Fedex Institute of Technology Lecture Strategic Advantages


very important to our world and and uh… certainly to the technology
transfer or departments of all these things are
dealing with and uh… just to try to get everything setup at everybody can understand at
least some modicum of basic ideas as to what we’re doing uh… served generally what is a patent
many people are surprised to know that it a patent is just the government grant to write to
exclude others it’s a it’s a property right certainly but it is not right to practice anything just a right to exclude just on its face uh… people they clog up at my can do whatever i
want with it not really there are other regulatory
things that could bar you from actually practicing an invention pharmaceutical for example you made at
the greatest thing since sliced bread but you still have to go through the f_d_a_
in all these other things that could bar
you from actually practicing it so all this really gets you in the long
run is the right to exclude but that right
to exclude is very powerful in the marketplace uh… a crime so what basically the pat mckenna uh…
is an invention of protected through patent claims and claims are analogous he basically deed the land you basically take something
out of your brains formula for property here and you’re trying to distill it on the
paper it something the supreme court over many years of said is very difficult to do it’s very
difficult procedure to try to do that you you have an idea and yet instead of doing like for the
copyright which is expressionism to drawing it’s a it’s a sculpture at something in
something that you write out thats the story would would you do with the
invention is you’re taking this idea out of your mind in trying to put it down on paper survey understand
this is what i’m wanting to exclude everybody from practicing except for me
of possible clearance not an easy thing to
understand just from that perspective um… but the claim then has to be this with ideas that have been reduced to
practice which means it’s not just some abstract idea out
there that you’re saying well i’m going to claim a patent on anything that the w trying to say what’s going to
be to say method of actually manufacturing i’d
rather where the drug itself we can’t just be
sometimes factor the data reduce it to some sort of modicum of practice and have to have some utility visits utility then there’s no basis for patents gotta have
some type of technological utilitarian basis user kind of uh… philosophical issues if you will deal you get to the nitty gritty and okay so
you get your right to exclude that last for twenty years from the date
you actually file your application for that there are some limitations to it but
just as a general rule you can look at it that way there is this no doubt that that has a
june eighth nineteen ninety five everything changed because it used to be
seventeen years in the date the actual patent issued but after this date it’s change to this
twenty years from the date of filing why well there were these things called
submarine patents that they tried to with foreclose people from actually practicing which meant you could file your patent
application forty years ago and you get it allowed in the new
abandon it marie file it then you go through the whole thing abandoning refile and all of sudden forty years later u let it go to issue because there’s no
way to stop it and then you get seventeen years after that anid kind of messed up a lot of things
im if you’ve ever heard the name of one
more sandy basically ruined all that for everybody because that’s
what he did opm as an aside bar codes if you will this guy levels in years ago he claimed
that he came up with the idea of the barcodes and he didn’t see submarine
been submarine didn’t delayed and delayed until finally realize it was something that a
general idea that he had was going to take off in the marketplace
you what it is sheer and then he brought suit against every company you can
imagine and ready extract a lot of uh… damage is out of them and basically just
try to settle he made millions upon millions he’s got like a wing in the smithsonian
institution because he made some money band in the
courts just fairly recently decided that what he did was unfair in
their mixing pretty much everything again that’s the reason why it changed from the seventeen years to
the twenty airs that way you can do that anymore you’re twenty years you can’t go past
that when yours if you file your application if you do it’s expired it doesn’t matter the now catalogs self it’s there in there no
state patent laws in general i mean you may find them on the books they have no
real power on anything beds all federal tina to u_s_ code that governs it and the basis of patent laws comes out
of actually constitution itself uh… article one closet section eight of the
constitution says congress has the power to you basically give inventors rides to their inventions as well as a authors rides to their uh… they said that there are works
themselves to their writings which is where our copyrights come from
the copyright of difference but just to try to d_-mark eighties things again copyrights
are really two some these expression it’s not too some utilitarian idea or manufacture or method or anything of that the fact that
the really is expression it’s it’s if you write a
story if you pay a picture few write music diffuse colt something
and as long as there’s no utilitarian function to what you have you can be protected by copyright if
there’s a design to now they’re also things called design patents which are two actual articles that could be protected and that way and is looking like these chairs if you
see these that’s a design somebody came up with is
probably design patent to these chairperson uh… just the way it’s designed that could be design patent share itself since probably not going to protect upon a
