What and When to Disclose: Identifying inventions in the course of your work

What and When to Disclose: Identifying inventions in the course of your work

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Dr. Beth - Innovation Partners: Good morning to all of you that are joining us. I'm going to wait about another thirty seconds to give everyone time to it. Logged on. If you want, you can hop into the chat box and tell us your name. Tell us where you work. Dr. Beth - Innovation Partners: Um, so that we can just get to know everyone that is here with us. Dr. Beth - Innovation Partners: Ok? Well, we'll go ahead and get started. Thank you so much for joining us today this morning. My name is Beth Durmeyer, and I am the education program manager here at innovation partners. I want to start off by welcoming everybody for joining us today. Dr. Beth - Innovation Partners: I want to say a special Thank you to my colleagues for also joining with me today and helping to present this presentation

Dr. Beth - Innovation Partners: just a few housekeeping items. You Dr. Beth - Innovation Partners: There are two different ways to communicate on this zoom, Webinar. One is the chat box, and that is where you will want to. You can communicate with other panelists, or you can say hello, something else that we have on zoom. Webinar is the Q. And A. Box. Dr. Beth - Innovation Partners: Make sure that you drop your questions in the Q. And A. Box, and not the chat box. My co-host. Ashley will be monitoring the Q. And A. Box with us

Dr. Beth - Innovation Partners: with me. Um! So That is where you will. You will put your questions. It will hold off questions until the end. You can put your questions in there whenever you'd like, and we will address those towards the end of our of our time together. Dr. Beth - Innovation Partners: But before I turn it over to my colleagues, I want to tell you a little bit about who innovation partners is. Dr. Beth - Innovation Partners: We are the one of the commercial edition offices here at Texas, Adam University, and we're led by our executive director and our associate, Vice President for commercialization, Mike Cher, who you'll be hearing from in just a minute. Dr. Beth - Innovation Partners: We are essentially a service unit. We provide services and support for our member units, taking or helping and assisting with everything from Dr. Beth - Innovation Partners: disclosure like we're doing today. All the way to getting this your technology out to market. Dr. Beth - Innovation Partners: Um, like I mentioned we are. We are just one of the commercialization offices. Engineering has their own. Every life has their own, and of course Tti has their own. So we're always happy to help you, and determining where your office is,

Dr. Beth - Innovation Partners: feel free to reach out to us, We are more than happy to send you in the right direction. Dr. Beth - Innovation Partners: Um, But in addition to um, some of you know, taking your technology from from the lab to the market, We also offer a lot of educational opportunities like we're doing here today. Um. So here's a slide. You can see just some of the things that we have to offer Dr. Beth - Innovation Partners: um anywhere from our pro bono ip attorney office hours to self-paced courses and on demand webinars for those of you who are interested in really learning more about this process. The partnership that we have with autumn allows anyone in Dr. Beth - Innovation Partners: to learn all about technology transfer. Dr. Beth - Innovation Partners: And you really go as deep as you want to. If you really want to learn about licenses, you can go on to autumn, and you lots of webinars on that very topic. Dr. Beth - Innovation Partners: We also have programs for students that we would be happy to discuss If we have any students on here feel free to reach out about that.

Dr. Beth - Innovation Partners: We also do webinars like this one today, and in this one we're going to be talking about that kind of pre-disclosure. Area. But if you are interested, maybe in what happens after you submit a disclosure. Dr. Beth - Innovation Partners: Um! We have some upcoming webinars that you can learn about just that. We also have a Youtube Channel that has most of our previous webinars or presentations that we've done so. Dr. Beth - Innovation Partners: Anything that you may have missed in the past is pretty much available on our Youtube, Dr. Beth - Innovation Partners: including our Sbir series, which we've done for the past two years, and we'll be continuing to do here in the spring. That is a really great series to learn about Dr. Beth - Innovation Partners: you know how to de-risk some of those early stage technologies. Once, you know, you have a spin out. So

Dr. Beth - Innovation Partners: Ah, let's see. So today, like I mentioned. You know there's a big whole process of commercialization. But we're talking about two um two steps in that process, and that is the research. And then the invention, disclosure, and getting ready to submit that that that disclosure Dr. Beth - Innovation Partners: like, I said, If you want to know more about the other steps of this process. We have upcoming Webinars, and we have other resources that you can learn that you can view to learn about those sets. Dr. Beth - Innovation Partners: So without further ado, i'm going to pass it over to Dr. Mike Sherr, who's going to be really talking about the what is disclosed here Dr. Beth - Innovation Partners: in your research, Mike. Sharer, Michael: Okay, Sharer, Michael: Thanks, Beth. Appreciate it. Morning, everyone. Sharer, Michael: I'm going to jump right in here to invention, disclosure, obligation. So you

Sharer, Michael: you know. As Beth mentioned, we're talking about the research process and the disclosure of invention process. So you know, just to be aware of some of the rules around that Sharer, Michael: um note that disclosing inventions at Texas A. And M. Is required as part of employment as part of your employment obligations under system regulation, seventeen point zero, one point zero two, Sharer, Michael: and it specifically says, all inventions, copyrightable works, and trp trp is tangible research. Property must be disclosed under the system. Regulation. We're going to talk more about what what we mean by inventions in this context. What? What exactly? That is

