UNeBlog a Technology Transfer Blog by UNeMed

The importance of technology transfer

December 18, 2012 Comments (3) Blog Like

by Agnes Lenagh, UNeMed | Dec. 18, 2012

Contrary to popular belief, publishing your research will not guarantee that someone will notice your discovery and continue developing it into a tangible product that will reach the end user. As I previously mentioned, technologies first need to be developed and that is achieved through collaborations with industrial partners. For example, once a lead compound is identified it must go through a drug development process that includes pre-clinical research, development, and clinical trials. Additionally, drug development is focused on addressing the regulatory requirements of regulatory authorities, such as the FDA and later on for marketing approval. Overall, the process can be quite expensive and may exceed $100 million dollars per drug compound.

How Does Technology Transfer Occur?

Technology is typically transferred through a license agreement in which the university retains ownership of the intellectual property, while the industrial partner obtains conditional rights to use and develop a technology. Before the technology transfer can take place, inventors must define and disclose the nature of their invention to the institution’s technology transfer office. New inventions are evaluated by technology licensing experts, who determine the intellectual property position and potential market for the technology. The technology transfer office will not be able to proceed with the invention if there is no intellectual property available, no value to industry or appropriate competitiveness in the market. On the other hand, inventions with an appropriate intellectual property and market position are given the green light and intellectual property rights are pursued. An invention management and commercialization strategy can begin once the intellectual property rights are established.

Technology transfer requires a proactive approach that combines engaging researchers, promoting the technology, and encouraging potential industrial partners to use the technology.

The end goal of the commercialization strategy is to establish a commercial relationship with another party (e.g., employment, a sale or license), and negotiating a contract (e.g., compensation). A license is a contract between a licensor (e.g., the holder of a patent) and a licensee (e.g., an industry partner) that includes a number of conditions that the third party must satisfy. The licensee may be an established company or a new business start-up (that may be founded by the researcher).

The technology transfer office may grant nonexclusive, partially exclusive, or exclusive licenses. Multiple nonexclusive licenses may be granted to several companies to offer better opportunities to broaden the use of an invention across different fields. As mentioned above, the industry partner must satisfy a number of conditions which may include creating a satisfactory development or marketing plan, supplying information about the company’s ability to implement the plan, develop and commercialize the invention within a specified period of time, and making financial payments to the university. These payments are distributed to the inventors and shared within the institution to provide support for additional research, education, and participation in technology transfer activities.

Why is Technology Transfer important?

Technology transfer helps develop early stage intellectual property into tools for direct use by the research community, or into bases for new platforms, products, or services to be made into products for public use. Successful collaborations are formed between researchers across different universities or industries in order to advance the knowledge in a particular field or to further develop a technology. These collaborations may result in licensing or sponsored research opportunities that benefit both partners. In addition, technology transfer ensures that the interests and rights of the university in the intellectual property are protected. The university is able to retain the intellectual property rights of the technology and issue a license for the conditional use of the technology.

Successful transfer and development of the technology helps promote the research institution and its commercial partners. The university obtains recognition and increases its reputation for their research and innovation potential. Industry partners can also reduce the costs incurred during their research and development stage by licensing technology from a university. Another benefit for the university involves using the licensing revenue to support further research and education at the institution. Universities protect their investments in research by patenting new technologies, which gives them an opportunity to reach the stream of commerce. The university’s investments in the technology help stimulate local economic development. The ultimate beneficiary of technology transfer is the public, who benefits from both the products that reach the market and the jobs resulting from the development, manufacturing, and sale of products.

I hope that this overview helped illustrate the field of research commercialization. Technology transfer works to complement academic research by pushing innovations out the lab door and into the hands of industry partners who will develop them into products for the benefit of the general public. Remember, if you have a research discovery that helps solve a significant problem, if the idea is innovative and unpublished, or if you believe you have discovered something unique with commercial potential or research value, don’t hesitate to consult with your technology transfer office. Here at UNeMed, we are always eager to help the University of Nebraska Medical Center faculty, staff, and students with any possible inventions they may have.

Contact us via email to report a research tool, or to discuss possible inventions. If you have any questions or comments, please do not hesitate to contact the authors or leave a comment below.For more information, you may also refer to our Inventor’s Handbook.

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Technology transfer 101: Defining research commercialization

December 11, 2012 Comments (1) Blog Like

by Agnes Lenagh, UNeMed | Dec. 11, 2012

As a graduate research assistant I constantly heard about the importance of performing valuable research that will someday help develop a diagnostic, prevention, or treatment for a disease. Typically, researchers publish their work to announce their discoveries to sustain and further their career and with the hope that someone will notice and use their idea to improve public health. Unfortunately, most ideas and technologies that stem from research activities are at an early stage of development. Research at academic institutions is geared to gaining better understanding in the field of study and while discoveries have great scientific significance, they might not have immediate commercial value because they lack proof-of-concept studies, a prototype, or a specific product to be commercialized. Before a diagnostic or therapeutic reaches the end user, it will be further developed in compliance to strict regulation and eventually undergo clinical trials. Most research institutions don’t have the means to cover the expensive and often lengthy development process and clinical trials. For this reason, universities partner with pharmaceutical and biotech companies.

Enter Research Commercialization and Technology Transfer

Research commercialization allows technology created during research activities to be further developed into marketable products for the benefit of the public. This is achieved through technology transfer, which is the process by which technology, skills, or knowledge developed during research activities at the research institution are applied and used in another place. Technology transfer often refers to transferring a technology between a research laboratory and a commercial partner, including industry, academia, and state and local governments.

The technology transfer process typically involves:

Identifying new technologies stemming from research activities
Protecting the intellectual property of technologies through patents and copyrights
Forming marketing strategies to further develop and commercialize the technology to existing private sector companies or newly created startup companies

The federal government has actively supported and encouraged technology transfer with respect to technologies generated with federal funds. All researchers in federally funded laboratories are required to consider technology transfer an individual responsibility and new discoveries and technologies must be reported to the funding agency.

Investigators are obligated to report any inventions resulting from research activities to the federal funding agency.

A series of laws have been established to increase the technology transfer between federally-funded laboratories and nonfederal organizations while providing external entities with a means to access new technologies. Of these laws, the Bayh-Dole Act is credited for stimulating interest in technology transfer, as well as increasing research commercialization, educational opportunities, and economic development in the United States.

The Bayh-Dole Act of 1980 (P.L. 96-517) established boundaries regarding patents and licenses for federally-funded research and development. This Act allows universities, small businesses, and non-profit organizations to have ownership rights to inventions resulting from federally-funded research programs. Major provisions of the Bayh-Dole Act include the following:

Make efforts to protect (file patents) and commercialize (promote the use) innovations they elect to own
Submit progress reports to the funding agency
Give preference to small businesses that demonstrate sufficient capability of bringing the invention to practical application
Sharing any resulting revenues with the inventors
The government retains march-in rights and a non-exclusive license to practice the patented invention throughout the world

Why does Intellectual Property Matter?

Technology is typically transferred through a license agreement in which the university retains ownership of the intellectual property created during research activities, while the industrial partner obtains conditional rights to use and develop a technology.

Intellectual property is regarded as subject matter that can be protected under the laws governing the different forms of intellectual assets. These intellectual assets may include products resulting of the human intellect, including inventions, discoveries, creations, developments, or other forms of expressing an idea. Intellectual property may be protected using patents, copyrights, trademarks, and trade secrets. The rights to an article of intellectual property may be bought, sold, leased, rented, or transferred between parties. Additionally, the transfer of intellectual property rights can affect a product’s marketability.

Intellectual property is an essential component when evaluating an invention’s commercialization potential. A common occurrence among researchers is the desire to make their discoveries known and yet, a publication or presentation will not guarantee that the invention will be developed into a marketable product. On the contrary, patent rights are affected by public disclosures, such as presentations and publications in some form. Because patent laws vary by country, a publicly disclosed invention may have restricted or minimal patent protection outside of the United States. Biotechnology companies are interested in not only helping people but also in generating revenue, and as a consequence, technologies need to have strong intellectual property position.

For this reason, it is critical that confidentiality is maintained until the intellectual property rights have been secured. For example, let’s analyze a typical situation that could happen to any researcher. A new compound that functions as an antibiotic is discovered in a lab and the researchers confirm the results. They also discover that this compound not only has great efficacy and cures bacterial meningitis in an animal model but it also appears to have low toxicity. While preparing the manuscript for publication, the graduate student in charge or the project realizes that his favorite scientific conference is now accepting abstracts. Wanting to share his discovery with the other researchers in the microbiology field, he submits an abstract and is accepted to present a poster. At the conference, a representative from fictitious MicroPharma observes the results and has a good chat with the student. Several weeks after the conference, the primary investigator receives a call from a MicroPharma business development representative. They are interested in more information about the technology. The call is directed to the technology transfer office, who is very excited to work with both the researchers and MicroPharma. Unfortunately, the staff of the technology transfer office had never heard of the compound. While they proceed with the necessary steps to evaluate and protect the technology, they cannot obtain intellectual property protection outside of the United States. The company hesitates to invest in the technology because they were interested in developing the compound in India, where there is a need for new antibacterial compounds. Once again, public disclosure has created a disadvantage for technology transfer.

The example might have been a bit farfetched but it’s not unrealistic. Sometimes researchers disclose their research ideas and developments after they have presented or published it. Often, the technology is abandoned because of the intellectual property cannot be protected. To ensure that the intellectual property is appropriately protected, researchers are highly encouraged to first disclose their discovery to their institution’s technology transfer office (e.g. UNeMed) before sharing the invention with people outside the university.

Contact us via email to report a research tool, or to discuss possible inventions. If you have any questions or comments, please do not hesitate to contact the authors or leave a comment below.For more information, you may also refer to our Inventor’s Handbook.

