – San Diego

3. Some Important
Ideas:
• 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.
© 2012 Birch, Stewart, Kolasch & Birch,
LLP Lab to Launch – San Diego

4. 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

5. 35 USC § 101
Whoever invents
...any new and
useful process,
machine,
manufacture, or
composition of
matter, or any
new and useful
improvement
thereof, may
obtain a patent
therefor, ...
© 2012 Birch, Stewart, Kolasch & Birch,
Lab to Launch – San Diego
LLP

6. 35 U.S.C. §
112, first
paragraph tells
what
description
must be
provided to
support the
scope of a
claim...
© 2012 Birch, Stewart, Kolasch & Birch,
LLP
Lab to Launch – San Diego

7. Structure of the
Invention
How to Make the
Invention
How to Use the
Invention
Best Mode
© 2012 Birch, Stewart, Kolasch & Birch,
LLP
Lab to Launch – San Diego

8. Prior Art Limits The Scope Of Patent Claims
The
requirement for
novelty of 35
USC §102
means that a
patent claim
cannot include
what is already
in the prior art.
© 2012 Birch, Stewart, Kolasch & Birch,
LLP
Lab to Launch – San Diego

9. Infringement
“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.
© 2012 Birch, Stewart, Kolasch & Birch,
LLP
Lab to Launch – San Diego

10. Infringement
Infringing
embodiment
Non-
infringing
embodiment
claim
© 2012 Birch, Stewart, Kolasch & Birch,
LLP
Lab to Launch – San Diego

11. Infringement
• The typical remedies for
infringement are:
– Damages ($$$)
– Injunction (stop use by infringer)
© 2012 Birch, Stewart, Kolasch & Birch,
LLP
Lab to Launch – San Diego

12. 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

13. Case Studies
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
Lab to Launch – San Diego

14. #1 – Game App
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
Lab to Launch – San Diego

15. #1 – Game App
• Can Chris start a business
making and selling the
game app?
Lab to Launch – San Diego

16. #1 – Game App
• 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
Lab to Launch – San Diego

17. #2 – Novel Intermediate Antagonists
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
Lab to Launch – San Diego

18. #2 – Novel Intermediate Antagonists
• Can Chris start a business
making and selling the novel
intermediate binding
compounds?
Lab to Launch – San Diego

19. #2 – Novel Intermediate Antagonists
• 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
Lab to Launch – San Diego

20. #2 – Novel Intermediate Antagonists
• What if Chris contracted with
Sigma-Aldrich to have the
compounds made and did not
use any University resources?
Lab to Launch – San Diego

21. #2 – Novel Intermediate Antagonists
• Still NO
–Chris is still working for the
University
–The invention was a direct result of
Chris’ research
Lab to Launch – San Diego

22. What can Chris do?
• 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
Lab to Launch – San Diego

23. Typical Issues Raised
• 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,
Lab to Launch – San Diego
LLP

24. Some Resources
• 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.
© 2012 Birch, Stewart, Kolasch & Birch,
(Thank you Denise!)
LLP
Lab to Launch – San Diego

25. Contact Us
Mark Nuell, Ph.D.
Direct (858) 356-5959
DRN@bskb.com
Susan Gorman, Ph.D.
Direct (858) 345-4981
SWG@bskb.com
12770 High Bluff Drive, Suite 260
San Diego, CA 92130
© 2012 Birch, Stewart, Kolasch & Birch,
LLP