Sharer, Michael: one thing to be aware of is copyrightable works, what that means, or what that's referring to in the policy, our copyrightable works that are not scholarly works. Right? So that's a very important distinction. So we are not talking about scholars, traditional scholarly works, things, like textbooks, Sharer, Michael: novels, journal articles, theses, dissertations, all those kinds of things. So that's a very important distinction to be aware of. Sharer, Michael: It's also good to be aware that invention disclosure is required for inventions conceived or made with Federal or State funding, so that we can meet our obligations under those funding agreements. So

Sharer, Michael: you know. Obviously we do a lot of work for the Federal Government. We are a Federal Government contractor in in certain ways, and we have contractual requirements that we have to fulfill. So that's a very important thing to be aware of for Federal funding Sharer, Michael: um. So Sharer, Michael: so. Um So that's you know, since the rules it's good to be aware of what the rules are, but I I think it's better to think about what are the benefits, and what value will occur to you. Um, if you do disclose inventions to our office. So there's a bunch of things there so you can become more competitive at winning

Sharer, Michael: Federal grants, you know. Make no mistake about it. The that that happened Sharer, Michael: there we go. Um! Make no mistake. The Federal Government looks for and wants to see inventions and commercialization coming from the work they're supporting. That was one of the reasons why the By Dole Act was passed many, many years ago. So that's good to be aware of. Sharer, Michael: Also note that our office can perform market and compatibility analysis, and we can actively market your inventions to industry. We have people in our office. Who whose job it is to to do exactly that to do exactly those things one of those folks is on for who you'll be hearing from in a few minutes. Sharer, Michael: It's also good to be aware that we have a patent fund, or actually, I should call it an intellectual property fund, because it's not just for patents. It's for copyrights, trademarks, et cetera. Um, not just patents. So um if you disclose your inventions, you have access to the intellectual Property fund, and i'm gonna Sharer, Michael: that. There's probably about a fifty to seventy five percent chance that if you disclose something we will protect it in some way.

Sharer, Michael: So that's good to be aware of. It's good to be aware that you can also gain access to to unique resources, to further your research and commercialization efforts. So we have a tiff fund, our translational investment fund that in order to qualify for that, Sharer, Michael: you have to disclose inventions, that is, those are grants for up to seventy five K. A year, and those grants are specifically for improving or developing early stage inventions. Sharer, Michael: You can also get new venture assistance through our through our office. We have an arm of our office that does new venturing and and helps people start up. New companies, form new companies that connect them to resources to make that process easier. Sharer, Michael: Um! Sharer, Michael: And of course you can. You can start or participate in a new business venture if you're disclosing your invention. So that's good to know um and ip and commercialization activities can be part of ten-year consideration

Sharer, Michael: that that varies from, I think, department to department and college to college, but that certainly can be Sharer, Michael: part of tenure consideration. Sharer, Michael: Also note that we can help attract industrial-sponsored research partners for supporting grad students solving problems of interest industry. I think that can be of interest to a lot of people, especially people who are doing research that may have Sharer, Michael: that that should have practical application that Sharer, Michael: that you know you think would be or could be, of interest to industry. Sharer, Michael: Um, there's also the potential to bring additional funds to your department and college through royalties. Right? So the royalties we get in from license agreements. Some of those are distributed to departments and colleges, some portion of those Sharer, Michael: Ah! And of course you know a good portion of that. Thirty, seven, to forty percent or so goes to. Ah, the inventors. So I think it's very good to be aware that you know there's there's personal financial rewards that can come from. Ah, the success of inventions in the marketplace.

Sharer, Michael: There's also the potential to make a positive impact on the general public and stimulate Sharer, Michael: the regional or national economy. I mean, if you think of all the startups that get created out of universities every year. It is probably on the order of about thousands. I don't know the exact number off the top of my head, but Sharer, Michael: on the order of thousands of startup companies are created by universities each year. Think of all the high-tech jobs that are created from all that activity. Sharer, Michael: Um. Sharer, Michael: So so those are some of the benefits, and some of the value that will accrue to you if you disclose inventions and work with us. The other part of that is is, let's talk about what should be disclosed, or what the kinds of things that we're really interested in sort of the the of the matter. Sharer, Michael: You know we're talking about patentable subject matter. These are the inventions that I talked about that I mentioned earlier.

Sharer, Michael: Specifically, there's four kinds of things that can be protected, patented. They are novel processes, machines, articles of manufacture, and compositions of matter. Um Ankara is going to delve into that in a little bit more detail, but it's good to be aware that those are the four statutory areas that can be protected Sharer, Michael: processes and methods, machines, articles of manufacturer composition of matter things like new chemicals, new drugs, Sharer, Michael: combinations of these things, new materials, all those kinds of things can be patented. Sharer, Michael: There's also copyrightable subject matter. Again, the not scholarly works, copyrightable subject matter specifically, things like software code and software programs and apps things like that, right? If you think of Google Google was a Startup Company out of Sharer, Michael: Stanford University many years ago, and that was based on software code that was that was developed at Stanford, pursuant to Federal grants. So we are obviously interested in those kinds of things, also novel training, materials or programs, Sharer, Michael: things like assessments or tests. Sharer, Michael: Many years ago I worked at a university where we commercialized an assessment test that that um helped people decide what they were good at and what they wanted to do as a career when they got older. So those kinds of assessments that can be applicable to

Sharer, Michael: a broad population, or can be applicable to maybe a specific population. For think, professional development training and those kinds of things. Sharer, Michael: So also trademarks and service marks. We're interested in those kinds of things. Usually a trademark or service market is going to be connected to a Sharer, Michael: physical product or a service, you Sharer, Michael: of some kind. And this is typically a word, a phrase or symbol that identifies the source of of the goods of one party, and distinguishes those from the goods of others.

