New Faculty Series — Session #6: Office of Commercialization

My name is Jeremy Tamsen. I am the director of the Office of Commercialization here at Washington State University. And we have a small enough group that I’d like to be a little bit interactive today. So if everybody could please start by putting into the chat box what department you work in and what is your job title in that department?

I’ve got my chat open here, so I should be able to see that. As we proceed. So I am an attorney, you see “JD” and “Esquire” at the end of my name there. But be careful. I’m not your attorney, and I don’t even represent WSU in a legal capacity. So everything we talk about today is going to be a general discussion.

I’ll be happy to take questions, but please do not rely upon any of this as legal advice. And if you feel that you do need the advice of a licensed attorney, I can assist you in obtaining a referral. If you need one. So with that out of the way, let’s proceed. So we’re talking about intellectual property today.

And what we mean when we talk about intellectual property is property. That is established and recognized by law. And it allows, the rights holder, the exclusive right to use the property, and it allows the right holder to pursue remedies for infringement of its rights. So, property, meaning it can be bought, it can be sold, it can be traded just like any other type of property.

And it’s legally defined. And so there are certain legal boundaries with respect to what you can and cannot do. And in the context of modern universities, we’re really talking about a toolkit that we use to drive impacts, from research. So we’re talking about publications. We’re talking about a very particular type of publications. We’re talking about driving from your ideas that come out of your research labs all the way to the consumer is the goal.

And fostering intellectual property within the university context is a shared responsibility, and it requires cooperation across various units. And we’ll talk about some of those moving pieces at the end of this presentation. So okay, I see Office of Research. I see Department of Civil and Environmental Engineering. I see ORSO. I also see Office of Research, see postdoc faculty entomology.

It’s wonderful. Thanks to those of you who are able to put that into the chat box for me. So why are we talking about intellectual property? Why is this an important subject for new faculty members to grasp? Because this is a modern system of disseminating knowledge, and driving impact from your research results and in the absence of a meaningful way to protect intellectual property.

There is very limited chance that anything that comes out of a research lab is going to be developed into a product or service. And that’s because, of course, what comes out of your lab is not ready to be produced and sold at scale. What’s coming out of your lab is more like, you know, it’s earlier than that.

It’s softer around the edges than that, and it requires further investment from a third party or perhaps third parties to realize your research outcome into a product or a service that can be purchased and used by, regular people, by normal consumers. So this is a way to disseminate knowledge, in the modern era. And it’s a way for us to continue to, allow the researcher who produces an invention to get credit, both professional and financial recognition.

And it allows us to demonstrate that our research that’s conducted at WSU makes meaningful impacts in the real world, and affects people, where they can obtain the, the service or the solution or the product, and solve the problem in the real world. So we’re talking about intellectual property because again, this is a toolkit to derive impact from your research outcomes.

So it’s a category of property rights like we talked about. And we’re going to talk about trade secrets, copyrights trademarks, contracts, and patent rights today. So they all fall under the category of intellectual property rights. So bringing back that definition keep this definition in mind. Intangible property established and recognized by law. You get the exclusive right to use the intellectual property and you get remedies for infringement.

We’re going to talk about these in order a rough order of difficulty to obtain. So you see, I’ve put the little continuum here on the slide. And we have trade secrets all the way at the front. There’s no registering, trade secret, copyrights. You have to register of trademarks. You have to register. Contracts are difficult to obtain because they usually require the assistance of an attorney and patent rights all the way.

At the end, we’re going to talk about, in, thorough detail. Those in this continuum are definitely the most difficult to obtain. So this is a slightly different definition of intellectual property. This comes from the World Intellectual Property Organization, which is the home of what is sort of an international patent application. It’s the World Intellectual Property Organization says that intellectual property describes a category of property rights, in creations of the mind, such as inventions, literary and artistic works, designs and symbols, names and images used in commerce.

Intellectual property is protected in law and enables people to earn recognition of financial benefit like we talked about from what they invent or create. And by striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish. So we’ll talk about that balance, that balancing of interests between innovators and the wider public interest.

What might be what might we be talking about there? And another key point of this is that part of the definition is used in commerce. So intellectual property rights because their property because they are bought sold and traded, they really only have meaning when they’re used in commerce. And so the part of this definition is used in commerce.