copyright police in our design patent it would be a prompt and anyway being under federal jurisdiction every court case buffer infringements going to be brought
in federal court there’s only one court of appeal that
which is the quarter appeals for the federal circuit which is headed headquartered in washington d_c_ and the ones that solely decide patent
cases on the appellate level it is rare for the supreme court to
actually get any patent based cases but we will see a little while that lately that’s been changing nam and
into some significant decisions that have come down offend field for the
supreme court uh… generally what are the conditions
for patentability five uh… distill it down to six basic things
you’ve got a little subject matter data have attracted benicia acquit
instructional invention fifty-nine obvious as well and then
there’s the duty of candor i’ll go through each of these individually thirty-five years denied state code but
that is that’s the title thirty five united’s good section one oh one thirty
five years the itself is the statutes united states america which as dedicated strictly to patents you fictional one oh one is what says this
is what you can get protected as padhne itself subject matter wise and it basically is almost anything goes song the these it’d or not began his big up something out of the
ground and say well i found gold i’m going to patent gold you can’t get that you can’t actually there’s a specific
court decision that you cannot get a perpetual
motion machine because it does not meet the laws of thermodynamics and so it has to be something that uh… is utilitarian it has to be
something that is not going to be considered impossible to do that but it has to have something with some uh… as we call a transformative quality to
it that it’s it’s not something that isn’t in back in nature in it’s going to
something synthetic at least big court case was called chakraborty many years ago where there is a bacteria uh… synthetically grown to actually chew up oil spills and they tried to get patten on that
will back many years ago there’s nothing in the code that said
you could get something to what they consider leaving organism but since it
was something that was actually modified it wasn’t something that is naturally
occurred you actually be decision at icc engineering to to get to it uh… i the courts decide well you know
it’s it’s available com as well algorithms for the sermon to
being available so sab certain computer programs could be protect the bull by patent uh… all manufacturing methods if you got an apparatus you can pretty
much get back to the synthetic as long as it’s again utilitarian basis when the new things here there is a very
recent cases came out of the court of appeals for the federal circuit
on business methods uh… man the financial institutions which of
course are doing to well nowadays went nuts about ten years ago eleven
years ago when there’s a decision came down on state street bank that said uh… well in fact you can get patents to methods of doing business now fairly recently there is it a single din
rebuild ski where discord filters that awesome it
said well we didn’t need to do so far is to
say any financial or any any type of messaging business is protected
by law you have to have some basis where you
either have to use an apparatus i’d like a computer or something or you
have to you uh… transform something innodb from
one state to another if it’s like an idea you have to at
least have something that transforms into something material or something it’s actually in front of you one what they’re trying to barges abstract
ideas or principles which uh… in in that respect this bill ski case was basically a
brokerage method of coming up with an idea is that what you
can price something moon then going through realizing comparing
with other prices and then setting other prices will transforming anything it’s just an idea and as such they said to me that’s just
too far this will probably change there in the
big backlog at least in the business method proportionally patent office
because there’s just too many of them that are out there in for a lot of them to make any sense and
it’s probably going to cause a lot of problems for the financial stations
anyway yes uh… eve you can as long as there’s strong
apparatus that’s used in the the actual method itself like a computer as long as you’re like i say well i’m
going to plug something in your computer the computers going to generate a
results as yet right it’s just it’s just put into a big
category is what they were trying to be business methods of soc right it is because the problem that’s
happened over the years since the initial state read bank isn’t enough was that all the sudden there’s a flawed of these abstract idea patent applications that came into the
office and is very problematic because there’s no prior art out there for
anybody to realize when what the heck are they doing there a lot of things that will uh…
one bank my to say this is what i’m trying to patent not to make my two
we’ve been doing it for years you know not please none no fees for that e e ba they’ve u if what well theoretically since a lot of that
had to do is sit institution the plug it into computers degenerates
results the problem they have been we don’t have to but you have in order
to get that you have to have that at a rest were some type of
transformative result yes some type of apparatuses used or
some transformative method of taking something making a tangible there and all of the airplane things have gone
through missus probably and financial institutions mean
or yeah i’m pretty sure as long as there’s the ah… as long as
there’s some type of transformative device or something that will be definitely style wic exactly of course is going to limit you because you want to get the whole
principal of the idea but you know if you have to go through
