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INTELLECTUAL PROPERTY 

MANAGEMENT 

XI INTELLECTUAL PROPERTY AND TECHNOLOGY 

COMMERCIALIZATION MEETING 

October 20 20-22 20 20-22, 22 22, 2008 

Rio Othon Palace Hotel, Copacabana, Rio de Janeiro, 

Brazil. 

1


Intellectual Property Management 

Intellectual Capital – intangible assets of skill, 

knowledge and information 

Human capital- people, ideas 

Intellectual assets-ideas that have been 

codified 

Intellectual property 

Ideas that can legally protected 

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Intellectual Capital p 

Human 

Resources 

(people) 

Intellectual Capital 

Customer 

Capital 

( (relationships) l ti hi ) 

(goodwill) 

Intangible g Assets 

Intellectual 

Assets: 

knowledge 

Intellectual 

Property: 

patents, 

trademarks, 

trade secrets 

3


Intellectual Property Management 

• Educate Management and Employees 

• Establish Policies and Procedures 

• Implement Proper IP Protection 

• Develop Standardized Forms 

• Staffing: In-House Counsel vs. Outside Counsel 

• Ensure Proper protection against Employee Risks 

• Conduct an IP Audit 

• IImplement l t Cost C t Effective Eff ti Enforcement E f t Procedures 

P d 

4


Educate Management and 

Employees 

• Ensure basic understanding of trademarks, 

copyrights copyrights, patents patents, and trade secrets 

• Train scientists/inventors in record keeping, 

patent application filing process 

5


Educate Management and 

Employees 

• Publish vs. Protect 

– Once you publish via paper paper, website or 

presentation at a conference, it becomes 

difficult to protect the originality of the work 

• Domestic vs. vs Foreign Patent Protection 

– Domestic Grace Period 

– AAn important i t t consideration id ti if your iinvention ti 

is global 

6


Educate- Educate The Rewards 

• Dollars 

– Monetary compensation in the form of license fees or revenue 

payments in return for transfer of commercial rights 

– Collaboration with industrial partners may result in financial 

sponsorship hi of f additional dditi l research h 

– Revenues can also be a source of unrestricted funding for 

inventor’s laboratory and department 

• Recognition 

– Practical application of inventor’s research in developing products 

fosters the wide recognition g of inventor’s research efforts. 

• Other 

– Society benefits. New products provide improvements in health, 

lif lifestyle l and d safety. f 

– Economy benefits creation of new companies and/or industries 

http://www.techtransfer.umich.edu/resources/inventors/index.php 

7


Establish Policies and Procedures 

• Research 

• Pre Disclosure 

• Invention Disclosure 

• Assessment 

• Protection 

• Market 

• Licensing 

• Commercialization 

• Revenue 


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(cont’d) 

• Research 

– Observations and experiments 

– Keep good records (lab notebook photographs/drawings with 

dates and witnesses, etc) 

• Pre Disclosure 

– Contact Tech Transfer 


9



(cont’d) 

• Invention Disclosure 

– Disclosure Form 

• Assessment 

– Prior Art Search 

• Protection 

– Patent, , trademark, , copyright py g 

http://www http://www.techtransfer.umich.edu/resources/inventors/index.php 

techtransfer umich edu/resources/inventors/index php 

10


• Market 

– Start-up 

– Existing Business 


(cont’d) 

• Li Licensing i 

– Contract between the University and a third party in which the University’s rights to a 

technology are licensed (without relinquishing ownership) for financial and other benefits 

– Inventor’s involvement is critical. Inventor’s knowledge, contacts , sustained effort and 

ongoing i iinteractions i with i h technical h i l counterparts iin li licensing i company often f closes l ddeal l 

and leads invention to production 

• Commericialization 

• Revenue 

– Incentives to creators/inventors (royalties/distribution, recognition program) 


11


• Patent *** 

• CCopyright i ht 

Implement Proper IP Protection 

• Trademark 

• Trade Secret 

12



(cont’d) 

• Patent 

– A patent gives the holder the right to 

exclude others from making, using, selling, 

offering to sell and importing any patented 

invention. 