Sharer, Michael: So the classic example in this domain is Gatorade right? Gatorade was developed at the University of Florida. As I understand it, most of the income that they generated from Gatorade actually came from the gatorade trademarks, and not the drink itself. Sharer, Michael: You know. That's again. That's the way I've understood it over the years. Hopefully that's actually true. Sharer, Michael: And and the other thing, of course, are physical materials that are of interest to other researchers, and also potentially to companies. Think of things that you may be working on in your lab, that that you think would be of interest to other people in that industry or in your domain. Sharer, Michael: These are, you know, tangible research, property, tangible research materials. Um, you know, the classic example here tends to be like mouse models, mouse or rat models that help prove out whether a therapeutic is, has the Sharer, Michael: that it's shown to have in in petri dish.

Sharer, Michael: Those things can only be protected through contracts most of the time on some some exceptions to that. Sometimes you can patent those things, but most of the time the physical materials, the physical products of research can't really be protected in any other way except through contracts. So Sharer, Michael: so we can put contracts in place that controls. Who gets these things? Sharer, Michael: How long they get them? For you know whether it's exclusive or non-exclusive, what kinds of things they can do with these materials? Can they distribute them to others? Can they only use them internally? Sharer, Michael: You know all these kinds of things we can protect and control through contract, not necessarily and not typically through intellectual property protection. Sharer, Michael: And so importantly, what kinds of things Don't need to be disclosed, and what kinds of things Are we not not all that interested in in terms of commercializing? Sharer, Michael: You know scientific theories and mathematical models can't be protected. Mental tasks, mental and veterinary surgical procedures and methods. Sharer, Michael: Um. Surgical procedures actually can be patented. But there's also law in the Us. That says, if you do patent a surgical procedure, you can't enforce that against anyone. So the the net effect is that of that is that nobody protects these things. So surgical procedures are meant to be usable by everyone Sharer, Michael: um newly discovered life-forms such as plants and animals that are unmodified. Now, if you do something, if you find a life form or or working with bacteria, or whatever it might be, and you do modify it to have a useful result that can be protected.

Sharer, Michael: Um, there's a pretty famous case for many years ago. Diamond, the Chakrabarti. Ah! Where Chaka Barti successfully argued that um. You know they did some genetic modifications on a bacteria and made that bacteria able to essentially eat oil, eat hydrocarbons, Sharer, Michael: and they were able to argue that that it should be patentable, and it was patentable. So Sharer, Michael: so things like that if we, if we make modifications, genetic or otherwise, to life forms, those things can be protected. Sharer, Michael: Laws of nature. Ah! Abstract ideas, natural phenomena, all those kinds of things not usually protectable, and not usually don't don't need to be disclosed, Sharer, Michael: and I think at this point I am going to pass things off to anchor dial, one of our licensing managers. Ankur - Innovation Partners: He's.

Ankur - Innovation Partners: Yes, Ankur - Innovation Partners: hello, everyone. Ankur - Innovation Partners: So welcome. Howdy, um! And thanks for taking time to join us today. Ankur - Innovation Partners: Ooh! Ankur - Innovation Partners: So this whole process of commercialization and identifying inventions licensing. Ankur - Innovation Partners: There are a lot of moving pieces, Ankur - Innovation Partners: so I don't Ankur - Innovation Partners: today's presentation um! I would start off with uh Ankur - Innovation Partners: coming at it from a very beginner-level point of view, Ankur - Innovation Partners: and that is how I came into this field um licensing out my own research Ankur - Innovation Partners: um way away as years back. Um.

Ankur - Innovation Partners: So some of you may find some of some of the things we are going to talk about are very fundamental, and you may already know, Ankur - Innovation Partners: but The intention is that we get more questions and more things out from you after the presentation, and that we have more one-on-one interactions so that we can help you Ankur - Innovation Partners: in your research in identifying inventions, in your research, and, you know, really provide a custom service to help you in this journey. One Ankur - Innovation Partners: um see. Ankur - Innovation Partners: Yes, I can move forward. Ankur - Innovation Partners: So all of us are very familiar with how the research grant is driven, and you know we I have them listed out here Ankur - Innovation Partners: and then on the right side. I have this commercialization driver,

Ankur - Innovation Partners: and you know this is just a step back from all the legalities and Ankur - Innovation Partners: things that come with commercialization. But this is more of a mindset of Ankur - Innovation Partners: how do we actually go about identifying inventions in our day-to-day research. Ankur - Innovation Partners: So, by the way, the day-to-day research is cutting edge it's out of this world. It's at the at the cusp of you know the next big thing. Ankur - Innovation Partners: But then, how do we? What are our drivers between research and commercialization? Ankur - Innovation Partners: So I have some uh analogies here. So you know, research, we are exploring uh an area or a subject matter,