That’s sort of not what the university does. Right. We don’t typically engage in commerce. And so we utilize third parties to do that use in commerce part for us in most instances when we’re talking about a new invention or a useful discovery. So that’s a, you know, complicated definition. But it is the basis, forms the basis of our understanding here.

So let’s focus on trade secrets as a narrower category of intellectual property rights. So a trade secret is information that has value by virtue of not being generally known. The information has value to others who cannot legitimately obtain the information. And the information is subject to reasonable efforts to maintain secrecy. So that’s kind of like a broad definition, right?

And we’ll talk about really carefully the reasonable efforts. So if you had a trade secret, something that had economic value, and that value was derived in part because others didn’t know about it, how would you protect it? You can put your ideas in the chat box. WSU does have some trade secrets. We license to third parties, and we keep that information in a safe.

That safe is in my office in Lighty 280. You can come and visit it if you’d like, but we will not be opening it. And so that’s one way. Physical security is one aspect of protecting your trade secrets. And you might also need somebody with superpowers like, somebody who can advocate and who can protect, the trade secrets while still being able to talk about it in a commercial context to, perhaps induce investment, for example.

And this seems kind of crazy, like, just keep it secret. Just keep it safe. Is that really suitable for a commercially valuable, invention? There are well, there are a lot of, good examples of trade secrets that are used in commerce really regularly. Okay, limit data sharing, just like Coca Cola. Okay. Perfect. So Coca Cola is a great example of a trade secret, right?

The recipe for Coca Cola is not patented because patents require you to make a full disclosure, which we’ll talk about in a little bit. But trade secrets, you know, there’s no registration. Therefore there’s no disclosure requirement. You can keep it secret for as long as you want to, for as long as you can. So there are some benefits to using trade secret protection over, say, patent protection for certain innovations.

But it again, depends heavily on your ability to protect that information. Okay. And, trade secrets, first were covered by a patchwork of state laws in Washington state, which is one state that has a that adopted a model code. So several states had this exact language in their state, laws. So trade secret information, including a formula pattern, compilation program, computer program, device method, technique or process that derives independent economic value, actual or potential from not being generally known is the subject of efforts to maintain its secrecy.

And after the states passed this past patchwork of trade secret laws, the federal government finally passed a law regarding trade secrets. And on May 11th, 2016, the Defend Trade Secrets Act became federal law. So we do now have a federal claim of action as well as a state claim of action. If there is a misappropriation of a trade secret.

So, we can talk about, different, examples here so we can talk about Coca-Cola like we already did KFC. The recipe for KFC chicken. WD 40, the recipe for WD 40. But it’s not just recipes, folks. What do you think that Google has? That’s a trade secret. Who has it? Who has an idea in the chat box?

Google has a big, big trade secret. The search algorithms. Bingo. Thank you. So the Google search search algorithm, something that millions, billions of people perhaps put to use every single day, is only protected by trade secret. So it can be quite useful, because again, they were able to not they were able to avoid patent disclosures by not patenting that technology, and keeping it only a trade secret.

So. All right. So moving on to copyrights. This is something that folks may be more familiar with in the audience. The US copyright protects original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated either directly or with the aid of machine or device.

So you can see how they wrote that definition to be really expansive, to try to cover new technologies old technologies, the pen and paper, and sort of everything in between. And copyrights can be used to protect authors’ rights in video and photos, music, literary works, architectural works, sculpture, software and websites, including the underlying computer code, or any other creative work.

So what’s being protected in the copyright is the creative expression of a specific author. So it’s it covers a specific work of authorship and elements of that work of authorship does not protect the underlying ideas. Except to the degree that they are creative elements of that expression of authorship. Right. Rights are fixed at the time that the expression is fixed in a tangible medium.

So when I write it on a piece of paper there a copyright arises. Federal registration is available. And that provides enhanced protections. You have to register, for example, the work if you plan on suing somebody over their misuse of the work. So there are certain limits, where, where registration is required. But the law presumes that rights of fixed at the time the expression is fixed in a tangible medium.

So it could be typing it into the computer that could be recording into the voice recorder, you know, shooting the picture on the, on the digital camera or on the film camera. And then you can put other people on notice by using the copyright symbol to say, hey, I’m claiming proprietary rights in this. This is my creative expression.

