Table Of ContentR
Law, Technology, and Business
e
i
n
Given the increasing role of intellectual property (IP) in academic research, it
g
is important for academic scientists to gain greater awareness and knowledge of a
n
the various issues involved with IP resulting from their research and inventions. d
In addition, many factors have complicated the push toward technology
transfer in universities, including corporate funding of academic research. As
I
commercialization has become inseparable from university research, there is N
now an essential need for academics to have a greater understanding of the T
processes involved. E
L
Intellectual Property in Academia: A Practical Guide for Scientists and L
E
Engineers fills this need, providing an indispensable source of information
C
for researchers in academia. Written by a select team of IP professionals, most
T
of whom also have years of experience as scientists, this volume addresses IP
U
issues relevant to the academic community—including ways to efficiently deal
A
with the structural constraints inherent in the university environment. Scientists
and engineers will benefit from the authors’ insights and their advice on how L
to establish efficient communication with university Offices of Technology
P
Transfer. This perspective affords a common language and facilitates a smoother
R
path through IP procedures.
O
P
Taking a comprehensive approach beyond intellectual property law, this
E
reference answers frequently asked questions about employment legislation as
R
well as business and market estimation, invention priority registration, and other
T
necessary steps for the successful commercialization of university inventions.
Y
It presents encouraging examples of academic patent successes and provides
practical advice on patent writing, filing, and prosecution. Other key topics I
N
addressed include invention ownership at the university, determining invention
novelty by prior art searching, monetary valuation of ideas, using copyrighted A
material, protecting material with copyrights, crucial IP legislation, business C
models, and new trends and changes in the U.S. patent office. In short, readers A
will find that this book provides a pathway for easing their journey to the D
commercial success of their inventions.
E
M
K11674 I
A
ISBN: 978-1-4398-3700-9
90000
www.crcpress.com
9 781439 837009
w w w. c rc p r e s s . c o m
K11674 cvr mech.indd 1 9/26/11 2:29 PM
INTELLECTUAL PROPERTY
IN ACADEMIA
INTELLECTUAL PROPERTY
IN ACADEMIA
A PRACTICAL GUIDE FOR
SCIENTISTS AND ENGINEERS
Edited by
Nadya Reingand
Cover Image: Courtesy of Tatiana Balashova
CRC Press
Taylor & Francis Group
6000 Broken Sound Parkway NW, Suite 300
Boca Raton, FL 33487-2742
© 2012 by Taylor & Francis Group, LLC
CRC Press is an imprint of Taylor & Francis Group, an Informa business
No claim to original U.S. Government works
Version Date: 2011922
International Standard Book Number-13: 978-1-4398-3701-6 (eBook - PDF)
This book contains information obtained from authentic and highly regarded sources. Reasonable efforts
have been made to publish reliable data and information, but the author and publisher cannot assume
responsibility for the validity of all materials or the consequences of their use. The authors and publishers
have attempted to trace the copyright holders of all material reproduced in this publication and apologize to
copyright holders if permission to publish in this form has not been obtained. If any copyright material has
not been acknowledged please write and let us know so we may rectify in any future reprint.
Except as permitted under U.S. Copyright Law, no part of this book may be reprinted, reproduced, transmit-
ted, or utilized in any form by any electronic, mechanical, or other means, now known or hereafter invented,
including photocopying, microfilming, and recording, or in any information storage or retrieval system,
without written permission from the publishers.
For permission to photocopy or use material electronically from this work, please access www.copyright.
com (http://www.copyright.com/) or contact the Copyright Clearance Center, Inc. (CCC), 222 Rosewood
Drive, Danvers, MA 01923, 978-750-8400. CCC is a not-for-profit organization that provides licenses and
registration for a variety of users. For organizations that have been granted a photocopy license by the CCC,
a separate system of payment has been arranged.
Trademark Notice: Product or corporate names may be trademarks or registered trademarks, and are used
only for identification and explanation without intent to infringe.
Visit the Taylor & Francis Web site at
http://www.taylorandfrancis.com
and the CRC Press Web site at
http://www.crcpress.com
Contents
Preface vii
editor xi
contributors xiii
introduction to intellectual ProPerty in academia xix
chaPter 1 the basics of Patenting 1
NADYA REINGAND
chaPter 2 is your invention novel? the issue of
Prior art 17
FARHAD SHIR
chaPter 3 Practical framework for intellectual
ProPerty valuation 45
MIKHAIL MAIOROV AND STEFAN SPINLER
chaPter 4 drafting and Prosecuting a Patent
aPPlication 121
OLIVER EDWARDS
chaPter 5 electronic systems for u.s. and
euroPean Patents 155
SARFARAZ K. NIAZI
v
vi Contents
chaPter 6 commercializing inventions through an
office of technology transfer 183
ALEXEY TITOV
chaPter 7 university Patent case studies: some
Patents hang on the wall, others
go to work 207
ETHEL MACHI AND PETER MACHI
chaPter 8 what’s mine is yours: navigating
ownershiP rights and bayh-dole 235
PETER MACHI
chaPter 9 coPyright 277
MELISSA LEVINE AND BILLIE MUNRO AUDIA
Preface
I do not think there is any thrill that can go through the human
heart like that felt by the inventor as he sees some creation of the
brain unfolding to success ... Such emotions make a man forget
food, sleep, friends, love, everything.
