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A non-profit publication of the Office of the University Relations of Virginia Tech,
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Protecting IP's

By Susan Trulove

Spectrum Volume 20 Issue 17 - January 22, 1998

Speakers from major international companies spent a day in December telling Virginia Tech faculty members and graduate students the how's and why's of recognizing, protecting, advancing, and marketing the results of research. The meeting was sponsored by Virginia Tech Intellectual Properties, Inc. (VTIP) and Mezzullo and McCandlish, a law firm with offices in Virginia, North Carolina, France, and China.
In opening remarks at the conference on "The Role of Intellectual Properties in the University/Industry Partnerships," Ted Kohn, manager of intellectual property for the university, said, "An intellectual property can be any creation the mind can think of or anything that can be put in a new form. But from a practical standpoint, an intellectual property is any creation that can be legally protected."
There are five ways to protect an intellectual property (IP), Kohn said. Patents and copyrights are one and two. Patents protect content and copyrights protect form. "If a copyright were a chocolate cake recipe, you could give away the cake, but not the recipe."
Protect your work by putting a copyright notice on it, and respect others' works by getting permission before copying and distributing it, he said.
Later in the conference there was some discussion of publication and the point was made that a description of an IP, even in an abstract form such as in a conference promotion or grant application, if it enables someone to duplicate it, is considered publication and can prevent a patent from being issued--even if such publications occurs in a thesis that lies on a library shelf and is never checked out.
During a discussion of whether software should be patented or copyrighted, Anthony Vittone of Mezzullo & McCandlish said a patent lasts 20 years from the filing date, while a copyright lasts 50 years after the death of the owner or 75 years after registration by a company.
Trademarks and trade secrets are protection methods three and four. Both are rare in a university setting.
The fifth form of protection is a material-transfer agreement. These occur frequently in biotechnology. "When you give a second party a sample, you want to cover what they do with it and how you share in any applications or secondary uses," Kohn explained.
Who owns an IP? "Inventorship" and ownership can be different, Kohn said. US patents are awarded to individuals but state policy states that IP's belong to the state and prohibits the university from giving ownership to anyone other than a nonprofit organization, such as VTIP, unless there is specific permission from the governor.
However, there is flexibility in terms of licensing, Kohn said. And an inventor can profit from an IP. Details are available from the Office of Sponsored Programs or VTIP, but it goes something like this: The researcher discloses a discovery or creation to the IP committee; the committee recommends assignment to VTIP, does a preliminary technical and economic evaluation, and recommends whether the IP should be patented and how it should be marketed. If it is patented, licensed, and makes money, the inventor receives half, the department 10 percent, and VTIP 40 percent to cover its costs and reinvest in the university.
Chemistry Professor David Kingston talked about "What it's like to file a patent, from a professor's point of view." He made three points:
1) "Before you make a discovery, keep good records," he said. Good records include the laboratory notebook. "In industry, every page is signed and witnessed. You want to keep a record that is traceable and datable.
2) "The important part of a patent is not so much what you have done, but what you claim, then what the patent office will allow. Read patents in related areas to see what sort of claims are made, then try to think of the ramifications and logical extension and derivatives. Relate that to your patent attorney. You are the expert.
3) "Remember there is a time pressure, particularly in a competitive area. Someone else might make the same discovery."
Kingston reflected that when you are seeking a patent, "Your time is less your own. Rejections are frequent," he explained. The reviewers list all the things they don't like about the claims and there is a time limit for responding. "You have to work with the attorney to determine what can be salvaged. You are the teacher. You are teaching your attorney how to counter the objections."
Asked about international patents, he explained that he is in collaboration with Bristol Meyers Squibb, who can afford to do the filings in other countries. "Foreign filings usually follow U.S. filings, and the attorney does most of the work."
Mike Martin, executive vice president of VTIP, explained, "Filing a U.S. patent application prior to publication will also preserve foreign patent rights for 12 months."
Tracy Wilkins, director of the Fralin Biotechnology Center, talked about "A Researcher's and an Administrator's View of Intellectual Properties."
The scene Wilkins described was: "The researcher thinks, `Maybe I can get money for my lab.' and the administrator says, `Ho hum. Okay. But don't make a career of it."
The administrator's view, Wilkins said, is: 1) the 10 percent is good, but the researcher wants that money for her lab; 2) a patent may increase industrial relationships; and 3) it's good public relations.
"The professor's perspective is, patents can restrict the free flow of information," and, "Our reward is supposed to be recognition. We get recognition by publishing," Wilkins said.
"But you can patent and publish." His advice: Talk to the university's IP guys early. You can get a patent filed easier and faster than you can get a paper published. Get a patent attorney who speaks your language. Know who might want your invention. He warned that working with a company on an invention requires the ability to "keep your mouth shut. If you talk about information stamped confidential, you can be sued." He said one also must be sure that one's research colleagues will maintain confidentiality.
Wilkins said that he and Kingston would be happy to answer questions from Virginia Tech faculty colleagues at any time.
Martin concluded the program by discussing the need for protecting IP's and the VTIP mission.
"You didn't come to the university to be involved in product development, but to do research," he told faculty members and graduate students. "Industry is trying to leverage limited research funds by funding collaboration. My role is to enable you to come together."
He explained that in proposing the National Science Foundation, Vandemeyer Bush told Harry Truman, "We need a research engine driven by curiosity alone. "Universities are the largest engine of research, and they are not motivated by economics," Martin said. Meanwhile, "most industry R&D, is with a little r and a big D."
He said VTIP offers the opportunity to publish and to patent, that students can learn the importance of solving problems in which the market place is interested, and that profits from patents have resulted in products and businesses and reinvestment in the university research mission.
"IP protection and promotion is about sharing your work."