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IP Commercialization Primer
Presented by:
Dr. Jan Payne and Jaipreet Bindra
ES 050 - Engineering Design
January 22, 2010
Transfer of IP (Intellectual Property) from University
Evaluation of Commercial Potential
Importance of IP
Types of IP Protection
Concept of Inventorship
A Few Tricks
When to Contact Us
Questions and Discussion
 Dr. Jan Payne
 Jaipreet Bindra
 Services provided by
Evaluate, provide legal
protection and commercialize Western inventions
Provide advice on IP matters
Negotiate legal agreements involving IP
Start-up creation
WORLDiscoveries’ Objectives:
 Help streamline technology transfer activities across
How does a University transfer IP?
 We give it away:
Publications, Conferences, Posters…
 We hire it out:
Know how and skills (graduates,
co-op students)
 We commercialize it:
Copyright and license the technology
(publications, software)
Patent and license it
Get trademarks (cool new names:
DQE Instruments, Agri-Therm)
Set up new companies (spinoffs)
Register designs and license them
Evaluation of Commercial Potential
Good Science is only the beginning…
 Commercial Viability?
Market size (current and future)
Competitive technologies
How easy is it to make and use?
How expensive is it to make?
Is there a need for the invention
 Patentability?
Is it patentable?
Is the invention reduced to practice?
Is it novel? Prior disclosures?
Major technological leap forward?
Importance of Protected IP
Provides rights to a limited monopoly
Basis of competitive advantage
Basis of new companies
Basis of new products and increased profitability
Benefits to society
 Economic Development
 Job Creation
 Improved Health
Intellectual Property Protection
Trade Secrets
 The “Oddballs”:
 Industrial Designs
 Integrated Circuit Topographies
 Plant Breeders’ Rights
 Inventors reveal to public the best way to practise an
invention through published patent
 In return they receive an exclusive right of sale, use or
manufacture, secured by statute
 Can be a process, product, composition or apparatus
e.g. Prozac, automobile airbag system, many wacky
Bird Diaper
US 5,934,226
...featuring an enclosed
pouch... and apertures to
accommodate both the
wings and the tail of the
bird…for use by a pet bird
outside its cage to avoid
fouling of the home.
Where to Search? *Europe’s comprehensive network
of patent databases*
SciFinder Scholar
*available via UWO libraries *
US Patent and Trademark Office
Canadian Intellectual Property Office
Patentability Criteria
 Novel
 Inventive
 Useful
Patenting around the World
Canada, US and Mexico
 Grace period of one year
before filing
Rest of the World
 Requirement for absolute novelty
 Right of an author to produce or reproduce their work in printed
or electronic media
 Computer software (i.e. notation of code) also protected by
NOTE: Copyright protects the EXPRESSION of an idea, not the idea itself.
 Mark used to distinguish the goods or services of one
person or company from those of its competitors
 example
Trade Secrets
 Any information or method used in business
- if it is not generally known to the public and precautions are taken to
keep it secret.
e.g. Methods for designing microprocessors –
Legal agreements are used to protect trade secrets, such as confidential
disclosure agreements, employment agreements, etc.
Intellectual Property Protection
1) Patent
2) Trademark
3) Copyright
4) Trade Secret
5) Industrial Design
20 years (from filing)
Renewed indefinitely
Lifetime + 50 years
10 years
The Concept of Inventorship
Will the Real Inventors Please Stand Up?
 Inventorship is a legal matter
 A patent can be declared
invalid if not all inventors are
 Unlike authorship not all
members of a research team
are necessarily inventors
 The only members qualifying
as inventors are those who
made an enabling contribution
to the invention
1949 Inventors of point-contact and junction transistor
A Few Tricks
Lab Books & Notebooks
 Patent law: US – First to Invent
Canada – First to File
 Lab books: bound (not loose-leaf), and paginated
 Reflect the thought process
 Ideally they are accurate, up-to-date
 Witnessed (understood) and signed
 The witness should NOT be a co-inventor
 Never use “Obviously” ... Think ahead!
Please Come Talk to Us…
 Before publishing (always feel free to call and ask)
 Conference abstracts, posters, journal articles, graduate
student theses
 Before sharing the idea publicly
 Demonstrating it,
or telling everyone at the pub…
 Before collaborating with industry
Discussion and Questions
More information at

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