Ankur - Innovation Partners: and if we have to translate that into a commercial driver, Ankur - Innovation Partners: we are exploring industry gaps Ankur - Innovation Partners: uh that a product or a service uh does it meet Ankur - Innovation Partners: in the commercial sector Ankur - Innovation Partners: on the research side we are always working for continuous improvement. You always want to make things better. Ankur - Innovation Partners: Um. Ankur - Innovation Partners: And perhaps on the commercial side, it's cheaper. So it's, perhaps not necessarily Ankur - Innovation Partners: the highest product quality, but it is cheaper than the existing uh product, and that might drive that product into the market. Ankur - Innovation Partners: Our research is again the observation, how how things work. You know we are developing solutions. We are doing a lot of optimization studies. And again, All of these are translatable to the market drivers, which are, you know, cheaper, safer,

Ankur - Innovation Partners: faster, enhancing user experience. Ankur - Innovation Partners: And so there are all these overlaps that we see between Ankur - Innovation Partners: the research Grant funding drivers in the commercialization or the market team drivers. Ankur - Innovation Partners: That's where we are that we are at the cusp of these two, and those are the things. Those are the inventions that really make a mark in the market. Ankur - Innovation Partners: So you know this this phrase, Eureka, I I love this phrase, because it it, it has this level of excitement in it, right We, when we discover something that we don't know.

Ankur - Innovation Partners: Oh, Ankur - Innovation Partners: it's! It's like we have been to the boom right as researchers, we we feel at the top of our world. But is it an invention? Ankur - Innovation Partners: So Ankur - Innovation Partners: there are some considerations that can help us guide, guide us in this this journey. Ankur - Innovation Partners: So you know I'm going to move to the bullet. The second bullet here again, coming back to what gap it is addressing, you know. Will people pay for it? Is it a product, or is it a service? Ankur - Innovation Partners: What is the current gold standard, and how does it beat it? Does it beat it on price? Effectiveness? Ankur - Innovation Partners: Um, Ankur - Innovation Partners: maybe uh is. If it's not a current board standard. Is it a new product that nobody.

Ankur - Innovation Partners: So at that point, Ankur - Innovation Partners: when it was introduced there were some search Indians in the market, but nobody was as comprehensive as Google Search engine, Ankur - Innovation Partners: and that kind of that picked up so it it wasn't it wasn't even a gap that was visible in the market. But it was a new product that was not really um out there, and that's how it picked up. Ankur - Innovation Partners: And then the other considerations are all about. Will It's a great idea. Ankur - Innovation Partners: But can I actually protect it. Ankur - Innovation Partners: And the reason protection is important is Ankur - Innovation Partners: monopoly is important for market to drive it for users to get benefit out of it, Ankur - Innovation Partners: and that's all us markets. And in general, you know, global markets operate.

Ankur - Innovation Partners: If there is no um, Ankur - Innovation Partners: it's a free to use market. If we just give the invention out, Ankur - Innovation Partners: there's not enough interest from investors to uh spend their money on taking this product to market. There's not enough interest from ah even policymakers in some cases to fund more research on it. If there is no, there is no tangible outcome coming out of it, Ankur - Innovation Partners: so that moves us to the next slide off. Ankur - Innovation Partners: He wrote this whole, my read off Ankur - Innovation Partners: what is actually an invention, you know, with Ankur - Innovation Partners: i'm really happy that you know. All of us are here today from so many different groups, Ankur - Innovation Partners: you know, right from education. We have folks from nursing, and you know um architecture. So so on and so forth. Ankur - Innovation Partners: So you know, when we talk about invention, Ankur - Innovation Partners: our office is pretty lucky because we we get to work with so many different researchers from all these groups. It's amazing to Just see how

Ankur - Innovation Partners: how amazing all these research projects are in all these fields. So you know chemistry, for example. Is it a new drug, a molecule? Ankur - Innovation Partners: So Perhaps it's a new application of in world molecule, and you know we can maybe protect it if it wasn't obvious, and we'll go into that part also in one of the slides. Maybe it's a new product, a new device, you know. Method of processing images, Video: Three hundred Ankur - Innovation Partners: detection methods for contaminants, detection methods for medical diagnostic imaging.

Ankur - Innovation Partners: Um, of course you know what a purification environmental things Ankur - Innovation Partners: it also goes into oil and gas applications. So we have filter all of that Ankur - Innovation Partners: then we have the software side which can be, you know, an example is a, you know, antivirus hardware system. We have code that is very unique. Ankur - Innovation Partners: Um that that can go into Vr applications or phone applications.

Ankur - Innovation Partners: There's of course, music and art. So you know, we we all have some blend of music that we like. Ankur - Innovation Partners: And you know one of the things is the Ankur - Innovation Partners: you are. You can't really copy Someone's Ankur - Innovation Partners: someone's music, someone's song and and not not without getting proper rights from them. So that's that's an old area of of thing that's really close to my heart, but not It's quite away from the pure sciences Video: but I I really love that field also.

Ankur - Innovation Partners: Um, you know. Then I it's they. I have a few more examples here, and you know we we? It is really case dependent on um Ankur - Innovation Partners: what your adventure is. Ankur - Innovation Partners: So again, if there is an invention that you are thinking, that is part of your Research Project, and it's not fitting in the things we are talking about today. Ankur - Innovation Partners: It's okay, you know. Just reach out to us and we will. We will sort it out on what that is.