that or have the specific type of program involved uh… of the problem the let’s look at the time a search of there yet yet yet mine but it seems like that that is to make
any sense and i think the the court to finally come down best date i’d be trying to i don’t know if
they were successful right like tailoring each computer to
each yeah i think they’ve been uh… well i
don’t know how successful they’ve been stopping others from doing it but
they’re the only ones mhm well i think that that was the basic
yeah are you wanting that the chris patten’s being a right to
exclude others from using yeah i mean but has to be well if your competitors dell’s that’s what
they’re trying to stop you from doing but a directly eve if acting well that the problem with that is that
there’s utilitarian function to it you know but you could if id software
you can get a copyrighted software program but that kind of falls into the but not his own traded one example uh… because there are some did reserve uh… i of expression that there’d
allowed to protect my copyright it through software programs protect suffer from his recovery the but you know in terms of that in it’s hard to foreclose competition if
it’s just an abstract idea that you’re trying to put out there so i mean i i understand why they jumped
on the bandwagon and tried to do that but the courts have come down and said
this you’ve got to give some type of you know modicum of basis if there’s going to be apparatus
of computer or something involved that at the very least is going to merit pattern handling for one so you know if it’s just a general
principle of some sort you can’t foreclose competition with a
general principle you’ve got a take that principle actually garden she
wore it into a specific area in order to get a protected or for yourself and sell your own general ideas you’d be
nice if somebody had that their own believe but i guess those are the folks
that may be a yet the nobel prize in economics rather
than they get the patent for for whatever they’re doing doesn’t sell hats well at age has definitely been it working quite heavily may for many years now to try to get
uh… the human genome at least portions of it not the whole human genome because
that’s naturally occurring but to say that we can separate out
individual portions of it and since it’s synthetically derived for them to get
those you know the portions of the entirely they’re trying to get patents to those portion as long as there’s some synthetic
modification to it you can still get that protect and i don’t know anything i can come up again but is that i thought and a general has
been doing that for a long time and hear the entire you’d be in the gene
themselves should not be protect most naturally occurring agric but it’s the synthetic modification of
the individual snippets if you wanna call that is what they’re trying to go after
here that yeah one well there more and more you’re seeing more surgical procedures being protected and
the time it’s a possibility but i understand the earthquake
implications as well of yeah i added you know going under the
conditions of patentability again correct inventor ship is very important
united states uh… just say you know how do you for me inventor is you have to be a person actually
conceived the idea that actually becomes embodied in the
claims that you putting the patent itself that’s the basis of how you determine inventors and what’s the conception the idea of
simply performance in the middle part of the event of activity if that’s the attorney a healthier
allen’s these that’s but with it very important though particularly add
in any type of lab situation is if if somebody directs you to do the
work then that the person that does the war
beans hold you please do this for me but generally they are not considered an
inventor however if they tweak it somehow and change something for the better that
becomes part of the claim to mention then that person was directed to do
something can be considered an inventor as long as
the claims again body that invention that they as a general rule lab technicians in all that that’s what
i’ve had to deal with for many years my practices uh… are not considered inventors but they can be this as i said many work many times the
correct legal answer to every legal question is it a patent song but witness scription you can’t just throw something together without some meetings some basic rules
of the room for what parents need to read what has really are disturbed me out of
step back just for a second which is look at it it’s like a contract between the government and the inventor
or the event of energy would ever want to say the government says we want to as a policy further scientific research further the
scientific knowledgebase it’s out there we don’t want you to hide it from the
world we want to be out there so what happens really are or a way to share with the world what
you have and in return for that what you’re getting is this twenty-year
monopoly no basically for the right to exclude others for practice so ya shes so that front but that’s why these are very important
issues because is that equipment description means
which you’re doing is you’re bringing to the table you’re saying this is what the
invention is and this is as best i can describe it at the point in time that i
invented it so i’m trying to share with you mister government remiss government god exactly what i have in order to meet
your expectations to merits didn’t miss monopoly from him they’re really briefings they have to be
met but they’re very important you have to provide the best mode he have to tell the government in your
patent application this is as of the time that i’m filing
this this is the best way i know of to
practice and practices invention you had to enable someone ornery skilled la how to reproduce the invention you can