Nikola Tesla
The brain of a typical scientist is wired in a peculiar way. It is focused
on performing a cold and meticulous analysis of issues that may appear
arcane and immensely complicated to laymen. The scientific approach
to any problem is often long on rigorous logic and short on emotions.
Scientists are trained to avoid costly mistakes and not to overlook the
tiniest details. Their way of inventing is the way computers perform
their billions of operations per second, plus flash of insight and a little
luck. Or, at least, that is how scientists often appear to the rest of soci-
ety, which is quite grateful to them for all the amazing gadgets. And
yet, it comes as no surprise to anyone that scientists, those clairvoyant
paragons of cold logic and thorough calculation in their own fields,
sometimes exhibit astonishing amounts of innocence and outright
naïveté once they leave the cherished safety of their laboratories and
desks and start interacting with society at large. Besides a few laughs
at the expense of scientists in popular movies, more dire consequences
vii
viii PrefaCe
are that the invention may not find the right path to be beneficial to
society; and the scientists are deprived of well-deserved fruits of their
rather demanding labor. Often while trying to commercialize their
inventions, scientists become involved with issues of intellectual prop-
erty (IP) related to their inventions. And it is then, when a scientist
usually needs help from an IP professional.
The IP professional’s brain is wired in a way that is quite different
from that of a scientist. An IP professional is trained to look into
the specific legal issues associated with the invention and is capable
of focusing on truly important facts about the invention and then
condensing these points into a concise set of legal claims. Scientists,
being emotionally involved with their inventions, usually tend to
concentrate on pure scientific merit rather than on dry legalistic mat-
ters, and often discover it is difficult to find a common language with
legal professionals. The goal of this book is not to be a substitute
for interactions with IP professionals, but rather to give scientists an
insight into the frame of mind of the IP professional, so that a com-
mon language can be found and the invention can be shepherded
smoothly through all the IP procedures. Just as any IP lawyer worth
his or her salt must have sufficient technical knowledge, a successful
inventor should not be ignorant of the legal issues. In this volume,
I have selected the IP issues that I deem to be the most relevant
to the academic community and assembled a team of recognized IP
professionals who are best equipped to provide insight into these
issues. These issues include parts of IP legislation, which are crucial
for commercialization of the invention and also the description of
structural constraints inherent to the university environment and the
ways to efficiently deal with them.
The main idea underlying the work that went into writing this book
is how to make it user friendly, so that readers can easily find the
answers to their IP questions. Years of teaching Intellectual Property
in various academic establishments have given me the opportunity to
compile a list of questions most likely to be asked by university scien-
tists at different stages of the IP process. Here is but a small sample
of these questions:
I have invented this gadget. How do I make sure that somebody else
has not already invented it before?
PrefaCe ix
You will find the answer in Chapter 2, which lists the most
useful Internet databases and describes techniques for
performing the search.
How can I find out if my invention will bring me profit?
This answer can be found in Chapter 3, written by business
professionals who outline practical approaches to mon-
etary valuation of your idea.
Where should I report my invention? Where do I start?
Most U.S. universities have dedicated professionals working
for the Office of Technology Transfer (OTT), whose job
it is to facilitate the patenting process. Inventions made
at the university must be reported to this office, and its
representatives will guide you through the process. In
Chapter 6, you will find advice on how to establish effi-
cient communication channels with the OTT.
Do I own my invention?
Ownership of inventions made at a university is discussed in
detail in Chapter 8. Ownership depends on many factors,
for example, the university funding source and existing
contracts with government and industry.
What is the difference between patents and copyrights?
There is a vast difference between these types of IP. Copyrights
protect appearance and the manner of material presenta-
tion and are addressed in Chapter 9. The subject matter of
patents is the devices/materials content and functionality,
which are described in Chapter 1.
More than just a simple “how-to” book, this volume also provides
encouraging examples of university patent success (Chapter 7), show-
ing all the right moves and mistakes commonly made by inventors. The
remainder of the book serves as a primer on patenting and provides
practical advice on patent writing, filing, and prosecution that can be
used by researchers working in both academic and industrial environ-
ments. Above all, the purpose of the book is to make the life of the
inventor a little easier.