Join us next week when we continue our discussion on the importance of technology transfer.

About the Author

Agnes Picture
Agnes Constantino, PhD

Agnes is currently a Licensing Associate with UNeMed. She is working to ensure that scientific and technological developments are accessible to the world and that the world, in turn, understands their implications. She is also committed to pursuing the passions that inspire her while taking non-conventional approaches to accomplish a meaningful life. Follow @SilverAntigen

Contact Agnes: aaconstantino@unmc.edu

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Limitations on Copyright: The First-Sale Doctrine

November 19, 2012 Comments Off on Limitations on Copyright: The First-Sale Doctrine Blog Like

by Bill Hadley, UNeMed | Nov. 19, 2012

Textbooks are expensive – really expensive. In fact, according to the U.S. Government Accountability Office, over the past two decades, the price of college textbooks has tripled, averaging around $1,200 a year for most students. Considering most students are on fairly tight budgets, it should come as no surprise, then, that there is a vibrant secondary market for used textbooks, and many students elect to save a healthy amount of money each year buying used books. In fact, this practice is so commonplace that the act of buying a used textbook is seen by most students as more or less a rite of passage in the college experience. Supap Kirtsaeng, however, saw it as an opportunity.

Kirtsaeng, a native of Thailand, came to the U.S. in 1997. While in the U.S., Kirtsaeng attended Cornell University and later received a PhD in mathematics from the University of Southern California. In order to subsidize his college expenses, Kirtsaeng did what many college students do: he sold used textbooks. There was only a small difference – Supap Kirtsaeng (allegedly) made over 1.2 million dollars doing so.

So how did Kirtsaeng pull that off? It’s actually quite simple: publishers generally charge more for textbooks sold in the U.S. than for those sold abroad. For example, where the market clearing price for a new textbook in the U.S. might be $200, a substantially similar version of the book might only be affordable for the equivalent of $20 to a student in Thailand. Recognizing this, Kirtsaeng’s family members would buy textbooks in Thailand at the reduced cost, ship them to Kirtsaeng, and Kirtsaeng would sell the books in the U.S. at a price undercutting the domestic cost of the textbook.

Catching onto this scheme in 2008, textbook publisher Wiley & Sons sued Kirtsaeng for infringing Wiley’s copyrights in the textbooks. Wiley eventually won the case, but certiorari was granted to Kirtsaeng’s appeal on April 16, 2011. On Monday, October 29, Kirtsaeng v. John Wiley Sons., Inc. was argued before the Supreme Court. The case highlights important aspects of the First Sale Doctrine – the principle which gives purchasers of a copyrighted work the right to sell that copy of the work to another downstream purchaser.

The first sale doctrine is an important limitation on the scope of copyright protection, so in light of having a copyrights case argued in front of our nation’s highest court, this seems as good a time as any to discuss it.

Codification of the First Sale Doctrine

The First Sale Doctrine is codified in U.S. under 17 U.S.C. § 109(a), which states, in relevant part:

Notwithstanding the provisions of §106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord…

In other words, once a copy of a copyrighted work is purchased from the copyright holder (or otherwise “lawfully made”), the purchaser of that copy becomes the unlimited owner of the distribution rights (under §106(3) of the Copyright Act) in that copy. The purchaser is thereafter permitted to control, exclude, dispose of, transfer, or otherwise distribute the copy as the purchaser sees fit. The first sale doctrine does not give the purchaser a copyright interest in the author’s creative work; it only transfers to the purchaser the right to distribute their interest in the copy of the work.

Issues at Play in Wiley v. Kirtsaeng

In theory, the first sale doctrine is fairly straightforward. Unfortunately, even the simplest legal principles can become startlingly complex in unforeseen circumstances – and that is certainly the case here. There are a variety of difficult issues the court is looking at in Kirtsaeng which will impact the rights enshrined in §109(a). Fortunately, a brief examination of these issues will serve as a good mechanism for understanding the application of the first sale doctrine in practice.

Let’s look at these outstanding issues now:

1.) Conflict with Import Rights

While §109(a) gives the owner of a lawfully-obtained copy of a copyrighted work the right to freely transfer ownership of that copy, 17 USC §602(a)(1) states that, “Importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under §106…”. In other words, importing of a copyrighted work into the US, without permission from the copyright owner, is considered copyright infringement under §106.

§602 carves out no exceptions for importation of works lawfully owned by an importer under the first sale doctrine; a plain reading of the text §602(a)(1) therefore conflicts with a plain reading of §109(a) when a person imports a copyrighted work which was lawfully obtained in accordance with the first sale doctrine. Clearly this makes no sense – and this is the primary reason the case has reached Supreme Court. It will be interesting to see how this conflict is resolved in the decision.

2.) Contractual Restraints on Alienability

Each textbook sold abroad by Wiley was marked, “Authorized for sale in Europe, Asia, Africa, and the Middle East only…The Publisher may recover damages including but not limited to lost profits and attorney’s fees in the event that legal action is required.” Does this restraint reach through a lawful purchase to limit the distribution rights of the purchaser of the textbook?

Generally speaking, United States common law disfavors unreasonable restraints on alienability built into the transfer or sale of property. In fact, the Supreme Court noted that such unreasonable restraints highlight the need for the First Sale Doctrine in the first place (see e.g. Bobbs-Merrill Co. v. Strauss, 210 U.S. 339 (1908)). On the other hand, recent cases (e.g. the 9^th Circuit’s decision in Vernor v. Autodesk, Inc., No. 09-35969, slip op. at 13871-72), have found that a copyrighted work was licensed to a purchaser – as opposed to sold – and that title to the copy of the protected work was not transferred. Therefore, the first sale doctrine was not implicated and the restraints on alienability in the license were permissible.

While it is not likely that Kirtsaeng’s purchase of the textbooks overseas will be considered a ‘license’ to the textbooks, Vernor highlights an important principle that should be considered whenever the first sale doctrine is implicated: was title to the copy of the protected work actually transferred?

The First Sale Doctrine as a Policy

As an observer, determining who will prevail at the Supreme Court level is never easy; interestingly, it can be even more difficult to evaluate who we want to win. That is, the policy implications of a Supreme Court ruling are often just as difficult to untangle, if not more so, than the legal ramifications. Compounding the problem is that who we “want” to prevail is based on entirely subjective notions of fairness.

For example, is it fair to students in the U.S. (many of whom are, or will be, in difficult financial situations) that Wiley charges astronomical prices for its books in the US while charging barely above the break-even price for the same product abroad? It may not seem so at first blush, but it is important to remember that one of the hallmarks of intellectual property is that the rights-holder, by virtue of its monopoly power, has the right to sell his protected goods at a price of his choosing. Generally it is wise for the rights holder to choose the price that makes the most economic sense from a profit perspective – but should that include the right to segment the market (e.g. domestically and abroad), and if so, to what extent?

Moreover, consider the impact of the outcome: if Kirtsaeng wins and legitimate owners of copies of protected works are able to import them freely into the U.S., what will result? Probably not lower domestic textbook prices. Rather than drop prices domestically, Wiley and other publishers will more likely elect to sell each textbook at the same domestic price worldwide – thus, nullifying the incentive to import. The net effect of this is that domestic text book prices in the U.S. stay the same, while textbooks for students abroad become virtually nonexistent in some markets. Is that fair? On the other hand, if Wiley wins, what does that say about the first sale doctrine as a limitation on the scope of copyright considering the effects of globalization on the modern economy?

Let’s be clear: the Supreme Court is only supposed to rule on the matters of law in front of it, policy implications be damned. In theory, the view of the court is that, if ruling on the law results in bad policy, it is the job of the elected members of Congress to draft a law that reflects a good policy. In practice, however, it is naïve to think that policy matters are not considered by the court. Given that the scope of copyright – a policy – should be given at least some consideration in Kirtsaeng, it will be interesting to see how the court rules.

Cases like Kirtsaeng make it all the way to Supreme Court very rarely and the outcome could set a narrative for the way the court interprets the scope of copyrights for years to come – a particularly compelling topic considering the ambiguity in the copyright law as it pertains to the internet and digital mediums of expression.

If you have any questions or comments, please do not hesitate to contact the author or leave a comment below.

Join us next week when we discuss the implications of technology transfer.

About the Author

Bill Picture
Bill Hadley, JD

Bill is a licensing associate at UNeMed, where he handles evaluation, development, marketing, and licensing for medical device, software, and telemedicine-based invention disclosures. He received a B.S. in Chemistry from the Colorado School of Mines and a J.D. from the Creighton University School of Law. Bill is currently in training for next fall’s intramural volleyball league, where he has personally guaranteed at least one victory for the mighty UNeMed Volley Llamas.

Contact Bill: Bill.Hadley@unmc.edu

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You’re an inventor… now what? Three things you can do with your intellectual property

November 7, 2012 Comments Off on You’re an inventor… now what? Three things you can do with your intellectual property Blog Like

by Joe Runge, UNeMed | Nov. 7, 2012

Intellectual property is an asset which affords its holder the right to exclude others from the use of a particular idea. In this way, an author can prevent a publisher from printing her story or an inventor can stop a company from manufacturing his machine. Yet it is not always obvious how an intellectual property holder can recover any value from it. Bob Kearns may have invented the intermittent windshield wiper, but his efforts to recoup value from that invention (as recounted in the 2008 movie Flash of Genius) were not at all simple. As Kearns’ odyssey demonstrates, an inventor may have a great new invention or an improvement to an existing product, but lack the capability to make products that use the invention. To make the most of the asset, creators of intellectual property need to have an end goal in mind: how to convert intellectual property to income.