I don’t want you to reuse it except with my permission. And you can do that by indicate on the work itself with, copyright label, copyright symbol, and the year and optionally the name of the author. Okay. So an example. Okay. Copyright who knows about this case if anybody knows, about this just put yes, I, I’ve heard about this in the chat.

Something like that. So this this cute little photo. Right. This is Naruto. The, oh. I’m going to forget now what? It’s a he’s a macaque monkey, and he was in the forest in Indonesia. The monkey selfie. Yes. Ross is all over this today. So he is living in the forest in Indonesia.

An English photographer comes in last name Slater. Has his camera equipment, has several cameras, puts a camera down, and after observing him for a while, the Michael realizes how the camera works and takes this picture along with several others. Of himself. Using the Mr. Slater’s camera. Later, Mr. Slater, takes the camera home, realizes what had happened, gets the pictures into his computer, makes a book out of the pictures, and start selling like this cute coffee table book of, like, monkey selfies.

Like, that sounds nice. So who do you think came calling? But Peta, the animal rights protection group. Right. They say, oh, you have, illegally extorted this monkey. You have made money off of his creative author with his creative expression of authorship, and he should be qualified to the money that you’ve made on this book.

Or at least the part of the money that he was responsible for taking these photos. So the case, goes up to the Ninth Circuit. So that’s like an appeal, a federal appeals court in the United States. So this went through several phases of trial, actually. And, the you can see that the court case is actually in the name of the monkey.

That was one of the reasons that the case failed. The monkey did not have standing, to bring a case, because animals cannot sue on behalf of themselves. And since the monkey couldn’t sue, Peta could also not, you know, come in as a, a next friend, and represent the monkeys interests, on behalf of the monkeys.

So the case is thrown out on that basis. But the court did reach into whether an animal can have copyright, and said, you know, it’s an interesting question and we’d like to make a ruling on this because it will help lower courts. And they said, no, an animal cannot qualify for copyrights. So it’s an interesting little story about a copyright book, and a dispute between a monkey.

And a photographer and of course, Peta. Okay, so now it’s all about trademarks. This might even be more familiar to folks. So trademarks are a way to develop a relationship in the mind of the consumer between a product and or a service and the source of that product or that service. So if I see that label on the Cheez-It box, I know I’m getting Cheez-Its.

I know what quality to expect. I know what flavor to expect. I know how long they’re going to last in my cabinet. I know what I’m getting, and that’s a benefit to consumers at large. Being able to reliably purchase the same products and services. Because of the way that the products or services are marked. And so trademarks allow for protection of those marks to allow for that consumer function as it relates to products and services.

So the rights affix as soon as you attach them and use them to, identify the source of a, of a good or service. So before you register you use the term symbol, and that says, hey, I’m using this as a trademark. I’m using this as an identifier as me of the source of this particular product or service.

And then filing a registration, in the state, you can see state is written smaller there than federal. It might be hard to see but state trademark offices do exist in some places, but in general they’re irrelevant today. And federal trademark registration is what’s generally used, and it puts a place in time for your claim.

This says, okay, on this date, I could prove that I was using the trademark in commerce, and I’m putting other people on notice to say, nope, I’ve registered it, I intend to protect it, and I will come after you if you use it on your product or service to confusingly indicate that it might be coming from me. So using the circle R superscript symbol comes only after you register the trademark.

So registered rights, all rights reserved as circle are, trademark. TM just says, hey, we’re using this as a trademark. We may register it in the future, but we haven’t registered yet. And trademark applications fall into one of two categories use in commerce or intend to use in commerce. Unlike patent rights, where you have to keep everything secret until you go to commerce and you’re ready to sell and you have the patent issued, you can do that.

Trademarks are the reverse. You have to use them in commerce before you can qualify for the registration. And so you can file an intent to use to use in commerce that keeps your kind of foot in the door and keeps your priority date earlier. That could be useful if you expect the mark will be contested by other parties, or if you need further time to develop your brand, in order to deliver that product or service using that trademark.

But ultimately, for the trademark to get registered, you have to be able to prove that you’re using it in commerce. And so that could be a sale, you know, a sale of the product bearing the mark. And that could be an advertisement, or an offer for sale. So those all qualify as used in commerce.

