While much of OTT’s work deals with the review, protection, and management of the inventions made by our faculty, there is a whole other side that is of equal importance: negotiating contracts with industry, be it for licenses, clinical trials, collaborations, sponsored work, or confidential discussions. Just as the world of patents has its own set of jargon and terms, contracts do too. Below we’ve compiled a helpful list of some common terms you may encounter in contracts. You can find part 1 of this blog here. Common Contract Terms & Concepts Continued Representation: A fact that one party states with the knowledge that the other party is relying on that fact to make an agreement. If one makes a false representation, it can allow the other party to have the contract be voided or seen as a fraud in the inducement, meaning that an intentionally untrue fact was construed in the contract. For example we often represent that we have the ability to enter into the contract, or that to the best of our knowledge we are owner of a certain technology. Warranty: A promise of the reliability of a given product or service. If a warranty is incorrect,
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The Ever-Confusing World of Contract Lingo – Part 1
While much of OTT’s work deals with the review, protection, and management of the inventions made by our faculty, there is a whole other side that is of equal importance: negotiating contracts with industry, be it for licenses, clinical trials, collaborations, sponsored work, or confidential discussions. Just as the world of patents has its own set of jargon and terms, contracts do too. Below we’ve compiled a helpful list of some common terms you may encounter in contracts. What is a Contract? At its most basic, a contract is a binding legal agreement voluntarily entered into by two or more parties. Those parties can be individuals, companies, organizations, or as is the case with most contracts OTT handles, the university and an industry partner. Contract law is governed by state law. Courts review contracts based on the law of the contractually specified state or the state in which the contract was formed. Common Contract Terms & Concepts Recitals: Preliminary statements at the beginning of a contract that presents the background and purpose for the contract. Recitals are not part of the actual contract and are merely considered statements that set the stage for the relationship contemplated in the contract and
Continue readingIP Jargon: What are they talking about? – Part 2
When beginning the process of protecting your invention, lots of industry specific terms and legal jargon get thrown around and can seem a bit daunting. To help ease you into the world of intellectual property protection, OTT has collected and defined some of the most common words and phrases that you’re likely to come across. In this two-part post, we’ll discuss jargon heard in patent statutes and applications and during the patent review process and a patent appeal (Part 1 can be found here). In this part we will cover jargon often heard during the patent review and appeal processes. Patent Review Process Jargon Amending the Claim/Amendment: After the patent has been filed, if it is discovered that an aspect of the invention already mentioned within the patent is not fully described or drawn, the patent may be amended to properly describe it. Office Action: After a patent application is submitted, the case is assigned an examiner, who evaluates the application for language and structure as well as prior art. If the application is rejected (which most are initially) the case’s examiner will provide this document explaining why. Non-final Office Action: The Office Action sent after the patent application’s first
Continue readingIP Jargon: What are they talking about? – Part 1
When beginning the process of protecting your invention, lots of industry specific terms and legal jargon get thrown around and can seem a bit daunting. To help ease you into the world of intellectual property protection, OTT has collected and defined some of the most common words and phrases that you’re likely to come across. In this two-part post, we’ll discuss jargon heard in patent statutes and applications and during the patent review process and a patent appeal. In this part we will cover jargon found in patent statutes and applications. Patent Statue Jargon Statutory Subject Matter: Something that can be legally protected under a patent. There are four categories of ideas that can be protected by patents: process (a series of steps), machine (an object consisting of parts), manufacture (an object produced by giving new form to raw materials), and composition of matter (compositions of two or more substances.) Bar date (aka Statutory Bar Dates): Dates that are triggered by statue in the patent application process. If any date is missed all potential rights are lost. These are similar to statute of limitations. Provisional Patent Application: Acts almost as a “placeholder” for a patent application, a provisional application will
Continue readingTechnology Transfer – Asian Style