1. Suing for Patent Infringement

As discussed before, patents give the owner the power to prohibit others from making, using, selling, offering to sell, or importing the protected invention. An obvious method to gain profits from a piece of intellectual property is litigation, through which an intellectual property holder can assert rights and sue infringers. Unfortunately, infringement lawsuits can be enormously expensive, even if they settle early. For patent infringement, the median cost of a lawsuit is over half a million dollars, and requires an infringer that the rights-holder can identify. Litigation can be enormously lucrative, but it is a very risky way to get a return on intellectual property.

2. Selling a Protected Product Yourself

Another approach to commercialize an invention is to actually make, publish or otherwise produce the idea the intellectual property protects. If there is a good intellectual property position and there is a market for it, the exclusive rights granted by the intellectual property can provide a distinct commercial advantage against competitors. A trademark, for example, gains value only as a business uses that mark to provide goods and services to its customers. That being said, innovators are not always entrepreneurs. Just as some authors are not interested in publishing their own books, some inventors that own intellectual property are not interested in forming their own companies. Moreover, in an age of specialized production and mass media, it can often be very difficult to get the appropriate regulatory approval, start-up capital, good manufacturing process or mass market appeal to profitably exploit intellectual property. As you might imagine, for many innovators, selling products based on their intellectual property may not be a feasible option.

3. IP Licensing

A third commercialization approach is for the rights holder to license the intellectual property to a third party. Intellectual property licensing is very complex but it creates an efficient method by which authors, inventors, and other intellectual property holders can get a return for their rights.

Intellectual property licensing is essential for a number of industries, many of which are not technology driven. Franchising, for example, is built around licensed intellectual property; an entrepreneur can license the right to use the trademarks, know-how, advertising, and other intellectual property of an existing company in order to start a business. In return, the company who licenses their assets may receive a royalty or a fee from the entrepreneur. Franchising shows the power of licensing intellectual property in the modern economy. Intangible assets such as know-how, supply chain, methods to find a physical location, and the goodwill associated with a particular brand can be readily packaged and distributed worldwide. It makes possible, for better or worse, the precise application of a successful business model throughout the world. It also maintains control of the intellectual property with its owners – thereby allowing only the licensee’s conditional use of it.

In technical fields, intellectual property licensing is also powerful. An individual inventor can spend decades perfecting a new process and years seeking a patent to protect it. She can then identify a company that would benefit from the process and license that company the right to use her patents (while still retaining ownership over them). A patent license further provides the basis for the inventor to provide additional know-how. The license is the transaction whereby the inventor fundamentally transfers the ability to use the technology to the licensee.

There are, however, many considerations an inventor must take into account when licensing his intellectual property. One critical issue is exclusivity: does the company getting the license have only the permission to use the intellectual property or can they exclude others from using the intellectual property? Exclusivity fundamentally changes the nature of the license. If the inventor of the new process can broadly apply it to a number of competing business, she may be able to non-exclusively license it to each competitor or she could license it to just one competitor exclusively. Each warrants different terms: an exclusive license needs to capture the whole value of the intellectual property where the rights holder can convey multiple non-exclusive licenses.

In addition to exclusivity, another license consideration can be field-limitations. A franchisee may own the franchise rights for an entire geographical region; such as the license may convey exclusive rights but only for a specific city or state. Similarly, a musician may record a song and license it for many different uses – an advertising company may have exclusive rights to use the song for commercials, a sports team may have exclusive rights to use it during the pre-game show and multiple production companies may have non-exclusive rights to play the song during films and television shows. As with any contract, field-limited licenses need to be specific in defining the field. Does a license to use a song for television shows include home video reproductions of the show? Does it include web-only broadcasts? Careful drafting on fields and other definitions of intellectual property licenses is critical for the rights holder to maximize the value of her intellectual property.

Efficient Commercialization of Intellectual Property is Critical

Intellectual property licensing is more than a way for intellectual property holders to obtain value for their patents, copyrights and other intellectual property. It is a means to transfer not only intellectual property, but all of the intangible value that goes with it. In an increasingly specialized marketplace, efficient means to transfer intellectual property and the associated know-how is critical for innovation to benefit the economy.

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Innovation Week Continues Today

October 17, 2012 Comments Off on Innovation Week Continues Today Innovation Week, News Like

Yesterday, Dr. Gary Madsen, UNeMed’s Entrepreneur-In-Residence (EIR) discussed his role in the company.

Attendees learned that an EIR takes on different roles depending on the client. UNeMed’s EIR is here to help with business consulting, networking, mentoring, and coaching those who are dwelling or seeking to venture into the entrepreneur realm.

Innovation Week continues with a seminar highlighting the new America Invents Act (AIA).

This federal legislation was signed into law on September 16, 2011 and represents the most significant change to our patent system since 1952.

AIA transformed the U.S. patent system from a “first to invent” to a “first inventor to file” system and this switch will come into effect in March 2013. These and other changes will be discussed by Steven Ritchey, Charles Romano, and Denise Mayfield from Thompson Coburn, LLP.

Charles Romano, PhD is a Senior Patent Agent in the firm’s intellectual property area and has over fourteen years of experience in the biotech industry.
Steven Ritchey, J.D. is a partner and is involved in the firm’s Intellectual Property practice and is in charge of preparation and prosecution.
Denise L. Mayfield, J.D. is a partner in the firm and advises academic institutions, biotechnology firms, and pharmaceutical companies on various areas.

The seminar will be held today at 2:00 PM in DRC-I 1005. Attendees will have the opportunity to interact with the panelists during the seminar.

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Innovation Week Kick-off Event

October 16, 2012 Comments Off on Innovation Week Kick-off Event Innovation Week, News Like

The UNeMed staff greeted over 350 people that stopped by to say hello.

OMAHA, Neb. (Oct. 16, 2012)—Innovation Week officially began yesterday in the Durham Research Center Atrium.

Innovation Week comprises a series of events highlighting UNMC researchers who brought their innovations to the UNeMed office.

UNMC personnel enjoyed drinks from the ever popular Jo-On-The-Go Espresso and Smoothie Bar and a variety of snacks.

UNMC personnel that stopped by the kick off event were able to:

Enjoy free drinks from the Jo-On-The-Go Espresso and Smoothie Bar;
Enjoy samples from a variety of snacks;
Grab a free t-shirt featuring this year’s new design; and
Select from a variety of neat gifts like water bottles, phone holder, screen cleaners, sticky notes, pens, and more;
Register for the iPad giveaway

UNMC Personnel could select from a variety of gifts.

Visit our Facebook page to see if you or your coworkers were captured by Jack’s mischievous camera.

Innovation Week continues today at 12:30 with a seminar by Dr. Gary Madsen, UNeMed’s own Entrepreneur-In-Residence, who will present “What is an EIR and how can he help you?” in the Durham Research Center Auditorium. Pizza will be provided while supplies last.

See our Schedule of Events to stay up-to-date.

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2012 Research Innovation Week

October 4, 2012 Comments Off on 2012 Research Innovation Week Innovation Week, News Like

UNeMed Prepares for the Sixth Annual Innovation Week

Innovation Week

Calendar of Events

Download a PDF of the Events Taking Place During Innovation Week.

OMAHA, Neb. (Oct. 4, 2012)—Following its success over the past five years, UNeMed Corporation announces the return of Innovation Week. Innovation Week 2012will kick off Monday, October 15^thwith an event where attendees can meet the UNeMed Staff and grab some cool gifts, while they enjoy snacks and an Espresso or Smoothie. The events will culminate on Thursday, October 18^th with the Innovation Awards,a ceremony to honor those individuals who submitted new inventions, obtained patents, and licensed technologies through UNeMed.

Last year, nearly 200 people were exposed to the wide range of services that UNeMed offers. This year we’re gearing up to provide the UNMC research community with a great opportunity to get immersed in the world of technology transfer and commercialization. Innovation week helps raise awareness of how UNeMed can help investigators commercialize their research innovations.

All inventors are recognized during the Innovation Awards for submitting their ideas to the technology transfer office. A special award is given to the most promising new invention. The winning inventor developed an idea that has the most potential to produce a positive impact in healthcare and will receive $10,000 in an unrestricted grant to fund research. A second award will be given to an inventor who is currently working on innovative ideas that have great potential to generate commercial value to the office. This award provides a $25,000 unrestricted research grant.

Additionally, Innovation Week participants can register each time they attend an event to win an iPad. The winner of the iPad will be announced during the Innovation Award Ceremony on October 18^th and they must be present to claim their prize.

Make sure you stop by and say hi to the UNeMed staff, we look forward to seeing everyone there!

Schedule of events for Innovation Week

October 15^th — 9 a.m. — DRC-I Atrium— Innovation Week kicks off in the Durham Research Center Atrium. Come meet the UNeMed staff and grab a free t-shirt and neat gifts while enjoying drinks from Jo-On-The-Go Espresso and Smoothie Bar, as well as snacks. Also, sign up to win an iPad!
October 16^th — 12:30 – 1:30 p.m. — DRC-I 1002— Dr. Gary Madsen, Entrepreneur-In-Residence at UNeMed Corp. will discuss what an EIR is and how he can help you. ** Pizza lunch provided while supplies last.
October 17^th — 2:00 – 3:00 p.m. — DRC-I 1005 — Join Steven Ritchey, Charles Romano, and Denise Mayfield of Thompson Coburn, LLP as they discuss highlights of the America Invents Act.
October 18^th — 4:00 p.m. ~ — DRC-I 1002 with reception to follow in the Atrium — Innovation Awards Ceremony! ** iPad winner announced at ceremony – Must Be Present to Win!

*** Sign up to win the iPad at the Oct. 15, 16, & 17 events

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Do you recognize how trademarks identify the creator of a good?

