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Bio ventures presentation introduction
- 3. Three major functions Licensing intellectual property Invention disclosures, patents, copyrights, proprietary materials Marketing and licensing to third parties Developing spin-off opportunities Intellectual property, people, money Managing BioVentures incubator
- 4. A man-made creation that has commercial value and can be protected by law. Intellectual Property law protects inventions and creative expressions Examples of Intellectual Property include: art, music, medical devices, company logos, medicine, and methods of manufacturing
- 5. UAMS researchers regularly deal with issues of Intellectual Property, ours or others Many of the innovations, inventions, and improvements developed in our facilities can be protected under Intellectual Property law As a UAMS employee or student, you may be directly involved with generating Intellectual Property All employees and some students are required to assign such Intellectual Property to UAMS if: UAMS pays you a salary/stipend or your research is supported by UAMS The Intellectual Property relates to your role at UAMS
- 6. Copyright Trademarks Trade Secrets Patents
- 7. Protects sound recordings, paintings, visual expressions of an idea, written works, forms and software Copyright protection gives the owner the right to: Reproduce the work Prepare derivative works Distribute or sell copies of the work Publicly perform or display the work Perform the work by means of audio transmission Moral rights in the work (if the work is a visual art)
- 8. Trademark protection covers a word, name, symbol, or device, which is used to distinguish the goods of one person from goods of others Trademark protection is also used to identify the source of goods Trademarks are categorized as: Service marks, certification marks, collective marks, and indications of origin
- 9. Information that has actual or potential economic value because it is not known or readily ascertainable by others The person/organization in possession of the secret must use reasonable efforts to keep it a secret There is no registration process for a trade secret so a secret must always be closely guarded in order to have protection
- 10. A patent is the legal protection of an invention. A patent is not automatically granted when the invention is created. An inventor must apply for patent protection Patent protection extends to any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement Patent protection essentially covers “anything under the sun that is made by man”
- 11. Provides the legal framework for transferring university generated, federally funded inventions into the marketplace In return for federal funding, UAMS is required to provide the following: A written agreement to disclose inventions and assign them to UAMS from all employees UAMS is obligated to disclose each new invention made with federal funding to the government UAMS must make reasonable efforts to commercialize the invention UAMS must provide mandatory compensation to the inventor(s) As an employee of UAMS, you are required to disclose all innovations and inventions
- 12. Research that is funded either partially or fully by the Government The inventor is required to disclose government sponsorship in the patent application Government receives a license to practice the invention Government has march-in rights Failure to disclose the invention to the government can result in the government taking the patent rights
- 13. Bayh-Dole act (1980) allowed institutions to patent discoveries made with federal $-- but caveats attached to licensing those patents: Preference for US companies; small business over large No assignment of rights (license instead) Grant non-exclusive rights to US Gov’t US manufacturing requirements (flexible) Distribution of $ to inventors Actively promote commercialization of inventions (diligence, non-exclusivity)
- 15. Intellectual Property Licensing Technology/asset assessment Prior art/competition Market assessment IP prosecution management Licensing Marketing Agreement negotiation
- 16. Spin off companies Resource for company formation with SBIR or STTR funding Assistance with business plan drafting Introduction to management resources to run the business Networks to assist with financing and growth of the business
- 17. Know How Spinoff Companies CTEH eDoc America Copyright Spinoff Companies HD Nursing Naptime Academy Trademark Spinoff Companies (with know how) Angel Eye Camera Systems Patent Spinoff Companies Stage I Diagnostics InterveXion Acetaminophen Toxicity Diagnostics
- 18. Incubator Facility 401 South Cedar Street
- 20. 27 Received 12 Provisional applications 5 Non-provisional applications 4 Copyright registrations 6 Returned to inventors
- 21. Seven license agreements completed Three to spinoff companies One for hospital technology developed by RN and a surgical technician Two license agreements in negotiation
- 22. For the first time since BioVentures was established, IP revenues exceeded $2 million Total = $2.3 million
- 23. Contacts For intellectual property and licensing Nancy Gray (nmgray@uams.edu) Joe Underwood (junderwood@uams.edu) Spin-off support Ben Wofford (bwofford@uams.edu) BioVentures operations Teresa Shaddock (tshaddock@uams.edu) General inquiries Alison Gill (amgill@uams.edu)
Notes de l'éditeur
- Copyright Protection Under the 1976 Copyright Act, a copyright exists “in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” Moral Rights in a work of visual art The right to claim authorship in the work. The right to prevent use of his/her name as the author of works he/she did not create. The right to prevent the use of his/her name as the author of her own work if the work has been distorted, mutilated, or modified so that the use would be prejudicial to his/her reputation. The right to prevent grossly negligent or intentional destruction of his/her work if it is of recognized stature.
- Definition Trademark status protects symbols and commonly associated logos from being used by other individuals or companies. Trademark protection helps prevent others from making an inferior product and using a well established or respected logo to sell it. For example: Rolex is a well respected and known “mark” to represent quality watches. If you purchased a watch from a vendor with the name “Rolex” that was not made by the Rolex corporation and you were unaware that the watch you owned was a “knock off”; what would happen to your opinion of the Rolex company if your watch was a poor quality product and did not live up to your expectations of a “Rolex watch”? Trademark protection helps to create buyer confidence and loyalty in the products they are purchasing. Common Trademarks include: The Coca-Cola Cursive Script Logo, the McDonalds Golden Arches, the Nike logo, The Apple Company Logo, & the NBC Peacock Types of trademarks: Service marks: marks that identify and distinguish services instead of products. Certification marks: words, names, symbols, or devices used by one person to certify the goods or services of others that have certain characteristics. The Good Housekeeping Seal of Approval is an example of a certification mark. Collective marks: Collective membership marks: marks adopted for the purpose of indicating membership in an organization. Collective trademarks or service marks: marks adopted by a collective organization for use by its members in selling individual goods or services. Indications of origin (other than marks): trade names (ex. The names of businesses) are protectable as unregistered indications of origin.
- How to determine if information is a trade secret: Is the information actually a secret? How widely is the information known outside of the secret holder’s business? Who within the company knows the information? Did the secret holder take reasonable measures to ensure that the secret remains a secret? How difficult would it be for other people to acquire or duplicate the information in the secret? Does the secret give the holder a commercial, competitive advantage over others who do not know it? How much effort or money did the holder expend in acquiring or developing the secret? How do you protect a trade secret? Never publish a secret Never disclose the secret without explicit approval
- Government licenses Non-exclusive Nontransferable Irrevocable Paid-up March-in Rights The government can require the grantee/contractor to grant a license on reasonable terms to a responsible applicant However, this practice has not been used