Asia, like the United States, has its own resources for technology transfer. Asia is home to many organizations that connect the region to promote training and networking, and these organizations have been critical for the astonishing success during the past decades. The key organizations that foster this success include: Biotechnology Innovation Organization (BIO) Asia, Association of University Technology Managers (AUTM), Asia-Pacific Economic Cooperation (APEC), and Asian and Pacific Centre for Transfer of Technology. These organizations allow for a high level of regional interdependence within Asian technology transfer, which has benefited the region greatly. This week people from all over the world are meeting at AUTM’s meeting in Asia, or AUTM Asia, in Chiang Mai, Thailand to discuss technology transfer in Asia. To spotlight this yearly event, we highlight technology transfer organizations and efforts in Asia this week. BIO is a global trade association that consists of academic institutions, biotechnology companies, and other biotechnology-related organizations. The association is divided into four sectors: emerging companies, food and agriculture, health, and industrial and environmental. The scope is vast, but the organization strives to connect innovators through global dialogue, networking opportunities, and educational programming. BIO Asia will host the International BIO conference in March
Continue readingVC101 – Venture Capital for Beginners
Osage Partners recently visited to provide our inventors with a primer on venture capital. Kristin Leute and Stephanie Stehman from Osage provided an interesting talk and discussion after. A great crowd showed up at Whitehead Auditorium for the talk but we know that not everyone could make it, so we wanted to provide some takeaways from the talk that might be useful for those looking into getting their startup funded by venture capital firms. Venture capital (VC) might sound scary to some. Entrepreneurs often worry that VCs want control over their company or will try to usurp their authority. Venture capitalists do have specific desires in exchange for funding but they rarely want control of the company they fund. They will sometimes step in if the company is not doing well because they are financially accountable, but this control is not the goal. Venture capitalists also want liquidation preference so that they have rights to get money before others and they usually want some stock or ownership of the company. VC funding will dilute the founders’ ownership of the company but that’s not a bad thing! Some dilution is good, but too much dilution can be bad. When examining university
Continue readingOverview of the U. S. Patent Process
Getting Started: The Provisional Patent Application There are multiple avenues to consider when filing a patent based on the specifics of the situation and the inventors. The first available option (and the one most commonly used at universities) is a provisional application. The importance of provisional patents stems from the patent system’s usage of a first to file system, which dictates that the first party to file a patent for a technology, rather than the first party to invent the technology, is granted the rights for the invention. Unlike a non-provisional patent application, a provisional application is not examined and does not need to comply with formal requirements, but should include the most detailed description possible in order to ensure the best coverage for the technology. The filing fees for a provisional patent application are considerably lower than other patenting options and allow for establishing an earlier effective filing date. A provisional application lasts for 12 months and will otherwise become abandoned if not converted into an examinable patent application (e.g., a non-provisional or PCT application). During the 12 month provisional time period, the invention may be identified with the term “patent pending.” Types of Examinable Patent Applications There are
Continue readingGlobal Access: Guiding Principles
Universities play an active role in developing medicines, screening technologies, and other leading medical and public health tools that are instrumental in improving health worldwide. While these are widely available in developed countries, in poorer societies, access to vital technologies like these is directly tied to the distribution and patenting decisions made by the universities. Who are these products distributed to? Will they be sold in bulk for societies that can’t afford high prices? The fate of the distribution of a single drug or screening test can lie in these decisions. Drugs and other health discoveries should be equally available in poorer countries that don’t necessarily have the same resources as wealthier countries, students thought. That’s why, in 2003, Emory students formed the Emory Global Access Partnership, a chapter of the non-profit organization Universities Allied for Essential Medicines, which is aimed to promote awareness of these issues. The organization works with universities to ensure that medical research is accessible worldwide. Emory’s Global Access Partnership works to make sure that health innovations developed within the university are equally available in all parts of the world. Since its inception, the Global Access Partnership has engaged in university lobbying, education and policy creation.