Ankur - Innovation Partners: So Mike went over a bit of this. I I just you know I love spread. She's in table. So this This is more of Ankur - Innovation Partners: erez agmoni, you know, classifying it Well, if it's a type of invention, and what are the mechanisms that we can use to protect it. And then you know, how do we go about actually protecting it? One hundred and fifty? Ankur - Innovation Partners: The Ankur - Innovation Partners: by the way, all of these slides will be available to you in A. You know media format will will have them email to you. So you can review this and use this as a resource later on. Ankur - Innovation Partners: So we have again going on examples, right? So I have some specific examples in the next slide. So i'm going to skip this one. Ankur - Innovation Partners: Oh, Ankur - Innovation Partners: and go right into trade secret. Ankur - Innovation Partners: So a common most known, I would say example of trade secret is the secret source or the secret formula for coca-cola.

Ankur - Innovation Partners: So no one um knows it, and only four people in the world can know it at a time. Ankur - Innovation Partners: They don't travel on the same airplane, and they are also not two of them can be in the same continent at the same time. Ankur - Innovation Partners: So this is how Coca-cola is protecting their trade secret formula for for their beverage. Ankur - Innovation Partners: Um well. Ah, so it's advantage. Ah, the advantages! Well, nobody knows about it. It cannot be replicated. People can come close, but it's not possible to exactly replicate it. Ankur - Innovation Partners: There is no expiration. It's word of mouth transfer of trade secret that has gone across generations. Now Ankur - Innovation Partners: the disadvantage is that if one of us Ankur - Innovation Partners: figures it out, you know. Reverse ingenious the formula.

Ankur - Innovation Partners: And then you know you send us a disclosure With that Well, we can file a parent on it, and we can. We will have rights on it, because we, the the law right now is It's the first to file Ankur - Innovation Partners: It's not the first to invent any more, which was the case some years back. Ankur - Innovation Partners: Um! There is also, you know, disadvantage that um it's limited by the people who know it, so you can. You can do litigations and things, but if your trade secret is out, it's out uh it's hard to Ankur - Innovation Partners: hard to go, how to reverse it. If it's already out.

Ankur - Innovation Partners: Oh, Ankur - Innovation Partners: going on to the more popular, more sought after method of uh protection. Ankur - Innovation Partners: And that is the the pattern filing. Ankur - Innovation Partners: And I also have an arrow at the bottom here, which is the licensing commercialization window. Ankur - Innovation Partners: I want to start there. I want to start at the bottom because one of The common questions I get is when we have just filed a patent. Ankur - Innovation Partners: It's not published. Ankur - Innovation Partners: It's not out there. I haven't published my uh paper yet

Ankur - Innovation Partners: I don't think it's good for marketing, Ankur - Innovation Partners: but you know that's not the case. They Ankur - Innovation Partners: the opportunity to commercialize it and market. It Ankur - Innovation Partners: essentially it starts as soon as we have filed the provisional parent application. Ankur - Innovation Partners: Um, and that's our window of opportunity. So we we want to exploit it, because now we are protected as soon as we file it, even though it's not published, it's not out there. Well, we can go and talk about it. Now we have that capability.

Ankur - Innovation Partners: So now, coming uh devoting back to our our big arrow here. Ankur - Innovation Partners: Um, So this is ideal. But you know there are some cases where you Ankur - Innovation Partners: this doesn't happen in the same order. So uh, it's ideal that we file a provisional panel first Ankur - Innovation Partners: before the um publication or presentation, or you know, Symposium Conference, Any potential public disclosure happens Ankur - Innovation Partners: a year from that filing, we can do a Us. Or a international filing, which is also called the Pct. Ankur - Innovation Partners: By Incorporation Treaty. Um, now wouldn't it be nice if we just filed an international patent. And uh, Ankur - Innovation Partners: we're done. You know we we got the international rights, but that's not really the case. What the pct does is you?

Ankur - Innovation Partners: It is a placeholder. Ankur - Innovation Partners: So it is a placeholder. And then around eighteen months time we have to come back and select which countries we are going to protect it, Ankur - Innovation Partners: and that is expensive Ankur - Innovation Partners: country. The cost can be from tens to thousands of dollars. For example, for Japan

Ankur - Innovation Partners: the cost is eighteen thousand. Now, that's that's really high. Um! Ankur - Innovation Partners: There are others who are cheaper, but that's just an example of how expensive it can get when it comes to international parent filing and protection. Ankur - Innovation Partners: Um, once we violate the the parent offices across the world, including the Us. One. Well, their job is actually to fight that parent. Ankur - Innovation Partners: So they issue office actions. Ankur - Innovation Partners: They want to reduce the number of patterns that's their job, Ankur - Innovation Partners: and it's our job as a tech transfer office to work with you and our team of attorneys Ankur - Innovation Partners: to rally this out to get us a parent for your invention.

Ankur - Innovation Partners: So that's that's a process that's that is, you know, once we are in it, we are in it. Ankur - Innovation Partners: So, from your point of view, Ankur - Innovation Partners: I want to highlight that Ankur - Innovation Partners: once you disclose an invention. It's not just done, you know, when we once we are Ankur - Innovation Partners: we have fire, the protection. You are the subject matter expert. We rely on you to help us. You know, navigate this with us with our of course, with our help. Ankur - Innovation Partners: But you are the subject-mounted expert. There, We rely on on your guidance on. Sometimes, you know, fighting these office actions with the parent office. Ankur - Innovation Partners: So it's a commitment of time, Ankur - Innovation Partners: You know. We are not even talking about the commitment of time for licensing or marketing. This is just the commitment of time for Ankur - Innovation Partners: um, ensuring that there is a patent that you that has you as an inventor, and uh Texas A. And M. As the as the assigned owner.