just put something out there and say wellington guesses to all these other things but
you you have to be very specific sesame can pick it up and say o ido exactly
what to do in order to actually figure out you know this is what the invention is and then uh… you have to have these claims of course uh… but the claims themselves have to be definite non vega non
confusing in the way that they are written so you have seen somebody picks up a
look at the claims they can read it and say oh i know exactly what that
invention probably is he can’t just behind new clue how my
going to know if i’m infringing or not and that’s that’s the point it’s gotta
be adequate written equity uh… and add to the nitty-gritty in
terms of him written description is just providing a nice effective way to describe it here that the mere mention itself has to
meet these two other criteria novel one on august novel should it speaks for itself and that’s the easy part of the things
that moral because if it’s new it’s near if you’ve got widget hair and somebody else had edwidge xia out
there they’re different widget so they should
be there is no novelty issue involved so it’s got to be novel in terms of
what’s out there in the prior art now prior art itself say the body knowledge existing before
the date of the claimed invention the any of the patent any other
publication anything you can find out more internet right anything that’s out there as long
as it’s in the knowledge base that’s what you have to compare it with
me after figure out if something novel or not so these new so i mean that we give you patent something that’s
not new you’ve gotta bring something new to the table novelty should be pretty straightforward bom interesting issue though in terms of la novelty in the united states is that
there are two different standards if united states and outside the united states first to file versus first invent so first of file outside the u_s_ than
here whoever races to them to the uh… patent office door were
ever does they win if it’s in the same exact thing but in the u_s_ is a different story
it’s whoever invents at first so you have basically a year and between the time you publish it out
their first everybody to see and the date that you actually file your
patent application that that window of opportunities
available in the u_s_ is not available anywhere else so you don’t lose your novelty in the u_s_ if you’ve handle it that way but you will lose it everywhere else this leads to the importance for doing
confidentiality agreements if you’ve ever dealt with us that you want to make sure it’s not a public disclosure because if you disclose
something say in the u_s_ year before you file it in the u_s_ but you don’t file foreign at that point
in time you can lose your rights to the for an
application because you’ve already disclosed and so this is
an absolute novelty bar that’s in place yeah kind of glossing over it’s very
important issue right pretty much every world’s film japan
used as a six-month grace period but uh… i think they’ve been closing up there canada most of the six months to history yeah it’s it’s very important that
before you go publish something if you want to protect it by patton you get filed first particularly if you
want to be publish something any journal or something or publishing can be just disclosing it somewhere publicly anybody
and publicly would mean anybody who’s not who’s outside of your organization or anybody who is just uh… part of a cottage an agreement itself i’d say i don’t mean a gloss over it so
much but it’s very important to realize that you do have formed by a patent
rights as well but you can protect and you can lose them if you don’t
handle it correctly probably a whole other thirty minute topic yeah um… you couldn’t brisket there could be a big risk yet to lose your back for gun rights pilot enter it can’t happen that way could be
a situation where you want to win it whatever you disclosed or make it very broad answer instead of
narrowed to what you may want to try to claim later in the pan application that happens i mean it it’s it’s
important consideration i think or you have everybody in the room sign a
confidentiality agreement that would be productive not easy thing to do anything but their
their options but but yeah it’s it’s a it’s a tough issue to deal with saying i’ve dealt as in-house counsel for two different
companies in and i can tell you confidentiality
agreements or everyday two or three of them because you’re going out trying to work
with other companies you’re trying to you know dude joint development of some sort or you have a potential customer who you
want to share something with which you want to know if they’re interested in it before you actually go to it and you get them involved with a company
g r e reema cuz you don’t want to share information with there were first of all they’re
going to run off maybe with it and take it with them or second of all you want
to make sure that if you do disclose any of them that it’s
protected income officials not made public that way you reserve your rights to this
one batons tough tough issues from uh… this obvious mysore non-obvious this is what gives rise to the patent
attorney professions further because nobody knows what the world non-obvious
ism that in the supreme court is came down to decision fairly recently i’ll
try to go over the wharton if i have time to go that is kind of thrown everything but done two thirty five usc one oh
three the policy again of the government is okay we want something into new freely
give you a patent but we don’t want to make just going to
be incremental change the something it may be new you know you can add
widget and we did see where would you see this has this little
tiny you extra you know subway jit that’s added to it
in it could be that that subway jit gives