And again, TM, before you register and circle after you register, we’ll talk about some examples here. So the Cougars WSU Cougars logo. That’s a good example. And the Cosmic Crisp brand is another good example. You can see we have that appearing on several different types of packaging, and perhaps in different, formats. But we’re still protected because we’ve registered the word mark, the word mark for Cosmic Crisp rather than just the logo.

We have also registered the logo. But we’ve registered the word mark so that way, no matter how we use the trademark, we could change the style of it. We could add additional elements if it was holiday or if it was, you know, we’re trying to do different branding. And we’re still protected in our use of it in connection with the apples in the live trees.

Because we’ve registered the word mark, and then we’ve also registered the logos. So the same for the WSU Cougars and then Abercrombie and Fitch. There’s two trademarks that I’m trying to show there. The first is obviously their logo. And then the second is trademarks can be different things. Right. They can be not just words. So Abercrombie and Fitch is a good example of this.

They have the smell that they pump into their stores trademarked. So there are different brand elements, physical and intangible, that can be used as trademarks. And that can help identify products, as to their source. So another good example is going back to the Google example, why would it be important for Google, right, to have a word mark on just the word Google?

They don’t, you know, have all of these different registrations. You know, they change their website every single day to use this word in a different way. Right? You’ve seen that, right? The daily Google, whatever. Homepage. So word marks are a really powerful tool if you think about it in that context. No matter how they use that word, they’re still protected.

Nobody else can use it, for internet services. So, and probably a lot of other classes. And the other thing to think about, trademarks are broken out into classes. You know, we have Delta Airlines. Well, we also have Delta faucets. We also have Delta Dental. Right. So yeah, Theo this is a good one.

So trademarks are broken out into class so that people can use there’s only so many words. And that’s a recognition of that. And realistically, nobody’s going to think that the faucet came from the airline manufacturer. It came from the dental insurer. Right. And so, again, the basis for any registration is the likelihood of confusion in the minds of the consumer, against other marks and like your relative distinctiveness, as compared to other marks.

So these are kind of the things that we think about as trademark. And yeah, The Ohio State University, that’s a good one. They did try to patent or they did try to trademark the word “the” in connection with, The Ohio State University in particular. They were they were faced with what’s called a restriction, but it’s a little bit too much for me to get into.

But yeah, great example. Okay. So we’re going to go about contracts this really briefly. These are a form of intellectual property, even though some people don’t really consider them to be that or think about that immediately when they think about contracts, they set the rights and obligations of parties relative to one another. They set restrictions on how assets, including intellectual property, are used by third parties.

So contracts are an essential component of leveraging intellectual property. We developed that at the university, but then again, we license it to a third party and then they go on to develop it further into a product or service. So the contracting is a really key component of, kind of all these steps, because we’re always necessarily working with third parties when we do this type of work.

Usually these require the advice, understanding or negotiation, usually of a licensed attorney, to get them completed. So that’s why they’re sort of, closer to the end of this continuum of difficulty to obtain. And contracts provide, valuable and potent evidence and enhance protections, sometimes in the event of a dispute. So they can help you, get out of trouble if you get bound up with something that’s not quite the way you intended it to wind up.

So what do you think? Is this is this a valid agreement? How does this come about? The miles long scrolling thing and you click. No, I don’t accept. Or you do accept. Whichever one is that. Is that an effective agreement? Who thinks yes. Who thinks no.

Could be sued over that.

I’m pausing for a second because my voice needs a break.

Maybe not. Potentially, yes. Okay, so this actually this is a legally binding agreement. Seems crazy. And what this comes from as part of this legal fiction, you know, comes from the idea that in back in the day cafe, you would open up the box of software, you would, you know, you buy a piece of software.

It was in a box and it was wrapped. And you would unwrap the box and inside you would find the terms and conditions. This long list just like this. And at that time, you could either decide, okay, I’m not going to install the software. I don’t agree with the terms and conditions. I’m going to return it. And usually there was like a seal on whatever the media was like.

If the disk was in there, there would be a little seal on the disk so that they could tell that you didn’t install it. So. Okay. I don’t agree. I’m going to send it back. They give you a refund. Maybe that’s a partial refund. Whatever. You don’t agree to the terms, but if you just you open the box, you pop the software in, you see the terms and conditions in the box, and you go ahead and you install the software.