– Processes, machines, compositions of 

matter matter, articles (including methods of 

performing business) 

13


• Copyright 


(cont’d) 

– The Copyright Act generally gives the owner the copyright the 

exclusive right to conduct and authorize various acts, including 

reproduction, d ti public bli performance f and d making ki dderivative i ti works k 

– Covers literary, dramatic, musical, artistic and certain other 

intellectual owrks as well as computer software 

– available to both published and unpublished works 

– Automatically secured when work is fixed into tangible medium 

such as a book, software code or video etc. 


14


• Trademark 


(cont’d) 

– Includes any word, name, symbol, device or combination , 

th that ti is used diin commerce tto id identify tifand ddi distinguish ti i hth the 

goods of one manufacturer or seller from those 

manufactured or sold by others and also to indicate the 

source of the goods goods. Trademark is a brand name name. 

– A service mark is any word, name, symbol, device or 

combination that is used, or intended to be used, in 

commerce to identify and distinguish the services of one 

provider from those of others, and to indicate the soruce of 

the h services. i 


15



(cont’d) 

• Any valuable business infomration that is not 

generally known and is subject to reasonable efforts 

to preserve confidentiality. 

– 3 Factors 

• Is not generally g y known to relevant pportion of the ppublic 

• Confers some economic benefit to holder which must be 

derived from its confidentiality not just value of 

information 

• Subject to reasonable efforts to maintain secrecy 


p p p 

16



• Patent Protection 

– Conduct cost/benefit analysis 

– DDetermine t i PPatentability t t bilit 

– Choose right patent agent/attorney 

– Ch Choose countries t i tto fil file applications li ti (U (U.S., S PCT 

applications, Foreign countries) 

– Manage expense-attorney expense attorney’s s fees fees, government fees 

– Manage patent family 

– Pa Pay maintenance fees 

17


Develop Standardized Agreements 

Protection of Confidentiality 

• NNon-disclosure di l agreements t (NDA (NDAs) ) 

• Employment agreements 

• Material Transfer Agreements 

Protection of Technology 

• Li Licenses 

• Technology transfer agreements. 

18


Develop Standardized Agreements 

• Non-disclosure agreements (NDAs) 

– Protect the confidentiality of an invention 

as it is being evaluated by potential 

licensees 

– Protect propriety information of third parties 

that researchers need to review in order to 

conduct research or evaluate research 

opportunities 

19


Ensure Proper protection against 

Employee Risks 

Employment Agreements 

• UUse employment l t agreements t th that t contain t i 

restrictive covenants, including confidentiality, 

non-solicitation, li it ti and d non-compete t provisions i i 

• Make sure that the agreements are 

enforceable under the appropriate pp p law ( (state 

law) 

20


• MTAs 

– DDescribe ib tterms iin which hi h UUniversity i it and d 

outside researchers share materials for 

research h and/or d/ evaluation. l ti 

– Used for incoming and outgoing materials 

at University, 

– Incoming g administered by y Tech Transfer 

– Out coming administered by DRDA 

21


• Four types 

License types 

• Commercial Evaluation Licenses 

Commercial evaluation licenses grant the nonexclusive right to make and use the technology for the 

purpose of evaluating its commercial potential. The licenses are for a limited number of months, and do not 

grant the right to sell the technology technology. Companies are subsequently then required to obtain one of the 

licenses below for further use and development of a technology. 

• Internal Commercial Use: 

Internal Use licenses grant the nonexclusive right to make and use, but not sell, the technology for an 

extended period of time. Typical internal uses include compound screening and use of animal models. 

These licenses have no "reach through" obligations to new products discovered during their use. 

• Nonexclusive Exclusive License 

Commercial patent licenses can be exclusive or nonexclusive and allow commercialization of the 

ttechnology, h l under d appropriate i t circumstances, i t pursuant t tto applicable li bl statutes t t t and d regulations. l ti 

• Biological Materials License 

A biological materials license is required and grants the right to make, use, and/or sell commercially useful 

biological materials for which patent protection will not be obtained. This type of license typically is 

nonexclusive and facilitates the commercial development of biological materials without requiring that 

patent protection be obtained for every material. The company and PHS scientists should work with the 

PHS agency Technology Development Coordinator (TDC) and the Office of Technology Transfer (OTT) first 

to determine whether a material can be licensed for either internal use or commercial purposes. p p 

http://www.ott.nih.gov/faqs/lic_faq.html#6 

22


Staffing: In-House Counsel vs. 