you something that’s totally brand-new itself of if it’s just uh… if it looks like a
minor incremental change in the government on its face once you
show that it’s not just a minor incremental change button so promise facially leagues amra will generally say well you’ve got this thing that looks pretty
much like that uh… you know the government doesn’t want to
give you apan on something it’s basically distant small change they want something is really going to
further the interest of science so that’s why you’ve got this obvious
answer not obvious in this standard in terms of inventions well splotches
novelty going to be not obvious to me and i can tell you this is the point of
contention and it will be even worse now it’s very difficult nowadays the patent
office does not allow many applications and doesn’t issue many
patten’s it’s gone down quite a bit uh… i don’t think it’s because the
inventions are worse i think it’s ’cause the pat buchanan in court is in the with
their really handling in terms of with the standards did you got this person having orders film
yard standard where they say well if one having orders
going are would have looked at what you have
inside all i think that that is not obvious order is obvious then they’re not going
to give it a limit again i’m just throwing it down to
something glossing over a very important issue which is to say that this is a
standard you have to me using his monetary asians incremental
changes will be mccollum you’ve got to have something that shows
that it’s something unexpected doubt given there are sings out there
which you parker pioneer patent if you will are totally brand-new you’re never going
to have any issues with bugs just a minor variation or minor
change it’s an actual big huge do you think
that’s out there but most of the applications out there
are going to be just improvements on what have already been done in the past and a outside the u_s_ insisting that his step
standard which is analogous to you non-obvious indomitable us over it but i know i’m
running out of time duty candor ang important case came out fairly recently in terms of disclosures it’s very important for
thirty seven c a far as the code of federal regulations which governs
patents and um… section one point five six if you’re involved would file a prosecution after if you
have to disclose everything is material to the patent office again uh… it’s similar to the adequate
written description they want to make sure that everything is in their hands
to make the decision that what you have merits patent protection and that means if there’s anything prior
art wise they can determine well fits novel or non obvious error it could be even that uh… out there cases or other applications are filed co
pending with viewers that are owned by the same inventive
energy missus this new cases just came out that at that time of year uh… if you don’t disclose certain office action nazar rejections are responses you get
back uh… to the to another exam or you run the
risk of possibly losing to enact ruble conduct
in that that has a drastic uh… the korean measure for not living up to this duty of candor
and it’s hard to tell yahoo nearly one billion one person’s
diddy a candy store standards for that may be different from somebody else is
that it’s a very difficult issue yet alum as uh… as i’ve been told on other
occasions the hardest job in the world today is to figure out there how to write a patent application how to
prosecute because the standards change all the time you’ve got things like this that are
hanging over you that you tried to live up to but it could be that you missed
something in all the sudden years later down the road somebody’s life suing somebody else and
trying to invalidate a patent because you can lose patton do do not living up to the duties
candor and it at the time that you get the feeling
had no idea tum it’s a very interesting issue infringement eastern try to go through
that uh… i if you’re thinking process you know i
told you about claims to know which had a patent get out he surely claims and
again for another day uh… does that really adds to the time
to try to have to go through a patent things really are but if you’ve got something that
properly infringes the process but whatever he has to be all the
limitations which you’ve claimed as your invention the you have a little infringing which
is equivalent frenchman literal means it means everything word for word if you well or element by
element equivalent means that there could be some differences but they’re basically minor
variations in it comes down to if you had to amend
your claims during the prosecution if you still have a cool infringements of
possibly to bring civic and somebody gin and that’s for another day just run
them get your quickly just to say you have two different
things that are available in terms of bringing suit for infringement uh… and you could have had leased
willful fridge relative kind of water down lately but tough i said to say that if the
court finds that you will flee infringed you could be on on hook for troubled images and whatever
damages multiplied times three through different eyes infringement you
can be contribute or if you will aversion to to do somebody else’s
infringements of buggin these different things you can have the
fences latches he waited too long to bring your
suitcase somebody’s materially but started practice something in relied
upon you not bringing suit and then you had six years down the road you doing the court will say he waited too long to
do it but read invalidate a patent if you’ve
been broadened again pat matthewson these are things with you need candor what are the damages are available lost
profits girys loyalty which i’m you guys doing
all the time a wise decision and one very important issue injunctions if you had somebody out there the last
thing i want to be told as you can practices at all they may be willing to pay you money but they don’t want to be told sorry you