The courts decided that that was you constructively, accepting those terms and conditions. Whatever a court says constructively, they mean fake. So that’s like you fake signing and accepting the terms. You put it into your computer, you installed it, you understood what the terms were, they were available for you to review, and you still install the software.

So this is called a click wrap agreement because you you’re clicking to open the wrapper. So click wrap. This is an effective agreement. Okay. So who has an example of a contract they’ve entered into themselves. Who can put it in the chat for me?

Contract. This is a common tool, right? A lot of people, we’ve got lots of contracts for lots of different things.

Cell phones, leases, cars. You know, you bought your car on a loan, mortgage. All of these are contracts. And as we saw, this clicker app agreement, you probably have a bunch of contracts walking around in your pocket. You don’t even really think about it as contracts. You have all these services that you use, digital services that you use that are governed by contracts.

So car insurance, all these things, conduct trials for industry. Yep. That’s great. So, research contracts. Right. Relevant to your work here at WSU? Your grants are all contracts, so, yeah, lots and lots of contracts. This is one sort of hidden intellectual property that people don’t really think about too much, but really, it’s really all over the place.

There’s a lot, a lot, a lot of this in our lives. Okay? So take a big deep breath, shake your shoulders out a little bit. We’re going to talk about patents now and we’re all the way at the end of the difficulty to obtain continuance. So that’s why this section is so okay. Patents are used to protect novel, useful, non-obvious creations will impact that.

But generally, patent rights grant the right to exclude others from making, using, offering for sale or selling an invention throughout the United States. And there are other patent systems in other places, but we’re going to be focusing specifically on the United States today. And patents provide protection in the event of a dispute. So say, oh, that person is making my invention down the street.

They knew it was mine. They’re making it anyways. And that allows you to go and stop them. If you’ve filed the right types of protections. So the right to exclude others from practicing your invention, that’s what they making, using offering for sale or selling it. They say it’s practicing the invention. So you might hear me say that today.

The right to exclude others from practicing your invention is a time limited reward for public disclosure. So when you file a patent application, you necessarily have to tell the patent office everything how to do the how to make the whole invention, how to do the whole process, how to apply it in practice to solve the problem that you’ve set out to solve.

So the patents are what’s called an enabling disclosure. You must enable somebody who’s, similarly skilled in the art as you are to go out and make your invention, so you don’t have to start at the very base, you know, you don’t have to educate somebody as dumb as me on how to make your invention.

That’s really technical and really scientific. But you have to, enable somebody who is educated like you, trained like you to make your invention. So that’s the enablement requirement. So it is a property, right? Again, it’s bought, traded, sold. And owners must enforce their own rights, to exclude using a dispute resolution mechanism. So it’s a use it or lose it thing.

If somebody violates my patent rights I don’t. There’s no patent police for me to call. I call my attorney and I say, hey, I need you to take action on my behalf because we have somebody that, is using my patent rights and we need to go enforce against them. We need to enforce our own rights. So it’s up to you.

Dispute mechanisms and dispute resolution mechanisms include the PTAB. That’s the Patent Trial and Appeal Board, which is an Article IX Administrative Court, part of the US Patent and Trademark Office. And of course, the courts, both state and federal courts, depending on the type of claim you have, patent claims are brought in federal court because it’s all federal law.

But as we talked about, there’s some state trademarks, for example, and you could have state rights related to your contract claims. So it just depends. There are a bunch of different ways that you can bring those claims, through different courts. And the inventors, no matter what, no matter how many times the patent bought and sold or traded, the inventors are forever recognized on the patent application and in the patent certificate.

So, that never goes away. No matter who owns the patent, you’re always going to be recognized if you’re a contributing inventor. So a some terms of art from the world of patents. Does WSU pursue violations for their patents? Okay. So like what I talked about is we always rely on third parties. We work with licensees to commercialize the intellectual property that we create here at WSU that could involve investment, in attracting other investors, that could involve merging or purchasing other companies.

Right. And it could involve a lot of different things. And because they have so many different potential commercial pathways with respect to the technologies, we give the right the first right of refusal to enforce the licensed patents to the licensee so that they themselves can go and be assertive and say, no, look, we’re making this product right down the street.