October 3, 2012 Comments Off on Do you recognize how trademarks identify the creator of a good? Blog Like

by Bill Hadley, UNeMed | Oct. 3, 2012

When a word or symbol is of a character to be appropriated, as a trademark, it becomes property which a competitor has no right to use, either alone or in connection with matter to which its owner lays no claim, without such owner’s consent.

You get up in the morning and grab a cup of coffee on the way to work. You know what to expect just by looking at the well-known Starbucks siren logo on the cup. You arrive at work, turn on your computer and hear the all-too familiar chime of a Microsoft Windows PC booting up.

For lunch, you stop off at a fast-food restaurant and know that they’re handing you your favorite sandwich at McDonald’s because the Golden Arches haven’t changed much since you first started going there. On your way back home from work, you stop by a shoe store to buy some Nikes. You easily locate a pair by the ‘swoosh’ on its side.

All these product features – the logo, the chime, and the packaging – are trademarks. Trademarks are distinctive signs or indicators used by a provider of a good to identify the provider and distinguish it from its competitors. Thus, a good trademark provides for quick and easy product recognition by consumers.

Trademark law exists only to protect the underlying mark, not the product the mark represents. Thus, trademarks cannot be used to protect an invention (Patents) or literary works, software, or music (Copyrights). Nevertheless, trademarks are an integral part of intellectual property protection.

Today, we’d like to take a few minutes to explain how trademarks work, how they don’t, and how they differ from more well-known protection mechanisms.

What exactly is a Trademark?

The Apple brand includes the iPhone, iPad, and iPod

Simply put, trademarks are (nearly) anything that can be used to identify the creator of a good. Because we often attribute the quality of a good to its producer, trademarks are, ipso facto, also signifiers of consumer good will and reputation. By way of illustration, consider: one of the reasons the iPad has been so successful is that, through production of other quality portable electronics such as the iPod and iPhone, consumers attributed the Apple brand with production of quality electronics. Branding electronics with the distinctive Apple logo, therefore, lends an aura of quality – of value – that the product might otherwise lack (at least initially).

The ultimate goal of trademark law is to prevent commercial confusion. Trademarks protect the goodwill of a consumer toward a company (and its reputation) by providing the company a monopoly on the use of the mark attached to its products. Additionally, trademarks protect consumers: if Apple wasn’t able to exclude other electronics manufacturers – say… Samsung – from placing the apple icon on Samsung electronics, consumers might mistakenly purchase a Samsung electronic device believing it to have the quality of an Apple product. (Please note that this comparison is only for illustrative purposes only – the author has no actual opinion on the value of Samsung and Apple products. He still proudly rocks his Blackberry!)

The Different Categories of Trademarks

Trademarks are classified in levels of ‘distinctiveness’ – marks which are more “distinctive” (i.e. “fanciful” or “arbitrary”) are afforded more preferential treatment than trademarks that are less so (i.e. “descriptive” or “generic” marks). Trademarks are associated with a category of distinctiveness based on how the mark relates to the product it signifies: the more related the mark is to the product, the less distinct it is. For an illustration of this principle, take a look at the table below:

Table adapted from https://gbr.pepperdine.edu/tag/trademark/

Thus, we can see that the context in which the mark is used is of great importance: ‘Apple’, for example, may be a strong arbitrary trademark for a computer, but would probably be a much weaker descriptive or generic mark for an orchard.

Trademark Limitations

While many types of identifying marks are available for trademark protection, there are a few important limitations. For example, trademarks cannot be “functional” – that is, they cannot perform an action or otherwise contribute to the effectiveness of the product they represent. Thus, the classic contour shape of a Coca-Cola bottle is trademarkable (as it does not contribute to the pleasure derived from drinking a coke), whereas the “wide-mouth” shape of a soft drink can might not be able to be trademarked, because the wider mouth itself contributes to ease of pouring the drink – and thus utility is derived from the design.

Another type of limitation is the ‘Genericization of a Mark’. It is possible for a once arbitrary or fanciful mark to, over time, become generic due to over-saturation of its use. For example, ‘Aspirin’ used to be a trademarked name of acetylsalicylic acid owned by Bayer, but due to its colloquial use for “painkiller”, it has been deemed a generic mark in the US. That is to say, today, if someone wants an ‘Aspirin’, it does not necessarily mean that they want “acetylsalicylic acid produced by Bayer”, it simply means that they want to take a painkiller. Thus, the term ‘Aspirin’ does not serve to identify the producer of a good any longer and thus ceases to be a trademark. Other famous genericized marks include Kleenex for tissues, Xerox for paper copies, Scotch Tape for clear adhesives strips, and maybe even ‘Google’ for internet searches. Understandably, large companies invest substantial resources in policing the use of their marks in hopes of preventing “genericide”.

Trademark Registration

Common law trademark rights may be obtained automatically from use of a mark, alone, in commerce. Alternatively, a mark may also be registered – so long as there is no identical active mark currently in use – at the USPTO. Actual use in commerce is not required for a registered mark; instead, a bona fide intent to use the mark in commerce is sufficient.

Without registration, a mark protected by common law is only valid in the region in which the marked goods are actually sold. Registration of a trademark ensures that the mark is valid and can be used nationwide. Runza, for example, has a trademark registered at the USPTO and, therefore, the Runza trademark has effect nationwide. If the mark were not registered, however, it may not be enforceable in states like Colorado, where no Runza franchises are in business.

After a trademark is registered, a company may use the well-known circle R (®) icon with its mark. Marks that are pending registration or are asserting common law rights may use the TM symbol (™). Using the ® icon on a mark that is not registered is illegal.

Why You Should Learn About Trademarks

UNMC Discover is a registered trademark owned by Board of Regents of the University of Nebraska.

As a UNMC employee, trademarks will likely only very rarely be of importance to you (UNMC and its employees/students are generally not involved in selling a product or good). Nevertheless, in some cases a familiarity with trademark law might be important. For instance, if you were to spin-out a start-up company around a piece of intellectual property developed here at UNMC, you may want to develop a mark to identify the goods that company intends to sell.

Additionally, you may be involved with work involving the use of other entity’s marks, such as UNMC’s mark, or marks of collaborating institutions or industrial partners. In these circumstances, it is important to be able to recognize their marks and to know when and how that mark may be used.

If you are interested, the University of Nebraska policy on trademarks is set forth in Executive Memorandum No. 20, which states:

(T)he Vice President for Business and Finance and the Principal Business Officer on each of the campus of the University, with the written approval of the Vice President and General Counsel or an attorney on his or her staff, is hereby granted the delegated authority to develop, adopt, and protect University trademarks, trade names, copyrighted designs and other indicia on behalf of the University of Nebraska, its major administrative units and the various administrative subdivisions thereof.

Trademarks related to UNMC may be disclosed to UNeMed via the following form. Supplemental information about trademark law can be found on Harvard’s Berkman Center for Internet & Society website.

If you have any questions or comments, please do not hesitate to contact the authors or leave a comment below.

Join us next week when we discuss the licensing process.

About the Author

Bill Picture
Bill Hadley, JD

Bill is a licensing associate at UNeMed, where he handles evaluation, development, marketing, and licensing for medical device, software, and telemedicine-based invention disclosures. He received a B.S. in Chemistry from the Colorado School of Mines and a J.D. from the Creighton University School of Law. Bill is currently in training for next fall’s intramural volleyball league, where he has personally guaranteed at least one victory for the mighty UNeMed Volley Llamas.

Contact Bill: Bill.Hadley@unmc.edu

About the Author

Dallin Call, BS

Dallin is a Legal Intern at UNeMed, where he works together with the Contract Specialist to protect, maintain, and enable the contractual rights of UNMC researchers in the intellectual property that they develop. He received a B.S. in Chemical Engineering from the University of Utah and is a student at Creighton University School of Law. Dallin enjoys spending time with his wife and daughter, going on walks, watching movies, reading books together with his family, and playing trivia games. He also likes to play sports, especially basketball.

Contact Dallin: Dallin.Call@unmc.edu

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Dr. Dixon to present Thursday night at Cornstalks

September 26, 2012 Comments Off on Dr. Dixon to present Thursday night at Cornstalks News Like

by Michael Stacy, Silicon Prairie News

OMAHA, Neb. (Sept. 25, 2012)—Representatives from Pipeline, a Kansas City, Kan.-based regional entrepreneurial fellowship, are scheduled to present Thursday night at Cornstalks, a monthly forum hosted by the Greater Omaha Chamber of Commerce for people interested in high-growth entrepreneurship.

Thursday’s event gets underway with networking at 6:30 p.m. and features a Pipeline presentation at 7:30. Cornstalks takes place at the Silicon Prairie News office (1111 North 13th St., Suite 208) and is free and open to the public.

Joni Cobb, the founding president and CEO of Pipeline, will talk Thursday. Others tentatively scheduled to present include Pipeline partners Dr. Michael Dixon (UNeMed) and Karen Linder (Nebraska Angels) and current Pipeline innovators Ben Pankonin (Social Assurance) and Blake Lawrence (Hurrdat Social Media).

Pipeline is a year-long program highlighted by intensive, three-day modules each quarter and an Innovator of The Year event in January. The program takes applicants from from Kansas, Missouri and Nebraska and seeks to fill its classes with entrepreneurs that hail from a variety of industries.

Pipeline is accepting applications for its 2013 class until Oct. 29. Thursday’s event is designed to help entrepreneurs interested in applying learn more about the program. People interested in attending Thursday are encouraged to RSVP to Nora Freyman at nfreyman@pipelineentrepreneurs.com.

For more on Pipeline and applications for its 2013 class, see our previous story: “Pipeline opens application process for 2013 entrepreneurial fellowship“.