gotta stop so that is a big big deal in recent case
is very important as i get didn’t get your too quickly but directly this very quickly for very
important is that just came down three of them if the u_s_ three
quarters’s very rare stream core takes patent cases but uh… those are three other than this one is a uh… court appeals for the federal
circuit decision an obvious this again domingo if you think they used to be this previous stand
where the prior art we’d you got it teaching a priority suggests
a modification and then you have motivation within that prior art to actually make
the modification and that meets the obviously standard this decision judge kent justice kennedy
fuming decided that is a too rigid standard actually this those either person having risk american
news his or her own common sense rather than
relying on this teachings in just a motivation strictly
from whatever’s written in the prior they can decide on down fit in this case it was a uh… it was a
pedal for an excel a return a car that had a
sensor involved whether they could move depending on who was using it and again so you wouldn’t have to
stretch too far i guess to get to know he said oh sensors avenues before
instead of the you know that the other prior art doesn’t mention anything but
you know senses venues on different types of
things like cattle stuff may be lost this early for this so you know it almost comes down to the definition
of obscenity you know i know of sanity when i see a
dyno audience this when i see is a canister everybody for a loop when this
came out because it is definitely a clear departure from
the past uh… and this has been cited many times now
my pen examiners as well as the board of appeals uh… bahut the good thing is that something most it’s a most listen if you know the time of the citations basically said well we
don’t find that august is does exist the the were still trying to figure it out of
town for federal works really leading is very difficult to say dissenters change but to me bikini is secondary considerations which
would be comparative evidence if you can come up front in sudan show is best you can verses what you think is
the closest prior art that’s out there compare it in show that there are
unexpected benefits from what you expected results are you should be able to overcome
anything along those lines common sense or continues in just a minute issue
whatever so i try to push that very hard is it
any time when when i am uh… death of an obligation is to say let’s get as much as we can and proper
comparative examples um… so you know i don’t know how many
people in the room no case are no kevin doesn’t know right richard doesn’t
released but i think this is the the funnier quote that i heard you alls
i lost it there it’s kind of rhetoric for a loop but
everybody’s trying to figure it out of style but the supreme court definitely neway
then on this is the first time since nineteen sixty six in the supreme court that weighed in on that this issue obviously sapan application um… during yun what what do you do now you know what your priorities that
you’re dealing with give comparative evidence and you can rewrite your claims as best
you can to make sure that there’s narrows needy trend realizing getting broad claims
nowadays are nearly impossible and licensing advising is extremely
important in technology transfer in the past that’s an interesting issues that uh… if you’ve got a license in place you
think it’s a final think if you were trying to do with the licenses to avoid
leadership celestino you’re trying to make a deal
to say okay uh… working together we want to make sure this is the final
resolution of whatever and at both of us are on an even keel no problem so in the past allman if they licensee decided on this is ridiculous and that the patent that they’d that i’m
licensing is invalid i but they couldn’t challenged the
validity of the patent until they actually breached the license
by staying longer stopped paying for it there’s a statesman immune the genentech where the licensee which was marion said forget this word is not we’re going to
challenge it wouldn’t stop a your royalties ’cause we don’t want to be on the hook for that but we’re going to challenge the
validity of the same genentech said you can do that it’s important that you
can do it uh… records said that yes they can that why is that important licensor once certainty like i said uh… you want these final resolutions to be in place this week i mean it’s not
the suit because you don’t want to go to litigation and now they can actually follicular three
judgment against you and it and still complying with the with
the license that’s important for technology transfer and this is a property right that is
really his patent issue one you don’t want for example for you want too license something out to potential uh… or use your f to license something out to anybody and
that also may say well bum no we’re not going to give any
credence to the uh… bolivia your family is going to go and see you then try to declare that it’s a its
imbalance and we don’t want to pay more of his anymore and uh… not not a good result the impact of that is you’re going to change the way in
your license ask for a lot more money up front that’s
guaranteed basically is that basically school thought of three make sure that you get paid so they decided try to get out of this
give you make sure that he met the challenges they don’t get their money back volun however you may find it in the situation
licensee may be more willing than agreed license terms knowing that they can challenge it in
the future so it’s kind of a trade-off and and this is another important issue
which uh… the again could be another thirty minute
discussion the physical regarding standard thumb yeah get in the or we’ve got to know