Outside Counsel 

• Considerations: 

– EExpertise ti 

–Cost 

– Efficiency 

23


Conduct an IP Audit 

• identify and catalogue all registered trademarks and 

copyrights along with any patents and licenses 

• identify any trademarks or copyrights that are being 

used that may y not be registered, g , as well as any y 

business processes or inventions that are not 

patented 

• identify any IP being used that may belong to third 

parties and identify whether licenses are in place 

• identify IP that can be licensed 

• identify IP others may be infringing upon. 

24


Implement Cost Effective 

Enforcement Procedures 

• Conduct a preliminary cost/benefit analysis 

• DDetermine t i th the strengths t th and d weaknesses k of f 

the IP protections against the investment in 

ddevelopment l t or ddefense. f 

• Consider sending a cease and desist letter 

• Consider using a specialized law firm 

25


Patent Best Practice 


• Julie L. Davis Edison in the Boardroom Wiley & Sons 2001 

26


• Level 1—Defensive 

– IP is used as a shield to protect the 

company from litigation 

– At this level, level IP strategy is generally 

controlled by the company’s intellectual 

property counsel 

– IP is viewed as a legal asset vs. a business 

asset 

Julie L. Davis Edison in the Boardroom Wiley & Sons 2001 

27


• Defensive IP Best Practices 

• 11. Take T k stock t k of f what h t you own 

• 2. Obtain intellectual property while ensuring 

design freedom 

• 3. Maintain your y p patents ( (don’t let the ggood 

ones lapse) 

• 44. Respect the IP rights of others 

• 5. Be willing to enforce, or don’t bother at all 


28


• Level 22—Cost Cost Control 

– Companies concentrate on how to reduce the 

costs of filing and maintaining their IP portfolios 

– Well-executed strategies in this area can save 

companies potentially millions of dollars annually 

– At this level, IP functions are still under control of 

an intellectual property p p y attorney y who may y have 

background in business 

– Intellectual Property is still viewed as legal asset. 


29


• IP Cost Control: Best Practices 

• 1. Relate patent portfolio to business use 

• 22. Establish an IP committee with cross cross-functional functional 

members 

• 33. Establish a process and criteria for screening 

patents 

• 4. Set detailed guidelines for patent filing and renewal 

• 5. Regularly and systematically review the portfolio to 

prune p ppatents not worth maintaining g 


30


• Level 3—Profit Center 

– CCompanies i ffocus on ttactical, ti l profit- fit 

generating IP strategies, e.g., licensing, 

ddonations ti of f IP, IP etc. t 

– Reaching this level requires a fundamental 

change in thinking about IP 

– Control of IP generally g y moves to the 

corporate side 

– IP is viewed primarily as a business asset 


31


• IP Profit Center: Best Practices 

• 11. Obt Obtain i management t bbuy-in i 

• 2. Start a proactive licensing organization 

• 3. Consider IP donations and royalty audits 

• 44. Organize to extract value 

• 5. Develop advanced screening criteria 


32


• LLevel l 44—Integrated I t t d 

– IP activities are integrated into and 

embedded b dd d iinto t company’s ’ ddaily il operation ti 

and corporate strategies 

– FFocus is i on the th innovation i ti process and d 

strategic placement of the company rather 

than just IP end product 

– The person in charge may hold senior vice 

president title in a broad area such as 

strategy, information or R&D. 


33


• IP Integration –Best Practices 

• 11. Ali Align IP strategy t t with ith corporate t strategy t t 

• 2. Manage IP and intellectual assets across 

multiple functions 

• 3. Conduct competitive p assessment 

• 4. Codify IP knowledge and share it with all 

business units 

• 5. Focus on strategic value extraction 


34


• Level 5—Visionary 

– The company focuses on identifying future trends 

in the industry and consumer preference 

– It anticipates technology revolution and actively 

seeks to position the corporation as a leader in the 

field by y acquiring g or developing g IP 

– IP function is led by director of business 

development or strategic planning. 


35


• IP Visionary-Best Practices 

• 11. Patent strategically strategically- Identify and exploit trends in 

one’s own industry to create new rules of the game 

• 2. Institute a performance measurement and 

reporting system 


36

Questions? 

Muito Obrigado! g

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