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How to determine who is an inventor on a patent: Unraveling inventorship vs. authorship

September 26, 2012 Comments Off on How to determine who is an inventor on a patent: Unraveling inventorship vs. authorship Blog Like

by Bill Hadley, UNeMed | Sept. 26, 2012

Not all authors are necessarily inventors

I recently had a meeting with a faculty member, whom I will call Dr. A, to review an invention disclosure Dr. A had recently made. Shortly after the meeting started, however, Dr. A received a phone call from a colleague (the creatively-named Dr. B) at another university. As I waited for the call to end, I couldn’t help but hear a bit of the discussion. As it turns out, Dr. B was negotiating with Dr. A to have Dr. B’s name appear on a publication coming out of Dr. A’s lab. Aware that discussions of this nature are common in academia, I didn’t pay this much mind, until, at the end of the conversation, the talk turned to intellectual property. In return for Dr. A’s agreeing to put Dr. B’s name on a publication coming out of his lab, Dr. A requested that Dr. B include Dr. A on a patent application that was coming out of Dr. B’s work – at which point, I promptly reacted like this. This is a big no-no from a patent perspective and here’s why.

Authorship on a publication is determined by custom; Inventorship on a Patent is determined by law

Authorship attribution can even vary between labs.

“Authorship” on a publication is attributed differently among the various academic disciplines and can even vary from institution to institution. In large part, authorship is determined by custom: for an academic publication, a variety of people may be legitimately considered for authorship, including those persons involved in the experimental design, those who performed lab work, wrote or edited the manuscripts, or even contributed their general expertise. Authorship may also be bestowed for financial reasons or professional courtesy to collaborators and mentors.

The rules for inventorship, on the other hand, are determined by law, and violation of these rules can have severe impacts on a resulting patent. In order to show how inventorship of a patent differs from authorship of a publication, let’s take a few minutes to explore the patent law on this oft-overlooked issue.

Inventors are the Original Owners of a Patent

When it comes to patents, inventorship is vitally important. This is because, under Article I, § 8 of the Constitution, patents are originally owned by their inventors:

The Congress shall have power…to promote the progress of science and the useful arts, by securing for limited times to authors and inventorsthe exclusive rights to their respective writings and discoveries.

This mandate is codified in 35 USC § 101, which limits the persons who can receive a patent to the inventor. (“whosoever invents… may obtain a patent”). Note that § 101 does not prohibit the inventor from subsequently assigning their rights in the patent away (such as in an employment agreement, see e.g. UNMC Board of Regents Policy Nos. 3.10 and 4.4.1). As a procedural step, however, the identified inventors of a patent must be named the original owners of the patent.

Legal Definition of “Inventor”

Because inventors are the original owners of their patents, it is imperative to define who, exactly, the inventor of a patent is.

In legal terms, the invention in a patent is defined by its claims – you might expect, then, that the inventor of a patent is defined by the claims as well. This turns out be true, as, to be an inventor of a patented invention, an inventor must have contributed to the conception of the invention and to at least one claim on the issued patent (see e.g. Ethicon Inc. v. United States Surgical Corp., 135 F.3d 1456 (Fed. Cir 1998)).

Moreover, under 35 USC § 116, there may be more than one (i.e. a joint) inventor of a single patent, so long as each joint inventor individually meets the legal requirement for inventorship described above, and there was at least some concerted effort between the inventors (see e.g. §116; Eli Lilly v. Aradigm Corp., 376 F.3d 1352 (Fed. Cir 2004). Note that there are many problems that can arise in a patent with joint inventors, some of which we have previously noted in our discussion regarding collaborations and their impact on inventions and patents.

Ramifications of Mis-Identified Inventors

If the inventors on a patent are mis-identified, the end-result is that the patent can be invalidated – often costing the inventors thousands of dollars and years of hard work. Fortunately, if the error in identifying the proper parties was made in good faith, these defects can be remedied under either §116 or 35 USC §256. For an excellent summary of actions that can be taken to correct inventorship on a patent, check out this article from Campbell Chiang at Duke University.

The take-home message here is: don’t use inventorship on a patent application as a commodity, as is sometimes done with authorship on a publication.

This is for two reasons. First, the “agreement” between the collaborators will be found to be invalid if it is ever discovered (which it will be for any valuable patent) – rendering such an “agreement” worthless. Second, if inventorship is found to be invalid due to an intentional act by one valid inventor, courts may construe the bargain as an intentional attempt to defraud the USPTO, thus nullifying the good-faith exceptions to remedying inventorship errors described above. This could invalidate the patent in its entirety.

From my perspective, full disclosure with your attorney or patent agent is the best policy. When disclosing an invention to your technology transfer office (or patent attorney), do not simply list the authors of a related publication as inventors. Although all authors may be considered inventors in some circumstances, the inventors of a patent are not necessarily all of the authors of a related publication.

When in doubt, provide your counsel with the names of all the individuals who contributed to the invented work, and let the attorneys decide who fits the bill as inventors. This may be more work for the attorneys in the short term, but it can pay dividends to the inventors (and investors!) down the road if the patent is ever challenged in court.

If you have any questions or comments, please do not hesitate to contact the author or leave a comment below.

Join us next week when we discuss Trademarks.

About the Author

Bill Picture
Bill Hadley, JD

Bill is a licensing associate at UNeMed, where he handles evaluation, development, marketing, and licensing for medical device, software, and telemedicine-based invention disclosures. He received a B.S. in Chemistry from the Colorado School of Mines and a J.D. from the Creighton University School of Law. Bill is currently in training for next fall’s intramural volleyball league, where he has personally guaranteed at least one victory for the mighty UNeMed Volley Llamas.

Contact Bill: Bill.Hadley@unemed.com

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Five important aspects of copyrights that you should know

September 17, 2012 Comments (2) Blog Like

by Bill Hadley, UNeMed | Sept. 17, 2012

In 2009, Fredrik Colting attempted to publish 60 Years Later: Coming Through the Rye, a thinly-veiled sequel to The Catcher in the Rye, by J.D. Salinger.

In 2009, Swedish author Fredrik Colting (under the pen name J.D. California) attempted to publish a book titled 60 Years Later: Coming Through the Rye. Unfortunately, Coming Through the Rye, was a thinly-veiled sequel to the 1951 classic, The Catcher in the Rye, by J.D. Salinger. Both novels are set in New York, feature the same characters (though identified differently – Holden Caulfield is called “Mr. C”, for example), and feature similar events. Salinger sought to prevent Colting from publishing the sequel and sued him for copyright infringement. Salinger eventually won, but Through the Rye illustrates complex issues about the scope of our copyright system.

1. Copyrights promote the progress of science and the useful arts

How far, exactly, does Salinger’s copyright in The Catcher in the Rye extend? Does it allow Salinger to prohibit others from using similar story arcs, characters, or themes? Conversely, Through the Rye can easily be viewed as a simple cash grab – that Colting simply sought to take advantage of the popularity of Catcher in order to “take the easy way out” in writing his own novel. Should this be permitted? Where do courts draw the line in determining whether Colting was merely “inspired by” Salinger, commenting on Salinger, or whether he was flat-out copying him? Don’t all stories, to some extent, build on their predecessors?

These are not easy questions to answer, and they strike at the heart of the copyright system. Copyrights, along with patents, are explicitly implemented by the Constitution to promote the “progress of science and the useful arts”. But is that really happening here? Some would argue that Salinger’s copyright is inhibiting creative progress by sabotaging Colting’s ability to publish his own work. Others would argue that it is functioning perfectly because Colting’s work is not creative at all: it simply exploits the creativity of Salinger. Copyrights are necessary, this latter group would argue, to protect the original author’s interest in his creation and to maintain the sanctity of the creative work.

Be under no illusions – I don’t have the space to faithfully examine these (extremely controversial) issues here. But, by providing the framework for how the copyright system operates, I can hopefully provide a basis for you to reach your own educated conclusion.

2. Works that may be copyrighted

Under 17 USC § 102(a), a copyright may be granted to:

Any original work of authorship fixed in a tangible medium of expression, now known or later developed, from which [the original work of authorship] can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

Using this definition, 17 USC § 102(a) illustrates the types of work that are eligible for copyright protection:

Literary works
Musical Works
Dramatic Works
Pantomimes and choreographic works
Pictorial, graphic, and structural works
Motion pictures
Sound recordings
Architectural works

Pointedly, 17 USC § 102(b) explicitly disclaims ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries from copyright protection. In other words, a copyright only extends to the expression of an idea, not to the idea itself. Thus, an author may have a copyright on a novel exploring teenage angst, but the copyright only extends to the expression of teenage angst provided in that novel, not to all novels displaying teenage angst.

3. Exclusive rights are granted by a copyright

Under 17 USC § 106, the owner of a copyright has the exclusive right to do the following with the copyrighted work for the life of the author, plus an additional 70 years:

To reproduce the copyrighted works
To prepare derivative works
To distribute copies of the work
To perform the copyrighted work publicly
To display the copyrighted work publicly
To perform the copyrighted work publicly by means of a digital audio transmission.

Unfortunately, the way these exclusive rights work in practice is not at all obvious. In fact, there are far too many nuances to these rights to describe in detail here. For a more in-depth explanation, check out this article.

4. Unauthorized use leads to copyright infringement

Ronnie Mack sued George Harrison for copyright infringement over Harrison’s 1970 hit “My Sweet Lord”. Compare the works here.

Simply put, a copyright is infringed when there is an unauthorized use of one of the exclusive rights from 17 USC § 106. Sometimes this determination is easy – often it is clear if an unauthorized party is distributing or displaying a copyrighted work. On the other hand, it is much more difficult, in many cases, to determine whether someone is actually reproducing a copyrighted work.