Ankur - Innovation Partners: So you know, coming moving on to the next slide. Um, Ankur - Innovation Partners: what What actually builds this, so you know it's the utility, or you know the invention must be useful. It it should have a function. It just can't be. Ankur - Innovation Partners: You probably cannot protect Ankur - Innovation Partners: just a helmet that is used for um. Let's say golfing,

Ankur - Innovation Partners: but it has to have some specific function, you know it's it's it's a helmet. But Why is it important for golfing? It should do something useful or beneficial for golfing? Ankur - Innovation Partners: Um, Then it should be novel. No one else uh should have thought of it, you know, sold it, uh or uh, and then the third one is enabling that Ankur - Innovation Partners: it can't be the Star Trek, you know, energizer, type thing that energize, and we are done, and we can transport from, you know. Ankur - Innovation Partners: Call is stationed to Dc. If we want, Ankur - Innovation Partners: so that doesn't work, we want to make sure we meeting not not me at all. Uspto. The United States Parent Office want to make sure that all these inventions are not just ideas. They are actual, Ankur - Innovation Partners: enabling inventions. So these are the primary building blocks,

Ankur - Innovation Partners: and more on this, when when you know we talk one on one about your inventions. Ankur - Innovation Partners: So moving on to copyrights, copyrights coming to play. They have been coming into play now. More. I've seen more and more of these Ankur - Innovation Partners: every month. I would say we are getting more of these. Ankur - Innovation Partners: So here is some information for you. You will have, you know,

Ankur - Innovation Partners: substantial amount of uh protection time for a registered copyright, Ankur - Innovation Partners: And you know, copyright goes for educational materials for software codes, anything that is written even for media. So audio music, video training, video even now for avatars, Ankur - Innovation Partners: so virtual reality avatars the way you have your graphical user interface set in the front end of a software, Ankur - Innovation Partners: all of that and the back end as Well, the way the code runs. All of that is is copyrightable, and you know, with a substantially large Ankur - Innovation Partners: a time period of activation. Ankur - Innovation Partners: Oh, Ankur - Innovation Partners: now, coming back to, you know trademarks. Uh, so this is Ankur - Innovation Partners: These are all you know we see, or it all around us.

Ankur - Innovation Partners: You know the fancy marks and the logo. So the style, the the way it's described the image in it, all of that is protectable. So Ankur - Innovation Partners: also you will see. You know we have the Texas A. And M. Logo in our presentation so well. Ankur - Innovation Partners: There's a little tiny dot there which you know, and sometimes it's, C. And then you will see a Tm. Around here you can see the same dot as as a r on top of a

Ankur - Innovation Partners: um. Tm is a you know trademark that is Sm. Which is service more Ankur - Innovation Partners: or with the circle implies it is registered trademark. So that's that's all. All that it it implies. Ankur - Innovation Partners: You know a little bit more on trademark, because I see this as a lot of branding efforts for some of the projects. Ankur - Innovation Partners: Ah, Ankur - Innovation Partners: I see extensive use of, you know, Aggie or or Tamil type uh Ankur - Innovation Partners: names in in some of the projects, Ankur - Innovation Partners: but in the end Ankur - Innovation Partners: my advice is my recommendation. Method is that i'm not a lawyer, so my recommendation is not. It's just my opinion. It's not attorney advice. Ankur - Innovation Partners: It's actually better to establish a trademark Ankur - Innovation Partners: that Ankur - Innovation Partners: independent, and it's the whole branding of the product is associated with it. Mike was mentioning Gatorade, you know. Imagine if it was not gate or it, but it was

Ankur - Innovation Partners: the University of Florida, Ankur - Innovation Partners: or you know the they. They they call them sort of gators, but they they didn't say, you know, like uh Ankur - Innovation Partners: gate, or fluid, or something, or gait, or is fluid. It is a separate mark, and they they kind of just went about it. Ankur - Innovation Partners: Um, there's also uh the I wonder if I have that slide? Ankur - Innovation Partners: Um, yeah.

Ankur - Innovation Partners: So you know. For example, we use clinics as a very diluted trademark. So even if we are buying, you know, like the puffs, tissue or Ankur - Innovation Partners: name brand tissue, Walmart brand tissue, we just say, Oh, we want to kleinux you Ankur - Innovation Partners: So Kleenex is is kind of uh Ankur - Innovation Partners: they. Unfortunately, their their trademark is diluted. Ankur - Innovation Partners: Same with Google, You know, I've used this on the top. Googling is not everything. So technically, I should have said, Web search is not everything. But even Google trademark is a bit diluted because we use it, so Ankur - Innovation Partners: we use it instead of using web search. We just say Googling.

Ankur - Innovation Partners: So when when you are looking up for a naming a branding of your product or service. Googling is not everything. Make sure you are doing some domain searches so you can have your website. Ankur - Innovation Partners: Um Ankur - Innovation Partners: make sure that, and and these links will be available to you. Ankur - Innovation Partners: Um! When the Pdf. Goes out to you for the presentation, Ankur - Innovation Partners: and you know there are all these resources. So you could go in and this global brand database. It's really cool. It allows you to search for trademarks across the globe. All the countries, so you can find one hundred. Ankur - Innovation Partners: What is a trademark in Canada, for example, or in France? Ankur - Innovation Partners: And uh, one more one more point of on on naming and branding is Ankur - Innovation Partners: also think of alternatives that sound like your product, or your service, or the name. And you know what else can they mean?

