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The OAE presents:
IP Awareness Seminar
Mechanical Engineering
Senior Design Teams
April 1, 2010
Office of Academic Entrepreneurship
Meet the OAE
• Dr. Christos Christodoulatos – Associate Provost for
Academic Entrepreneurship
Staff / Support /Team
• Malcolm Kahn – Vice President for Enterprise Development
and Licensing
• Sandra Furnbach – Coordinator of Academic
Entrepreneurship Initiatives
• Dr. Thomas Lechler – Director of Academic Entrepreneurship
Programs
• David Peacock – Director of Intellectual Property
Management
• Ralph Selitto – Lead Patent Counsel, Greenberg Traurig, LLP
Office of Academic Entrepreneurship
OAE – Vision
Office of Academic Entrepreneurship
Today’s Lesson
Office of Academic Entrepreneurship
IP In The News
Office of Academic Entrepreneurship
What is Intellectual
Property?
♦ Patents
♦ Invention – any patentable device, product or
process
♦ Copyrights
♦ Trademarks
♦ Trade Secrets
Office of Academic Entrepreneurship
Office of Academic Entrepreneurship
Requirements for Patentability
Your Test for Each Requirement
♦ Useful - Can it be used? (It does not
have to be better)
♦ New - Was it ever done before in
its entirety? (Search/Search/Search)
♦ Non-obvious - Is it an obvious variation of
prior art?
Office of Academic Entrepreneurship
Patent Value Test
• Does it pass the “So What Test”?
• Must develop a Value Proposition
• Clearly articulating
- Value e.g. reduce cost
- Benefit e.g. faster, more efficient
Office of Academic Entrepreneurship
Relationship of IP Processes
Pre-IP Process
Great IP
lives here
Commercial IP Process
ization
Office of Academic Entrepreneurship
IP/Patent Process at Stevens
Office of Academic Entrepreneurship
IP/Patent Process at Stevens
Office of Academic Entrepreneurship
IP/Patent Process at Stevens
Office of Academic Entrepreneurship
What Does a US Patent Cost?
Basic Fees Avg. Approx. Cost
– Filing/Basic National Fee $1000
– Claims 500
– Examination 500
– Issue Fee 1500
– Appeal Fees/Office Actions 4000
– Maintenance
3 Year 1000
7 Year 2500
11 year 4000
Prosecution (Patent Attorney) 10000
Total
$25000
Office of Academic Entrepreneurship
Time Requirements for filing a patent:
♦ Within 1 year of publication
♦ Within 1 year of public use
♦ Within 1 year from an “offer to sell”
IF “ready for patenting;” i.e.,
1. Reduced to practice , OR
2. Described sufficiently to allow
a person skilled in the art to
practice the invention
Office of Academic Entrepreneurship
SIT- Patent Policy/Process
Student Inventions
• Inventions made by student/s belongs to the student/s
Exceptions:
- Employed by Stevens
- Research Project
• Office of Academic Research (OAE) will assist/ support
student in seeking patent protection
- Documentation & Patent Attorney
- Preparation Invention Disclosure Form
• Student may assign invention to Stevens
- Stevens Patent Committee – Accept / Reject
- Stevens pays for patent prosecution
- Students receive 33 % royalties
Office of Academic Entrepreneurship
OAE – Recognition / $ Incentives
• Recognition Awards
– Patent Issuance
• 1st Patent Issuance Plaque
• 2nd Companion Board & Plates / subsequent
– Annual Recognition Ceremony & “Inventors Wall of
Fame”
• Inventor $ Incentive – (New 1/1/2009)
– Provisional Application $250/Inventor Team max $1000
– Utility Application $500/Inventor Team max $2000
– Issue $1000/Inventor Team max $4000
Office of Academic Entrepreneurship
A Lexicon For
University Development…
• An idea is not a product
• A university prototype is not a product
• Testing under ideal conditions doesn’t prove that
the technology will work in the real-world
• Understanding customer needs doesn’t mean
reading research papers
• Users want solutions, not technology
• Commercialization is not a bad word
• The true value of university technology is only
realized when these issues are addressed
Office of Academic Entrepreneurship 18
Stevens Invention Disclosure Form
http://www.stevens.edu/entrepreneurship/guide/forms.html
Definition – a written report describing an invention in sufficient detail to
permit the patentability and commercial prospects of the invention to be
evaluated
• Inventor Name(s) • Proof of Concept –
experimental verification
• Date
• Prototypes/Samples
• Title of Invention
• Publications
• General Description of
Invention • References
• Utility – useful purpose • Sponsorship
• Novelty – difference from • Possible means of
known uses commercialization – markets &
applications
• Advantages
• Potential partners / licensees
• Limitations
• Signatures
Office of Academic Entrepreneurship
Patent Search
• Google Patent Search
– http://www.google.com/patents
• United States Patent & Trademark
Office - USPTO
– http://patft.uspto.gov/
• Literature and Patent Search
– http://www.scopus.com/home.url
Office of Academic Entrepreneurship
Stevens
Total Disclosures to Patent Committee
45
41 40
40 39
35
30 *
28
*
25 23
*
20 18 19
16 15
15
11 *
10
5
0
FY05 FY06 FY07 FY08 FY09 FY10
(9Mos)
* Approved for Filing – FY07 68%, FY08 61%, FY09 58%, FY10 45% - AUTM Trend ~60%
Office of Academic Entrepreneurship
Stevens
Patent Applications Filed
25
21
20 20
19
16
15
13
10 10
6
5
0
FY04 FY05 FY06 FY07 FY08 FY09 FY10
9-Mos
Office of Academic Entrepreneurship
Stevens
Issued Patents
5 5
4 4 4
3 3 3
2 2 2
1
0
FY04 FY05 FY06 FY07 FY08 FY09 FY10
Office of Academic Entrepreneurship
IP PORTFOLIO
REFLECTS Growth AREAS
36 33
32 28
28
24 21
20
16 12
9 7 7
12
8
6
4
0
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Patent Statistics: Total IP 123 Items (61 Issued / 62 Pending)
Licensed – ( 33%)
Office of Academic Entrepreneurship
Top 10 Companies
2008 U.S. Patent Recipients
528
U.S. Government
(ARMY/NAVY/NASA/H&HS)
1 International Business Machines Corp 4,169
2 Matsushita Electric Industrial Co. Ltd. 3,502
3 Canon Kabushiki Kaisha 2,197
4 Hewlett-Packard Dev. Corp. LP 2,153
Ranking
Ranking
5 Micron Technology, Inc. 2,043
6 Samsung Electronics Co. Ltd. 1,772
7 Intel Corporation 1,760
8 Hitachi, Ltd. 1,575
9 Toshiba Corporation 1,475
10 Sony Corporation 1,461
0 500 1,000 1,500 2,000 2,500 3,000 3,500 4,000 4,500
Number of Patents
Office of Academic Entrepreneurship
Top 10 Universities
2008 - U.S. Patent Recipients
11
1
10 University of California, The Regents
2
9 Massachusetts Institute of Technology
3
8 Stanford University
4
7 California Institute of Technology
5
6 Wisconsin Alumni Research Foundation
6
5
University of Texas
7
Institut Francais du Petrole
84
Johns Hopkins University
93
University of Michigan
10 2
Columbia/Cornell/Florida
11 1
0 50 100 150 200 250
Office of Academic Entrepreneurship
Oliver Wendell Holmes Jr.
“ I wouldn’t give a fig for the
simplicity on this side of complexity,
but I would give my right arm for the
simplicity on the other side”
Office of Academic Entrepreneurship
Question/Answer Session with Speakers
Office of Academic Entrepreneurship