what do you do now don’t expect from allen agreement less
you put language to that effect him so it’s important for licensor folks yeah with any organization to make sure they do that and uh… we did winter that for the moon there were some other issues regarding
the with injunctions as well as did you get a remarkable kind i think it is
another it’s important to realize them when it comes to you doing patent
applications nowadays that uh… desi disclosures are very important and
it could cost some money with them but it’s something to have to be done by starr is a complicated thing any
questions before technical recruiting for all your
concern you know there are entrepreneurs one of
the entrepreneurs one of the entrepreneurs again lead that fit basically you wanna start a business and for here
yaad iverson amplicor across town at that uti you won’t start business around an idea
an invention that was develops at a university uh… i it could be euro ninety air
command of your own labs are coming through the air your students are
collaboration may not be new maybe a colleague has a
great idea and they don’t want to take it for is a business that you think that
that’s tremendous and you want to do if they had doesn’t matter university that was done at the lab is
going out on the patent for an invention arafat was software universes can own
the the copyright to just about anything and
produces there there are some exceptions said if it’s
if it was developed under you may be corporate sponsored research side there
that might not be true that your standard federal grant state grant private
foundation granted of universities canal and whatever that invention is so there’s there’s good news and bad
news that the good news is that universities that have to have legal and
moral obligations to to do tech transfer to facilitate technology
commercialization that’s why it did beauty research
foundation is there that’s why you know kevin is here that the fed ex
institute side you know we are public universities taking state and federal tax dollars and in addition to our educational
mission we need the better the so the the the lions of everyone’s contributing
so side you know both legal and more
obligations to to help out with this and to do this and not to discern a hold on
to our are technologies venues is that those legal obligations
that and restrictions don’t necessarily aligned with your vision as an entrepreneur died the of rerouted to do it or not to say
obligated to do it the way that you as an individual starting up you’ll want to take it forward right of the most common thing we see
with startups aa you’ve gone out you talk to people you
know we we heard the avenge couple as we heard uh… mike sherman before that yet
critically important for the company to have the side p it’s the biggest thing
they look at is you know rock-solid i_p_ position annual come that’s our office and say
are and i am i venture capitalists in my friend my potential investor whoever companies dot on the acting you know
this was developed in the lab i wanna owned by a you know what we call an
assignment transfer of i_p_o_ nurse shipping we just heard from bill about
some of the license issues licenses can challenge it you don’t know
what’s gonna happen well if you’ve bought the patent outright not to worry
about licensing a nice simple clean after with just wants to
own it give university some money maybe a relative down the road but it’s it’s
the company’s i peter verses out of the picture basically this allow the company near the maximum
freedom to exploit this asset you know whatever they want to do with it is now
bears unfortunately this is a complete
non-starter for universities you know the the answer is always going to be no
we can’t do that and the reason we can’t do that is there there’s no there’s multiple
reasons when first one is startups coming go universe is still going to be around we
we all recognize that uh… you know many of these startups
despite being the entrepreneurs for relief efforts are not going to succeed university still going to be around and it we need to to be able to tried it again basically i have a second
chance the other the other thing about the
universe is still being around is dead whoever’s lab that came out of where
research program there is that still ongoing and there might still
be great follow on inventions coming out if we’ve sold that patent that means
that you we’ll have the right to do follow on
work we might not be able to patent that next you not obvious but still
derivative invention because it’s it’s now the
companies if we on it we can file you’ll follow on applications continue
applications build up a portfolio if we sold the parent than do it might
actually not allow us to keep going you know with our you know every search
missions and and your commercializing that that further research second thing is more of a philosophical
one which is uh… you know our our obligation our
moral obligation that i talked about is is to create public benefits to to turn
this research in the new products not necessarily into the greatest profit to
an individual company wide can be very very profitable to take a patent to
specialist no foundation patents and use it for defensive purposes and i heard
it’s it’s the right to exclude no company can use it and just use it
sets a block somebody out you know they’ve got a product they’re making a
lot of money they have a plant there making you know millions of these
widgets every year in sign them for a profit bases patton and know that you know wow
this could take away our business if we buy this you will need to do it we’re making a
lot of money already we just want a blot company b_ from ever doing it so you
know that this is sort of anti pedicle to what the university’s more obligation
is so if we license it we know that we and we can put terms on same area has to