Ankur - Innovation Partners: So you know, for example, Ankur - Innovation Partners: if if it is something to do with improving um go Ankur - Innovation Partners: erez agmoni children's reading capability right? So if it is something to do with improving um K. Twelve education. Maybe it should not be associated with, you know, like a caffeine drink or something in the weed industry. So one hundred and fifty. Ankur - Innovation Partners: You know. Those things, just from a branding point of view, are are important to consider when you are when you're thinking of a name of your product or service Ankur - Innovation Partners: Again, this company registration information is there. The links are here that you will have for use later on. Ankur - Innovation Partners: Um! And then i'll hand it back to Beth. It's Dr. Beth - Innovation Partners: he.

Dr. Beth - Innovation Partners: You just get me back here. Dr. Beth - Innovation Partners: Ok? So well, thank you. Encore. That was really great. I really liked especially this slide towards the beginning About what is the different mindset looked like thinking about research and then thinking about commercialization that was really helpful. Dr. Beth - Innovation Partners: So some of you may be wondering. Okay, Well, what do I do next, or what do I do now? And you just keep doing what you do best, which is researching and then publishing your results and going to conferences. However, as you've kind of learned today, make sure that before you're you're publishing, Dr. Beth - Innovation Partners: whether that's in it in an article or at a research conference or in a trade show. Just make sure that you're talking to us, whether either to us or to whoever your a tech transfer office is Dr. Beth - Innovation Partners: so that we can help you protect your ideas if it is something that's going to be, you know, disclosable. Dr. Beth - Innovation Partners: I'm sorry

Dr. Beth - Innovation Partners: um as Dr. Beth - Innovation Partners: so Dr. Beth - Innovation Partners: sorry on the board. You still had remote control over there. Um, so ah like, I said, make sure that you're talking to us. Um when you think you know you have an idea that can be marketed. It can be patented or copyrighted. Um, make a disclosure. We have a video on our website about how to fill out the disclosure form. Dr. Beth - Innovation Partners: But an even better idea is just just talk to us. Um! We're more than happy to meet with with you and talk about your. Dr. Beth - Innovation Partners: You know how you can make your pet filing easy early on, or just learning about how license skills works, whatever you feel interested and keep learning about that, because that is going to prepare you and get you ready, for when you are ready to make the disclosure.

Dr. Beth - Innovation Partners: So, like, I said, we are more than happy to talk to you. We can meet with you in person. We can meet you one on one online. We also would love to come, talk to your department or college, or school, about how we can help you Dr. Beth - Innovation Partners: with this whole process. So that is our presentation. So i'm going to open it up to Q. And A. I don't see any Dr. Beth - Innovation Partners: questions that have come through here yet. So if you have a question, you can go ahead and drop it into the chat box. But you know, while we're waiting for a question, Mike, and on board Dr. Beth - Innovation Partners: um, what do you think, maybe, is some advice that you can give two inventors who are maybe new, or even for grad students. Um, you know postdocs or Phd students. What is one advice that you would give to them.

Dr. Beth - Innovation Partners: They get ready to maybe start the disclosure process. Sharer, Michael: Well, yeah, one thing I was just gonna mention Beth about what you were saying just a minute ago. There is an awful lot of planning and sort of strategizing that can go into the whole disclosure and commercialization process. So Sharer, Michael: um, you know, if if you're someone doing research and you're not at the point of having something that you think is protectable yet. But you anticipate being there in the relatively near future, maybe one or two years away or whatnot, you might want to start planning about those things now, and I think, talking to our Sharer, Michael: um licensing managers, and and just sort of setting the groundwork, making sure you've got a good plan in place to protect this stuff, and are working with us and thinking about marketing strategies. And when to actually roll this out, Sharer, Michael: Know again, once you've got something a little bit more concrete, but I think Sharer, Michael: you know, just getting some advice and planning from us in the early stages, I think will be very, very helpful in the end, and I think we'll make things go smoother and faster. Um, once you are actually ready and and have some things that are disclosable and protectable. Ankur - Innovation Partners: That's a That's a great point, Mike. Um, Thank you for bringing that up,

Ankur - Innovation Partners: and I would just like to add that um Ankur - Innovation Partners: as a researcher we get excited about what, what change, what improvement, what optimization we are doing! It's very exciting to see those results. Ankur - Innovation Partners: What is even more exciting, When I was doing, my research was to see that out in the marketplace Ankur - Innovation Partners: out in the world, Ankur - Innovation Partners: and I think we have a couple of questions. Let's let's go towards the questions now. Ankur - Innovation Partners: Um. So I have a question from way we uh how do grants and funding sources impact rights?