Continue readingAnatomy of a Patent Application
One of the most common ways to protect certain types of inventions (like medical devices or new chemical compositions) is through patenting. This guide quickly explains the parts of a United States patent application which is filled through the United States Patent and Trademark Office (USPTO). Generally, patents are divided into seven sections. The sections are as follows: Title Background: A description of the problem the invention hopes to solve, along with information on any previous inventions of a similar function (prior art). Summary: A concise description of the claims. Description of Drawings: A list of drawings that appear within the application. Description of Invention: A specific and often detailed description explaining how another could make and/or use the invention. Claim Set: The limits of patent protection; essentially, what aspects of the invention are going to be protected under the patent. Abstract: A general description of the invention under 150 words. In order to understand these sections, the following additional terms may be helpful: Application Number (or Serial Number): A unique number assigned to identify the patent application by the USPTO. This number has a specific format of eight digits; the first two digits are the series and the remaining
Continue readingSix Things to Know About Copyrights
There are plenty of myths and confusion around copyright law. Many people aren’t sure what a copyright covers and how it differs from other types of intellectual property (IP) protection like patents or trademarks. Although a blog is too short to go into all the specific details of copyright law, we hope to hit a few key highpoints here and help clarify what a copyright is and its function. A copyright differs from a patent or trademark in that it protects an original work of authorship. A patent protects inventions or discoveries and a trademark protects words, phrases, symbols, or designs identifying the source of the goods or services. In the United States, under the Copyright Act (17 U.S.C §§ 101 et seq) computer programs are literary works and may be filed as such, meaning that software is often protected via a copyright. You do not need to register or publish your work to gain copyright protection. A work is under copyright protection the moment it is created and fixed in a tangible form that is perceptible either directly or with the aid of a machine or device. A copyright does not protect ideas, concepts, systems or methods of doing
Continue readingHelping our Faculty Navigate the World of SBIRs & STTRs
On October 27th, OTT held an SBIR/STTR educational panel focused on answering questions and clearing up misconceptions about these funding programs. Kevin Lei, our Director of Faculty & Startup Services, served as moderated for a distinguished panel, consisting of a group of professionals with a great deal of experience in applying for and obtaining SBIR and STTR federal grants. On the panel were Juliana Cyril, the director of Office of Technology & Innovation and SBIR Program Director at CDC; Connie Casteel from the State of Georgia’s SBIR Assistance Program; Vince LaTerza, serial entrepreneur and President and CEO of Aiye BioPharma; and Ernest Garcia, Emory Professor and Scientific Founder of Syntermed. From that seminar we realized there were a lot of FAQs, so to help clear up some confusion about SBIR and STTR grants for those that couldn’t attend, we’ve put together this handy table! SBIR vs. STTR SBIR STTR Who applies? For-profit U. S. small business For-profit U. S. small business Principal Investigator Employed at least 51% by the small business with at least 10% effort May be employed by either the small business or non-profit with at least 10% effort Intellectual Property (IP) Requires the small business and
Continue readingQuick Reference of the Common Types of Intellectual Property Rights
“Intellectual property” or “IP” generally refers to exclusive rights granted to owners under U.S. intellectual property laws to a variety of intangible assets covering creations of the human mind. Common types of IP rights include copyrights, trademarks, patents (utility and design patents) and trade secrets. Type of Right What it Protects How to Obtain Copyright Original works of authorship, including writings (including computer software) music (including any accompany words and/or music), and works of art (e.g., pictorial, graphic, and/or sculptural works) that have been tangibly expressed Copyright exists immediately and automatically when the work is created, that is, when it is fixed in a tangible copy for the first time A notice of copyright may be designated on the work of authorship by the following: The symbol © (the letter “C” in a circle), or the word “Copyright” or the abbreviation “Corp.”; The year of first publication of the work; and The name of the copyright owner (e.g., Emory University) No publication, registration or other action in the U.S. Copyright Office is required to secure copyright Trademark Word, name, symbol, logo, image design, or any combination used or intended to be used to identify and distinguish the goods/services of a
Continue readingThe New Innovator Series
