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Patent or Perish? by G5I4Yn

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									Patent or Perish?

     Presented By: John F. Letchford
     Archer & Greiner, P.C.
     October 19, 2006
Academia historically has held
publication in a scholarly journal
the premier way
 to establish
credibility and
gain prestige.
What is Intellectual Property?


                Patent

                Trademark

                Copyright
                Inventorship
   Conception of an idea
   Formulation in the
    mind of a definitive
    way of realizing that
    idea (ie – a concrete
    and complete solution
    to a problem)
       Who Is Not An Inventor?
   Individuals that merely act as research
    technicians under the direction of the actual
    inventors
              Those researchers
               who continue
               with the mindset
               of publish or perish
while not taking advantage of the
opportunities that patents provide
may be doing so at their own peril
(and that of their sponsors).
         Public Disclosure – What
         Determines Publication?
   Length of time presented/exhibited
   Expertise of the audience
   Lack of notice or reasonable expectation that
    the material displayed would not be copied
   The simplicity with which
    the material could have
    been copied
The Easiest Way to Protect Your Invention


      January 1, 2007 – Publish
      January 2, 2007 – Patent



            BAD
The Easiest Way to Protect Your Invention


      January 1, 2007 – Patent
      January 2, 2007 – Publish



         GOOD
Provisional Patent Application
         Advantages
                 Preserves
                  international filing
                  rights
                 Defers substantial
                  patent costs
                 Permits inventions to
                  be marked as “patent
                  pending”
      Provisional Patent Application
               Limitations


   Not examined by the U. S. Patent and
    Trademark Office (“USPTO”)
   Lapses in 12 months
   Does not form the basis for enforceable
    patent protection
      Provisional Patent Application
                   Costs

   $100 USPTO filing fee
   Minimal fees for legal
    services
   What you can do to
    keep those costs from
    escalating
      Provisional Patent Application
        What We Need From You

   More than a generalized description of the
    invention and/or its performance
   Legally sufficient disclosure (ie - what you
    are doing, lab results, working papers)
   We need your research
What Happens After the Provisional
      Application is Filed?

   At the USPTO… nothing
   Provisional applications are never
    published by the USPTO
   Patentability Search
   Analysis
     Evolving Research




 When Additional Provisional
Applications May Be Necessary
Non-provisional/Utility Application

    Must be filed within 1 year of the
     provisional application
    Formally examined
    Provides enforceable patent protection if
     granted
    Considerable cost and time
  If you’ve followed the Patent then
Publish doctrine and a patent issues…




     The Benefits are Numerous
The Dawning of
the Age of Aquarius –
The Bayh-Dole Act of 1980
In 2004, U.S. Universities filed 10, 517
patent applications –
3 times more than IBM, the corporate
                    leader in
                    worldwide patent
                    filings.


                        WHY?
The Value of Academic Technology
             Transfer
   For the University – gives the academic
    community the opportunity to have a positive
    impact on products and the marketplace
   For the Industrial Community – gives the
    private, for-profit sector the means to tap the
    very significant work of new discovery found in
    the academic lab
   For the General Public – provide the
    opportunity to benefit from extraordinary new
    advances being made by the brightest minds
              Other Advantages of
              Patenting Before Publishing
   Provides an additional quantitative indicator to
    assess the quality and quantity of university
    scientific work
   Gives private investors convincing evidence that
    the dollars they spend on academic research
    and development are yielding results
   Unlike publishing, can have a tangible valuation
    applied to it that can be compared equally with
    other patents on a global scale
     Trends in University Patenting
   16,871 invention disclosures – 82% deemed
    potentially patentable ¹
   183 institutions reported filing 10,571 new
    applications – 32.8% more than the previous
    year ¹
   Patenting and Publishing are not mutually
    exclusive – 9 of the top 10 Universities filing
    patents in 2005 in the United States were also in
    the top 100 of an international ranking of
    Universities based on publication output in 2000
¹ Based on results of a survey of 198 universities conducted by the Association of University
    Technology Managers (“AUTM”) in Fiscal Year 2004
The Dollar Value of Patent Applications¹
    Licensing – The Gift that Keeps on Giving
   11,414 licenses/options
    yielding income - $1.385
    billion
   6,116 licenses/options
    generated running royalties -
    $1.122 billion
   33% of respondents reported
    having at least one licenses
    that generated more than $1
    million
¹ Based on results of a survey of 198 universities conducted by the
     Association of University Technology Managers (“AUTM”) in Fiscal Year
     2004
                           Trends in
                      Licensing Revenue

In 1991, University revenue from patenting was
  only $200 million compared the $1.385 billion
  in 2004. That’s nearly a 600% increase in 13
  years.
             More Specifically…
   In 2005, the University of California and San
    Diego reported making $21 million on
    patent royalties

   MIT reports making
    $45 million from
    IP revenue annually
         Additional Benefits from
            Licensing Patents
   Collaborative partnerships help move new
    discoveries from the laboratory to the
    marketplace
   Ongoing partnerships enable researchers
    who make discoveries in the early stages
    of a University’s tech transfer program to
    participate in future developments with
    industry
    What Is Being Licensed? ¹
   56% of Universities report making at least
    one new product commercially available to
    the public – total 567 new products

              More  than 3,100 new products
                have entered the marketplace
                from FY1998 through FY2004

             ¹ Based on results of a survey of 198 universities conducted by the Association
               of University Technology Managers (“AUTM”) in Fiscal Year 2004
 Licenses Provide More Than Just a
          Revenue Steam
ARM Ltd., a leader in microprocessor technology,
  sponsors 10 research assistants at an annual
  salary of $65,000 at the University of Michigan
  in return for taking co-ownership of any
  patents they file.
Patents are an Indicator of the Relationships
     Between Academic Research and
Commercial Application of New Technologies
   Since 1980 there have been nearly 5000
    startup companies spun out from U.S.
    University license of patents
   2/3 of these are still in operation
   IN FY2004, Universities spun out 462 new
    companies and received an equity interest
    in 51.9% of them
 Simply put, the difference
between not patenting your
 ideas and seeking patent
      protection…….
Baby Gets A New Pair of Shoes




                         or…
Baby Gets A New Beach House
Patent or Perish?

     Presented By: John F. Letchford
     Archer & Greiner, P.C.
     October 19, 2006

								
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