To resolve this issue, courts generally apply some form of the “substantial similarity” test. Determining whether the reproduction right of a copyright has been infringed, however, is actually quite complex, and application of the substantial similarity test is not a settled issue among the circuits. Therefore, for now, suffice to say that infringement of the reproduction right occurs when there has been an unauthorized copying of the material portion of a creative work.

For a comparison of a number of fascinating cases alleging infringement of a musical copyright, I highly recommend checking out the UCLA /Columbia University Music Copyright Infringement Resource.

5. Obtaining a copyright is a piece of cake

A copyright automatically vests in the author upon creation of a copyrighted work in a tangible medium of expression. So, in effect, all that is necessary to obtain a copyright is to complete work that is eligible for a copyright. It is also possible to formally register a copyright. To do so, all that is required is to complete an application form and submit a nominal 35$ fee along with a copy of the copyrighted work to be stored at the Library of Congress. Registering a copyright definitely has a number of important benefits for copyrights with commercial value.

Conclusion

In early 2012, the Congress attempted to pass the “Stop Online Piracy Act” (SOPA) in a desire to curb internet-based copyright infringement. Due to outcry from sources like Wikipedia (shown above), the House Judiciary Committee has postponed consideration of the bill.

Copyright protection extends to original works of authorship which are fixed in a tangible medium of expression. Furthermore, the copyright only extends to the expression of the idea behind that work of authorship – not the idea itself. Simple, right? Sort of – but unfortunately things become much more complex when applying concepts like Fair Use, Works for Hire, and the First Sale or Merger Doctrines. Moreover, copyrights as applied to software can be even more troublesome, especially when placed in the context of the internet.

The fact of the matter is that copyrights (usually) make a great deal of sense when discussing tangible items like books, artwork, or sheet music (i.e. things that were around when the copyright laws were drafted). They become much more complicated when applied to the newer digital mediums. The Digital Millennium Copyright Act seeks to address some of these issues, but in many cases only makes things more complicated. Hopefully we can discuss this in a subsequent post, but for today I hope this brief summary was useful in providing an overview of this commonly muddled area of the law.

If you have any questions or comments, please do not hesitate to contact the author or leave a comment below.

Join us next week when we discuss inventorship and naming co-inventors.

About the Author

Bill Picture
Bill Hadley, JD

Bill is a licensing associate at UNeMed, where he handles evaluation, development, marketing, and licensing for medical device, software, and telemedicine-based invention disclosures. He received a B.S. in Chemistry from the Colorado School of Mines and a J.D. from the Creighton University School of Law. Bill is currently in training for next fall’s intramural volleyball league, where he has personally guaranteed at least one victory for the mighty UNeMed Volley Llamas.

Contact Bill: Bill.Hadley@unemed.com

Nothing in this post should be construed as legal advice. It has been developed by the UNeMed staff as an educational resource for faculty, staff, students, and other personnel associated with the University of Nebraska Medical Center. While all information contained herein has been thoroughly fact-checked, this site is provided on an “as is” and “as available” basis. Neither UNeMed nor the University of Nebraska Medical Center make any representations or warranties of any kind, express or implied, as to the site’s operation or the information, content or materials included on this site. To the full extent permissible by applicable law, UNeMed and the University of Nebraska Medical Center hereby disclaim all warranties, express or implied, including but not limited to implied warranties of merchantability and fitness for any particular purpose. Neither UNeMed nor the University of Nebraska Medical Center will be liable for any damages of any kind arising from the use of or inability to use this site. You expressly agree that you use this site solely at your own risk.

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What everyone ought to know about using patents versus trade secrets

September 10, 2012 Comments Off on What everyone ought to know about using patents versus trade secrets Blog Like

by Bill Hadley, UNeMed | Sept. 20, 2012

Why do we have patents?

According to the U.S. Constitution, the patent system exists to “promote the progress of science and the useful arts.” We can (and should!) argue how effectively the patent system accomplishes this, but the important message here is that, at the end of the day, the patent system is in place to encourage innovation – but innovation by (and for) whom?

The simple answer is the inventor – after all, the inventor is personally incentivized to innovate via the exclusive rights bestowed upon them by virtue of a patent. This is correct, in a sense – but it is not the entire answer. Sure, in the short-run, inventors may be rewarded for their innovation by an issued patent. It is important to remember, however, that the real aim of the patent system is to promote the long-term innovation necessary to advance society as a whole. Rewarding individual inventors is just the short-term means to that long-term end.

The key consideration here is disclosure: a patent rewards the inventor for developing his patented gizmo by prohibiting others from making, using, selling, offering to sell, or importing the patented invention. In addition, patents also reward inventors for disclosing the invention. This is important, because, by disclosing the nature of the invention in the patent, the inventor has provided the basis for a future inventor to improve upon the invention. In turn, the future inventor will hopefully disclose their improvement in a patent, which someone else will improve upon and disclose in a patent, and so forth.

The thought behind this innovation loop is that, by promoting inventors to disclose their innovations to the public, we foster greater overall innovation, which, in the aggregate, benefits society.

As you may recall, trade secrets operate in a manner very similar to patents. That is, in certain circumstances, a trade secret gives its holder the exclusive right to use the trade secret information. Apart from that basic principle, trade secrets and patents are very different because trade secrets don’t require disclosure – in fact, they prohibit it. In other words, trade secrets are not intended to promote societal advancement, they are intended further only the interests of the trade secret holder.

So is it better to have a trade secret or a patent for an invention?
Society – as reflected by Congress and the USPTO – would certainly prefer that inventors patent their inventions. This is demonstrated by the strong rights given to patent holders and the restrictions in place on trade secrets (e.g. maintenance of secrecy and the possibility of reverse-engineering). In many ways, patents are designed to incentivize innovators not to use trade secrets. Nevertheless, in some circumstances, a trade secret is a perfectly viable option for an inventor.

To illustrate the competing nature of patents and trade secrets, consider the following hypothetical invention

The Hadley Widget

Let’s say, for example, that I have just invented a promising new invention which we will call, somewhat uncreatively, the Widget. (Note that it does not matter what the Widget is, only that it is subject-matter which is eligible for patent protection under 35 U.S.C. § 101.) The Widget is quite valuable and I have decided to build a company around it and make my fortune. Before doing anything else, however, it behooves me to consider the best way to protect the Widget from a competing firm – either by applying for a patent or keeping it a trade secret.

If I elect to pursue a patent, I will have to disclose the innovative concepts of the Widget to the public and pay substantial filing and attorney’s fees in order to obtain the patent. In return, in approximately 2-4 years – if a patent is eventually issued – I will have (relatively) dependable exclusive rights to the Widget for a period of 20 years from the date of my application. Thereafter, competitors will be free to use the widget to compete with my company.

On the other hand, if I elect to maintain the Widget as a trade secret, I will not need to pay any fees nor will I need to file any documents. Moreover, so long as the innovations of the Widget remain secret, my exclusive rights will exist in perpetuity. In return, I will have to implement policies within my company that are “reasonable” (whatever that is in my jurisdiction) to maintain the secrecy of the Widget. I will also have to accept that if anyone ever legitimately reverse-engineers or otherwise uncovers the innovative aspects of the Widget, I will immediately lose my exclusive rights to it.

With that in mind, here are a few considerations I need to take into account before determining which scheme is more beneficial to me:

How easy is the Widget to reverse-engineer? If the Widget is something easily reproduced or understood by a consumer (e.g. a paperclip or thumbtack), I should probably elect to get a patent. Conversely, if the Widget is something which, even if widely used, is difficult to precisely gain knowledge of (e.g. WD-40 composition, software source code), a trade secret may be in order.

How much have I invested in the Widget? Depending on the amount of funding I’ve received (or am attempting to get), it may be wiser to pursue a patent due to the relative certitude of patent enforceability (unlike that of the trade secret). Conversely, if the invested amount is significant, I may feel that I need 20+ years to recoup my investment. In that case, I might be willing to risk a trade secret (and I should probably review my business model!).

What is my market window? If the widget is only likely to be valuable for a few years or less, it might be smarter to go with a trade secret due to the delay and costs inherent to the patent application process. Moreover, the odds of the Widget being reverse-engineered or otherwise legitimately revealed in such a short window are dramatically smaller.

How confident am I in the Widget’s patentability? If I apply for a patent and it is subsequently rejected by the USPTO, the patent application will still be published to the public – thereby destroying any ability I have to keep the Widget a secret (note: this is why recipes are usually protected by trade secret).

How confident am I that I can build a brand around the trade secret information? Imagine if, by some miracle, the Google search algorithm was uncovered by Microsoft and was subsequently implemented in Bing, such that Google and Bing search results displayed identical results. Does anyone believe Bing would become a legitimate competitor to Google in that circumstance? Likely not, based on the strength of Google’s brand, its existing market share, and the functionality of its peripheral components.
In this case, the Google search algorithm’s secrecy bought Google the time it needed to establish a strong brand, customer loyalty, and market share without the necessary investment or delay incumbent in a patent application. If I think that I can build a brand around the Widget which can sustain a company outside the market advantage gained by a patent or trade secret, due to the lower entry costs of obtaining a trade secret, it might be an attractive option.

Do patents really foster innovation for society as a whole? This is a difficult question, and rational minds can certainly differ as to the answer. Nevertheless, it can be fun to play the “what if…” game to try and wrestle with complex issues like this.

So, what if, for example, Coca-Cola had elected to patent their recipe for a soft drink instead of keeping it as a trade secret?

It is entirely possible that, today, the soft drink industry would be quite different. For example, instead of a variety of different flavors/brands of soft drinks (e.g. Mountain Dew, Dr. Pepper, Root Beer, Grape Soda), we might have been stuck with four or five firms producing a cola which tastes identical to a Coke. Once the Coke patent had elapsed, what would have been the incentive to innovate or invest away from a formula which is proven to be the most popular in the market?