Ankur - Innovation Partners: Ah, Sharer, Michael: so yes! Ah, Ankur - Innovation Partners: it is a Federal grant there is. Ankur - Innovation Partners: Oh, Ankur - Innovation Partners: so, for the Federal Government has the rights to use that Ankur - Innovation Partners: uh in their services in their uh research. Ankur - Innovation Partners: But it doesn't give them the commercial rights to it. So we still retain as universities the commercial right to anything that is funded by the Federal Government,

Ankur - Innovation Partners: and you know the other side of it is. If it is a industry, grant, how does that work? And that is really specific to that particular industry or other agency? Grant? Um might be. What a comment on that! A bit on on your experience around that. Sharer, Michael: Uh well, let's see. I mean um, Sharer, Michael: I mean, they don't really impact rights in the sense I mean the you know. If we're talking about Federal grants again. I mentioned by Go earlier. The whole reason why Bill was set up was to to give universities the ability to take rights to federally and funded inventions. Sharer, Michael: Prior to that the Federal Government was doing it, you know, if you had a grant from the Nsf. And Sf. Owned it, and nsf was the one who was going to try to commercialize it, and that whole Sharer, Michael: process didn't work well, and that's why they passed by Dole. So any um, you know any Federal funding that's attached to inventions. We, as the University, have the right the first right

Sharer, Michael: to to be the owner of that invention. Now there are cases where that might not happen. We might want to give those rights back to the Federal Government. That's pretty rare. Sharer, Michael: But for all intensive purposes, you know Federal grants, we we will own those intellectual property rates, and then, in terms of faculty and vendors share. I think I mentioned that earlier, but it's anywhere from about thirty, seven and a half to forty, something percentage. I'd have to go look, but Sharer, Michael: in that range it depends on what the invention is. If it's pat and more copyrightable Sharer, Michael: um, and if someone departs from Tamu they are still um. I believe they are still subject to those royalties. I mean um can, should, can, and should receive those royalties as long as that invention was initially created here,

Ankur - Innovation Partners: and I also want to mention one more point about. There are some joint technologies with other institutions, so that is also this is normal, so it's not. It's not unusual for us to have folks from Ankur - Innovation Partners: another institution. It can be a hospital. It can be even another university, or you know, in some cases it is even industry that we have joined inventions with, Ankur - Innovation Partners: and we ah pursue it jointly. We commercialize it jointly, and if it is at the point of if it's in the market, the royalties do stream through that, and or maybe it up according to Ankur - Innovation Partners: you know, the agreements that are in place between these partnering organizations. Sharer, Michael: Right? Right? I think maybe the take-home message there is. If there is joint invention between Sharer, Michael: two, or say, even three or four universities, we will handle all the sort of background, paperwork and contracting to take care of that to make it as easy as possible on the inventors. So you Don't really have to get involved to that. We'll handle that. We'll put in the

Sharer, Michael: the proper, you know, mechanisms so that we have rights to commercialize it and negotiate licenses and all that sort of thing, Dr. Beth - Innovation Partners: and Megan Brown pointed out for us in a chat box that in case somebody wanted to know if the adventure does leave Dr. Beth - Innovation Partners: um the university, that their share, their personal share still will go to the inventor even after they leave the university. So Sharer, Michael: thank you, Megan, for confirming that, Sharer, Michael: and yes, you will pay taxes on it. Ankur - Innovation Partners: It's all subjected to personal income. It's just as if you get a personal income like you would do when you have published a book, Ankur - Innovation Partners: and in the same way they will be royalty distribution. It's a it's it's carried out in a similar fashion Ashley - Innovation Partners: that would you mind clarifying for us one more time? What is the faculty? Inventor's? Ah share of the patent royalties? I believe you mentioned this in the Webinar.

Ashley - Innovation Partners: I don't mind. Sharer, Michael: Yeah, for I mean Sharer, Michael: it's not as simple as you would like it to be. It depends a little bit on the disclosure date, and also the subject matter, whether it's patent or copyrightable. But Sharer, Michael: it tends to be between thirty-seven and a half. To I want to say forty or forty, two and a half percent somewhere in there,

Sharer, Michael: more than a third, less than a half. Let's just put it that way, Sharer, Michael: but that's all you know. That's all. I think we've got that information on our website. It's also in the Sharer, Michael: a system policy. It should be. It's pretty easily referenced. I guess, is what i'm Sharer, Michael: what i'm getting at there. Sharer, Michael: And if anyone wants to know that we can, we can even send that to you if you'd like, Dr. Beth - Innovation Partners: Yeah, lots of really good um information is on our website like I mentioned. Um. All of our educational resources are on there. Um, you know, links for our Youtube page links to previous events. Um, we also will be rolling out here in a little bit um

Dr. Beth - Innovation Partners: the ability to sign up for our new mailing list so be on the lookout for that. That's pretty exciting. We also, like I mentioned, have instructions on how to access webinars on just about any topic Dr. Beth - Innovation Partners: that relates to technology commercialization that you could possibly want. We also have a self-paced course that we have with autumn Dr. Beth - Innovation Partners: that you can actually earn continuing educational credits for that will teach you about the whole process. So from pre disclosure all the way to marketing and signing of the license field, so you can run all that info Dr. Beth - Innovation Partners: our website. Um encore, Mike, Do you have any closing remarks for us? Sharer, Michael: Nothing that I can think of? Thanks, everyone. I hope you learned a lot from today's session, and feel free to reach out, and with clarifications or more questions that we can help. Ankur - Innovation Partners: Yes, I would just say, go with them inventions, Ankur - Innovation Partners: and thank you so much for your time to me.

Yes, Dr. Beth - Innovation Partners: thank you all so much. We hope you enjoyed this, and we will be following up with you. There will be a recording of this. Um, just give us a few days to give it up. So thank you. Everyone have a wonderful day correctly. Sharer, Michael: Thank you.

2022-09-26 05:38

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