be used you know productively not just defensively if we’ve sold the patent we
really don’t have that of that ability more and finally in addition the into more
obligations those the legal obligations no came at a law
that that congress wrote adam when the biggest ones of by dole back and an
eighty or eighty one and so i get a lot of comes at a congress you know there’s
there’s a whole lot of sub conditions that right will give you under ship of
his inventions the quid pro quo as you have to do a
bunch of different things and one of them basically says that you know do you
can license government had to you but you’re not really allowed to sell so if we can sell it nl all introduced kevin what can we do
we can licenses and now you know kevin’s gannett talk about you know different
types of lessons what are we do what we we starts to um… get the best patent claims week and then
of course the sort of the legal instrument for bringing forgiving the rights to that patent out
too the writer of companies is a license a
contract so let’s say a doctor kevin activity here has the
company he lost his mind around it so she is not to go as richard was
talking about asia capitalists to say neil i have rights to this patent from
university of tennessee and i’m going to build a company around
that when the first things are going to ask
is that you have exclusive rights to this patent application right of his patent so exclusive of course means quite simply she and her company are the only ones at
the university will grant that right too they won’t they’ve been in the contract
will say its exclusive university shall not grant a right to
this intellectual property to any other organization generally the university almost always
the universe if you will retain writes his own internal research
purposes of the fact that we can keep using that intellectual property but no other commercialization rights
will be will be granted to any other
organizations of this is really one of the key aspects of the bible act that
richard talked about because before by dole if there was a appendage ended with
federal funds the federal government owned it in federal government would rarely grant
those exclusive rights that are so important for a company to raise money
around universities have the right to grab exclusive ur director grant exclusive rights to the
intellectual property so companies can go forward so we’ve got
the position on this in for this intellectual property therefore we’ve got a strategic
advantage you can exclude others from making this so let’s say then liike to has this
company she’s got exclusive rights she’s raising money around this to check your position based on this
exclusive patent she also for knows that you can receive
memphis now has some intellectual property she needs just to make her courage it and sell it which as i have to have their first
strategic positions and maybe it’s something that you received this is
licensed others shikha company as they come in i want to
non exclusive right to that i just want to this to be on a practice on that patent
but i don’t need to have it exclusively with your life since it to me so i wouldn’t negotiate with her license
in that case where the world is a probably smaller because i won’t my might like to have
multiple licensees and also it’s really of
lower-level of right she what would be able to say that she’s
the only one they can practice that but indeed she can practice of so that’s
really her goal there let’s go back to the exclusive rights
but situation he insisted base that when she’s raising
money he’s going to have to go you know to call up merck because
they’re going to be part of their development development project in a
might ultimately even helper sell the product if he’s developing a
pharmaceutical she will say kevin and they need sub licensing rights because i would
have to be able to give directly from my company to work certain rights the
practice as a political sold licensing rights and
read the contract i would say that you know his company has the right to grant you know on on american bases generally
the right to practice under this patent and then any product that is sold under
those sub licensing rights generally would have would face the same
sort of royalty obligations another contractual obligations that the that sort of primary licensee
would have so those are some of the issues that you
immediately face when you approach universities for research organization
or even now for-profit company for licenses i want to know exclusive non-exclusive that certainly dipped
germans to what extent or how high the royalties will be as well as you don’t do you want some
bison zing rights and sometimes if you want one-fifth if the licensor wants to
control very carefully you might not grants of
licensing rights one other aspect of this that it can be
important is that some in some cases you’ll grant territory based writer for example
viewers to memphis recently license and intellectual property to accompany that will that only has rights for the
for the country of india so they will only be able to div too provide this the software testing
service uh… people in india and so that’s another way to sort of carve
up of the the sort of universe of potential uh… use rights out of one piece of
intellectual property so we’ve got over a lot of things today
here how pretty quickly but in three three of us a a despicable some somewhat
different different things as always the video will be on my
website and glad to have you visit that until
your friends about it we will also all be available either
afterwards or by email or phone if you have or in-depth questions of the bill has
many more hours of drippings to talk about and richard and i’d would also but that could also be for advanced topics
today if that look for to seeing you at the
next lecture

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