This is an example of an industry where a trade secret didn’t hinder innovation – instead of many firms trying to emulate the “Coke experience,” rival firms have been forced to innovate in ways to differentiate themselves from the secret coke formula. This has resulted in more competition and greater variety for the consumer. Or, stated another way, a societal improvement in the soft drink industry.

On the other hand, had the Twinkie recipe had been patented, we might even now find ourselves in a world where multiple Twinkie manufacturers were engaged in a price war to produce the most cost-effective Twinkies. I don’t think any of us would have a problem with that.

If you have any questions or comments, please do not hesitate to contact the author at bill.hadley@unmc.edu or by leaving a comment.

Join us next week when we discuss the key elements of a Copyright.

Nothing in this post should be construed as legal advice. It has been developed by the UNeMed staff as an educational resource for faculty, staff, students, and other personnel associated with the University of Nebraska Medical Center. While all information contained herein has been thoroughly fact-checked, this site is provided on an “as is” and “as available” basis. Neither UNeMed nor the University of Nebraska Medical Center make any representations or warranties of any kind, express or implied, as to the site’s operation or the information, content or materials included on this site. To the full extent permissible by applicable law, UNeMed and the University of Nebraska Medical Center hereby disclaim all warranties, express or implied, including but not limited to implied warranties of merchantability and fitness for any particular purpose. Neither UNeMed nor the University of Nebraska Medical Center will be liable for any damages of any kind arising from the use of or inability to use this site. You expressly agree that you use this site solely at your own risk.

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UNeMed to host research commercialization introductory course

September 5, 2012 Comments Off on UNeMed to host research commercialization introductory course News Like

OMAHA, Neb. (Sept. 5, 2012)—UNeMed Corporation, the technology transfer leader for UNMC, will once again sponsor a free Webinar series for all researchers, post docs,and graduates studentsevery Wednesday beginning on September 19 through November 14 from 2:30 to 4:00 p.m.

UNeMed first hosted the series, presented by the National Council of Entrepreneurial Tech Transfer, in 2009 and certificates of completion were presented by UNeMed to 22 participants. The course focused on the successful commercialization of research and the practical steps required to protect and market intellectual property.

Beginning on Wednesday September 19, the 8-week course will help researchers better understand how research commercialization works. Research commercialization involves taking intellectual property generated during research activities and bringing it to users and patients to address significant medical and clinical needs.

Areas covered in the course include intellectual property, patents, copyrights, trade secrets, trademarks, licensing agreements, employment agreements, consulting agreements, tech transfer, creating and funding companies, and federally funded Small Business Innovation Research (SBIR) programs.

The first lecture will be Wednesday, September 19 in the DRC 1004 from 2:30 – 4:00 pm.Each lecture is a live 90-minute online class with Q&A and all sessions are from 2:30 to 4:00 p.m. Class schedule is shown below.

Participants are encouraged to pre-register for the courseby e-mailing Val Gunderson at vgunders@unmc.edu, by September 14.Snacks will be served to all registered participants. Upon completion of the course, UNeMed will award a Certificate of Completion for the course.

If you are interested in the free course, but unable to attend in person, you may sign up to view the session from any computer by registering at the Researcher Commercialization Course website.

Also refer to the announcement on the UNMC Today

CLASS SCHEDULE

Lecture 1: The Importance of Commercializing Research
Wednesday, September 19, 2012 at 2:30 p.m.

Lecture 2: Patents
Wednesday, September 26, 2012 at 2:30 p.m.

Lecture 3: Copyright, Trademarks and Trade Secrets
Wednesday, October 3, 2012 at 2:30 p.m.

Lecture 4: Employment and Consulting Agreements
Wednesday, October 10, 2012 at 2:30 p.m.

Lecture 5: Tech Transfer and Licensing Agreements
Wednesday, October 17, 2012 at 2:30 p.m.

Lecture 6: Small Business Innovation Research (SBIR) Grants
Wednesday, October 24, 2012 at 2:30 p.m.

Lecture 7: Introduction to Early Stage Funding
Wednesday, October 31, 2012 at 2:30 p.m.

Lecture 8: Introduction to Structuring and Leading the Research-Intensive Company
Wednesday, November 7, 2012 at 2:30 p.m.

Lecture 9: Moving from R&D to Manufacturing
Wednesday, November 14, 2012 at 2:30 p.m.

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Safeguarded in the vault: How trade secrets work

August 28, 2012 Comments (1) Blog Like

by Bill Hadley, UNeMed | Aug. 28, 2012

Secrets lie behind the closed gate

Believe it or not, for most of us, the classic 1971 movie Willy Wonka and the Chocolate Factory was our first experience with intellectual property. For those who haven’t seen it (SPOILERS!) the plot can be reduced to this: a reclusive candy mogul (Willy Wonka) wishes to pass on his secret recipe for chocolate to a worthy heir and, to do so, distributes 5 golden tickets to the public by way of his candy bars. The lucky recipients of these tickets are rewarded with a tour through Wonka’s mysterious factory where, at the end, one person (the incorruptible Charlie Bucket) is identified as the heir to the Wonka chocolate recipe.

As silly as it seems, the Wonka chocolate recipe is a perfect example of the little brother of intellectual property protection mechanisms: the trade secret. While patents, copyrights, and trademarks are the most well-known IP protection schemes, the importance of trade secrets should not be undersold. In fact, many interesting innovations are still protected by trade secret today, including the composition of WD-40, the recipe for Twinkies, Google’s search algorithm, and, of course, the inestimable Coca-Cola recipe.

Image by trexfiles23

Because trade secrets are dependent on the – surprise! – secrecy of their innovations, trade secrets are anathema to university culture. Nevertheless, over the course of their careers, many UNMC faculty, students, and staff will work with industrial partners who have valuable trade secrets. Moreover, understanding the relationship between trade secrets and patents is crucial to understanding the patent system as a whole. So, without further ado, let’s look at the law surrounding trade secrets.

The Basics of Trade Secrets

Trade Secrets are interesting in that they are generally considered matters of state law; consequently, the definition of a trade secret can be subtly different in different states. Fortunately, the Uniform Trade Secrets Act (UTSA; a model act published by the Uniform Law Commission) has been adopted in some form in 46 states (including Nebraska). Under the UTSA, a trade secret is defined as:

Any information, including a formula, pattern, compilation, program, device, method, technique, or process that:

(i) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and
(ii) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

So, in more general terms, a trade secret is any information which falls into the stated categories which is valuable, at least in part, due to its secrecy (read: exclusivity to the owner) and which the owner maintains at least reasonable efforts to keep secret.

Rights Given by a Trade Secret

In general, trade secrets protect their holder from competitors who seek to use the protected innovation, if that competitor has obtained the protected information by an improper means or through misappropriation. That is to say, if, for example, Microsoft was able to (illegally) hack in Google’s internal network and retrieve Google’s search engine algorithm, Google could sue Microsoft for infringing their trade secret rights.

The UTSA provides a number of remedies to parties whose trade secret rights have been infringed, including:
1. An infringed party may enjoin (stop) the alleged infringer from using the trade secret information.
2. The infringed party may recover damages from the misappropriating party (lost profits, etc.)

Remember, as a model act, the UTSA is not necessarily implemented uniformly throughout its adopting jurisdictions. Therefore, when considering a trade secret issue, it is prudent to consult your state laws to investigate how the UTSA is applied in your jurisdiction (if at all).

Additionally, the Economic Espionage Act of 1996 has trade secret- related provisions which make theft or misappropriation of a trade secret a federal crime. 18 U.S.C. §1831 criminalizes theft of a trade secret to benefit a foreign power while 18 U.S.C. §1832 criminalizes theft of a trade secret for economic purposes.

Misappropriation of Trade Secrets

It is important to note that a trade secret does not protect its owner from a rival who legitimately reverse-engineers or discovers the secret information. Borrowing from my earlier example, if, instead of hacking into Google’s network, Microsoft had been able to chart trillions of normal Google searches, and was able to deduce the exact mechanisms by which the search results are produced from this body of information, the Google algorithm would be considered “ascertained by proper means” under the UTSA, and trade secret law would not protect Google from Microsoft from using the same search algorithm within its own search engine, Bing.

It is very important, then, to understand when a trade secret has been discovered by improper means or when it has been inequitably misappropriated. Under the UTSA, trade secrets are obtained via “improper means” when they are uncovered by theft, bribery, misrepresentation, breach (or inducement to breach) of a duty to maintain secrecy, or espionage (electronic or otherwise). “Misappropriation”, essentially, is acquisition of a trade secret by one person from another, when the first person knows, or has reason to believe, that the other has acquired the trade secret through improper means, or if the first person acquires the secret information through certain other inequitable conduct.

Trade Secrets at UNMC

As I mentioned earlier, it is anathema for an institution of higher learning such as UNMC not to disclose to the public information discovered by its faculty and students. Therefore, only in the most extreme circumstances will UNeMed elect to protect an invention by trade secret. In fact, as of today, neither UNeMed nor any of its spin-out companies has ever held a trade secret. That being said, many UNMC faculty members work with outside companies, and many of our students and post-docs will also transition to industry after they graduate. Because private industry frequently utilizes trade secrets, it behooves us to help our readers gain at least an overview of trade secret law. Ironically enough, a familiarity with trade secret law is one compilation which does not derive any value from its secrecy.

If you have any questions or comments, please do not hesitate to contact the author at bill.hadley@unmc.edu or by leaving a comment.

Join us next week when we discuss the essential differences between Patents and Trade Secrets.