The final session is this week. This spring the office launched a new educational program called the “Innovator Series.” in order to help educate our faculty about how they can better position their research for commercial success. “Historically, scientists pursue knowledge for the sake of knowledge.” says Philip Semprevio, OTT licensing associate. “We are aiming to get researchers to think ahead about not just knowledge and science itself, but its relevance and commercial application.” With focus shifting towards inventions and innovation as well as their translation into commercial products, it’s important for faculty to understand how to take advantage of the increasingly available funds for translational and applied research. “The current funding environment is tough, and if you want to commercialize technology you need to consider research topics that will be relevant to industry professionals and unmet needs in the industry” says Panya Taysavang, OTT licensing associate. “It is more than possible to conduct research that is both commercially relevant and beneficial from a basic research standpoint.” The series consists of four sessions with three of those comprised of panel discussions over the course of three months. Identify industry needs that align with your interests Merrick Furst, PhD, Founder, Flashpoint
Continue readingAnother Successful Kauffman Session
After two months and six full days of course work another FastTrac® TechVenture™ course concluded for the spring of 2014. There were 27 budding entrepreneurs from Emory, Georgia Tech, Morehouse School of Medicine, and University of Georgia who participated, as well as participants from a number of companies. The course taught researchers and aspiring entrepreneurs about the nuts and bolts of running a new business, in order to begin a start-up and prepare them to work with business leaders and investors. The group heard from three presidents/CEOs, one VP/COO, an executive recruiter, a patent attorney, two consultants, and two venture capitalists. Donovan Moxey, the co-founder of a 3D animation software company, led weekly class discussions. Congratulations to our Graduates: Samuel Anyanwu, Brandon Aylward, Pamela Bhatti, Arnab Chakraborty, M. Wayne Craige, Dario Dilernia, Ronit Erlitzki, Leandro Gryngarten, Christine Hang, Theo Harvey, Jorge L. Juncos, Karim Khan, Sandeep Kumar, Kemba Lee, Matthew Lindale, Ichiro Matsumura, Gale Newman, Zhaohui Qin Qin, Arshed Quyyumi, Onix Ramirez, Kamalesh Ruppa, Habib Samady, Charles Slamowitz, Jack Tillman, Angela Wingers, Yajun Yan, and Ming Zhou. Thank you to our speakers and mentors for volunteering your time! Speakers: Barry Brager, Tom Callaway, Charlie Deignan, Christopher Doering, Sherry Knowles, Russ
Continue readingWhat do Those Extra Letters Mean? Professional Designations in Technology Transfer
Many members of our team carry additional letters behind their names, most being readily recognizable such as Ph.D., J.D., or M.B.A.; but what do the others you see mean, such as CLP and RTTP? Like many professions, these are certifications and designations attained by those in the technology transfer and licensing fields that are conferred and administered by the professional societies our team members participate in, namely, the Licensing Executive Society and the Alliance of Technology Transfer Professionals. For our field, these designations signify that a technology transfer professional has met a certain level of proficiency and experience; for our organization these designations add an additional level of credibility with those whom we do business, both externally and internally. Certified Licensing Professional (CLP) – Administered by the Licensing Executives Society, CLP distinguishes professionals who have demonstrated their experience, knowledge, and skill in the fields of licensing and commercialization of intellectual property. More than 900 individuals worldwide that work in the areas of patenting, marketing, valuation, IP law, negotiation, and intellectual asset management have earned the CLP credential. Candidates for the CLP designation must have at least 3 years of licensing experience, have a Bachelor’s degree, and pass a proficiency exam.
Continue readingInventorship: Who is an Inventor?
Inventorship could be the million dollar question. In a university setting where collaboration is common place – who is an inventor? Most scholars understand “authorship,” but this concept shouldn’t be confused with “inventorship.” Being listed as an author on a journal article discussing the invention does not automatically make one an inventor on the patent itself. As a general rule, an inventor is one who has substantially contributed to the “conception” of an invention. Whereas, someone working at the direction of another, using routine skill without making a substantial conceptual contribution, is not considered to be an inventor under U. S. patent law. Credentials, such as degrees or titles, do not play a role in whether someone is an inventor on a particular patent. Disputes regarding inventorship often arise when a person with involvement in testing or construction of the invention believes they should be named as an inventor. Whether that person should be named as a joint inventor is not simply a courtesy or straightforward yes/no decision, it is a fact-intensive inquiry based on conceptual contributions of the person to the invention. Two real world examples illustrating these points are provided below. In the first one, highly reputable scientists
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