Nothing in this post should be construed as legal advice. It has been developed by the UNeMed staff as an educational resource for faculty, staff, students, and other personnel associated with the University of Nebraska Medical Center. While all information contained herein has been thoroughly fact-checked, this site is provided on an “as is” and “as available” basis. Neither UNeMed nor the University of Nebraska Medical Center make any representations or warranties of any kind, express or implied, as to the site’s operation or the information, content or materials included on this site. To the full extent permissible by applicable law, UNeMed and the University of Nebraska Medical Center hereby disclaim all warranties, express or implied, including but not limited to implied warranties of merchantability and fitness for any particular purpose. Neither UNeMed nor the University of Nebraska Medical Center will be liable for any damages of any kind arising from the use of or inability to use this site. You expressly agree that you use this site solely at your own risk.

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UNeMed blog aims to keep inventors in the tech transfer loop

August 20, 2012 Comments Off on UNeMed blog aims to keep inventors in the tech transfer loop News Like

UNeMed was featured on the UNMC Today on August 20, 2012

UNeMed blog aims to keep inventors in the tech transfer loop

UNeMed has started a weekly blog called UNeBlog that focuses on technology transfer and related topics.

The blog aims to educate researchers about technology transfer and also inspire them to work with UNeMed on the commercialization of their inventions.

The blog also will feature interviews with active members of local/regional technology transfer community as well as news and announcements from the field of technology transfer.

View the original UNMC Today article here

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Collaborations and Their Impact on Inventions and Patents

July 31, 2012 Comments (1) Blog Like

by Bill Hadley, UNeMed | July 31, 2012

Collaborations are an essential part of the research process.

An essential part of the research process is collaboration. As the reader is well aware, today’s most important solutions often involve complex systems which require the expertise of multiple parties to fully address. Take, for example, the sequencing of the human genome, completed (mostly) in 2003. The story of the Human Genome Project (HGP) is well-described elsewhere, but those familiar with the history of the HGP will recognize that it was supported by a long line of luminaries – both in academia and in industry – specializing in fields such as chemistry, biology, physics, engineering, computer science, and mathematics.

Many research projects, even if less ambitious in scope than the HGP, are not so different. At UNeMed, for example, we regularly foster collaboration between faculty at UNMC and engineers at UNL to develop innovative medical devices and software packages. Collaborations need not merely be an exchange of expertise, however. They can also involve an exchange of resources or tools. A researcher located here at UNMC, for example, may have identified a potential therapeutic target for a drug, but lacks the compound library necessary to identify a drug candidate. It is perfectly reasonable for that researcher to collaborate with an outside partner who has a compound library ready to be screened for potential hits.

While collaborations of this type occur on a regular basis, they do have interesting implications for the commercialization process. In this blog entry, I would like to take a few minutes to describe how collaborative research impacts the intellectual property rights to an invention that comes out of the collaboration. Furthermore I will discuss how UNMC – by way of UNeMed – handles the commercialization of collaborative technologies, both in the cases of academic-academic and academic-industry pairings.

Co-Ownership of Patents derived from Research Collaborations

Under 35 U.S.C. § 116, a patent is co-owned by each inventor of the invention claimed in the patent. Thus, if the claimed invention was invented in collaboration with multiple parties, the resulting patent will be co-owned by each party. This can lead to a number of issues which, if not addressed ab initio, can fester into more serious complications down the road.

First, a key point to consider is that, to be an inventor (and thus co-owner) on a patent, a party must have contributed to the conception of a claim found in the patent. Because the scope and nature of patent claims are often modified during the course of patent prosecution, it is common that collaborators – who may have initially been considered inventors at the time of the patent application – are subsequently eliminated from the inventor/ownership pool by the time the patent is issued. The problems this can cause within the collaboration are obvious.

The second problem with co-ownership of a patent is that, similar to personal property interests, a co-owner of a patent has a “50% undivided share” (if two co-owners) of the property rights. Co-owners to property have a number of rights in the property, but the most important for our purposes is an unrestricted right of access to it. This can make commercializing the patent difficult, because the value of a patent is greatly diminished if it does not provide exclusivity.

Take, for example, the following situation: a UNMC researcher co-invents a patentable invention with a collaborator. A few years later, the patent is subsequently issued with UNMC and the collaborator as co-owners. Nevertheless, the invention still requires significant investment (e.g. 510(k), IND, etc.) to develop it to the point where it can be sold as a product or otherwise be utilized in the public interest. UNeMed wants to license UNMC’s rights in the patent to an industrial partner to further develop the invention, but the collaborator does not wish to license the patent. Instead, the collaborator wants to hold on to the patent and build a company around it himself (UNeMed is not keen on this idea, as – for purposes of this hypothetical – the collaborator is a wildly inexperienced businessman).

In this situation, UNeMed will have difficulty finding an industrial licensee who is willing to invest in the patented technology because the collaborators equal right of access to it – by virtue of the collaborator’s status as a co-inventor/owner – provides an immediate competitor to the licensee. Why would UNeMed’s licensee want to invest the money to develop the technology when the collaborator (or the collaborator’s licensee) can come in later and cut into their market share with no investment at all? By a similar token, the collaborator will have a difficult time finding venture or other funding to build his company due to UNeMed’s outstanding rights.

This is clearly a worst-case scenario, but it is illustrative of the problems that can occur when co-ownership rights in a patent are not addressed ahead of time. So how are these issues resolved? Generally, most research collaborations by UNMC faculty are of two types: academic-academic (including other non-profits) and academic-industry. Based on the interests and commercialization capabilities of the collaborating entity, the nature of the solution may change based on which type of collaboration has occurred.

Academic-Academic Collaborations

When the collaborating party is another academic institution, it is typical for the institutions to put in place an Inter-Institutional Agreement (“IIA”) once an invention is generated. The IIA contractually outlines each party’s rights in the co-owned intellectual property. For example, the common IIA will consolidate patent rights and establish which entity is responsible for marketing and prosecuting the patent. It will also determine what the distribution of proceeds will be if a licensee is found (typically the institution which is taking the lead takes a higher percentage of proceeds). In circumstances where UNeMed does not take the lead on patent prosecution, provisions are included in the agreement giving UNeMed rights to oversee the prosecution of the patent such that UNMC’s rights in the patent are not inequitably terminated in the course of prosecution.

Academic-Industry Collaborations

This agreement is different when a UNMC researcher has collaborated with an industry researcher. Generally, in these circumstances, the company is interested in pursuing the invention – why else would their researcher be working on it – and therefore it is simply a matter of licensing (or giving an option to) UNeMed’s rights in the co-owned patent. Conversely to an IIA, in an academic-industry collaboration contractual agreements overseeing the patent rights are put in place before the intellectual property is generated. Moreover, in these circumstances, UNeMed generally retains control, subject to the company’s input, of patent prosecution as well.

UNeMed is here to help

If not handled properly, collaborations have the potential to be painful experiences for researchers interested in commercializing their intellectual property. Fortunately, with a little foresight, nearly every major hurdle to the commercialization process can be anticipated and addressed with the help of UNeMed. If you are currently engaged in (or are contemplating in engaging in) a research collaboration with an outside entity that may produce commercializable intellectual property, please do not hesitate to give us a call – we’re happy to help in any way we can. Here, of all places, we should realize that an ounce of prevention is worth a pound of cure.

Please leave any questions or suggestions you may have in the comment section below.

You can also shoot me an email at bill.hadley@unmc.edu

Nothing in this post should be construed as legal advice. It has been developed by the UNeMed staff as an educational resource for faculty, staff, students, and other personnel associated with the University of Nebraska Medical Center. While all information contained herein has been thoroughly fact-checked, this site is provided on an “as is” and “as available” basis. Neither UNeMed nor the University of Nebraska Medical Center make any representations or warranties of any kind, express or implied, as to the site’s operation or the information, content or materials included on this site. To the full extent permissible by applicable law, UNeMed and the University of Nebraska Medical Center hereby disclaim all warranties, express or implied, including but not limited to implied warranties of merchantability and fitness for any particular purpose. Neither UNeMed nor the University of Nebraska Medical Center will be liable for any damages of any kind arising from the use of or inability to use this site. You expressly agree that you use this site solely at your own risk.

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How Does Technology Transfer Occur?

Why is Technology Transfer important?

Enter Research Commercialization and Technology Transfer

Why does Intellectual Property Matter?

Codification of the First Sale Doctrine

Issues at Play in Wiley v. Kirtsaeng

The First Sale Doctrine as a Policy

1. Suing for Patent Infringement

2. Selling a Protected Product Yourself

3. IP Licensing

Efficient Commercialization of Intellectual Property is Critical

UNeMed Prepares for the Sixth Annual Innovation Week

Calendar of Events

Schedule of events for Innovation Week

What exactly is a Trademark?

The Different Categories of Trademarks

Trademark Limitations

Trademark Registration

Why You Should Learn About Trademarks

Authorship on a publication is determined by custom; Inventorship on a Patent is determined by law

Inventors are the Original Owners of a Patent

Legal Definition of “Inventor”

Ramifications of Mis-Identified Inventors

1. Copyrights promote the progress of science and the useful arts

2. Works that may be copyrighted

3. Exclusive rights are granted by a copyright

4. Unauthorized use leads to copyright infringement

5. Obtaining a copyright is a piece of cake

Conclusion

Why do we have patents?

The Hadley Widget

The Basics of Trade Secrets

Rights Given by a Trade Secret

Misappropriation of Trade Secrets

Trade Secrets at UNMC

UNeMed blog aims to keep inventors in the tech transfer loop

Co-Ownership of Patents derived from Research Collaborations

Academic-Academic Collaborations

Academic-Industry Collaborations

UNeMed is here to help

Technologies

Photos on flickr