You can’t be making this product too. And these are the reasons why. And here’s the patent registration, here’s our license. We’ve got the rights to do this. And you do not. So we will look to our licensees to take on that very commercial activity of enforcing the patent rights in the first instance, if that makes sense. So good question.

So conception, actual reduction to practice and constructive reduction to practice. So again, what I said about the word constructive we mean fake. So this is fake reduction to practice, real reduction to practice, and conception. So these are sort of the phases or the shades of inventorship. So the formation of in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice.

So that’s a really detailed and specific definition that comes out of a court case that’s cited there. And so you really have to understand conception is just not oh, I have an idea that I might improve something. It’s conception is I have an idea of how to improve it. I know exactly how that I would improve it.

I can describe it with exquisite detail. I’ve tested it usually in operation, to some degree, even if it’s not fully, just to make sure. Okay. And my whole idea works, and that you have an, a complete idea of how it will be applied. All of those things are required. So before you have, after you have the conception of the invention, then you’re going to go out and try to reduce it to practice.

Again, the word practice really means like using the invention as it’s meant to be used. So actual reduction to practice is the reduction of the idea, the conception to a tangible thing that actually works for the intended purpose. It might not be at scale, right? This might just be a benchtop, but you’ve still reduced the conceptual invention to a physical practice.

Constructive reduction to practice or fake reduction to practice is used because there are a couple of ways to go about filing your patent application. You can file first what’s called a provisional application before you have fully reduced your invention to physical practice. So that means that you’ve conceived of something, and perhaps you’re halfway there in reducing it to practice, but you’re not all the way there.

We can still file a patent application in that context, and it buys us about one year. Really, it’s about nine months because we have to have time to prepare the filing, and then it buys you a year to continue to reduce it, to practice so that you’re still protected, while you’re doing that work. And you can go out and you can talk to people about the invention, you can tell them how it works.

And still be protected, still have the priority date from the provisional filing that’s based on constructive reduction to practice, because patent application has traditionally required both conception and actual reduction to practice. The courts came up with this solution to say, okay, a wink and a nod. We’ll say, yeah, you, we’re going to fake agree that you reduced it to practice and give you a year to actually do that.

Come back to us when you have. Or if after a year you haven’t, you got to tell us that too. And then we waive all the rights. So there’s a couple different ways to go about this. But conception and reduction in practice are sort of the two key components that we’re looking at. And again we talked about making an enabling disclosure.

The patent application has to be really detailed and enable somebody to, go out and experiment with your, patented work. So that’s one exception that’s included here. You file a patent application, it issues, I have patent rights that I can go out and I can stop other people from practicing those rights that practicing that invention.

However, there is a carve out in the United States because we believe that, group science and, like, double checking people’s results is a positive thing overall, for society. And so there’s a research exception that says if you have somebody has patented, process us that you’re putting into practice in your laboratory, but you’re not using it in commerce, you’re just using it to conduct research to double check their results, or perhaps to make a follow on invention of your own using their technology as a basis.

So, there are some, exclusions. And the enabling disclosure, is in part a reflection of that research which carve out to say, no, we want people to go and to double check and to make sure that this is actually what the inventor says it is. And patents do get invalidated on the basis of that.

Sometimes say, new biotechnology comes out, it’s supposed to cure this cancer and it doesn’t. They can, the patent can later be invalidated on that basis. In prior art. So this is what they’re comparing the applications to. You file a patent application and the patent office is going to look at this really wide world of what they call prior art.

And it could be anything, all information that is publicly available before someone claims to invent something. And so patents, again, are only allowed for things that are novel and non-obvious. And if the prior art is contained, or if the prior art, any prior art contained a description of this invention, it can’t be novel. So let’s talk about what I mean.

So there are a few different types of patent applications. Coca-Cola comes up again. And who can tell me what is this? What is this type of patent application? The Coca-Cola bottle. Is it for the function of the bottle or is it just for the ornamentation? Right. It’s just for the ornamentation. So this is a design patent, filed in 1937.

And it does not cover the utility of how, for example, the lid fits on to the lip of the bottle or, you know, it does not cover that it holds liquid. You know, that would be completely obvious, but it covers these curves and this shape and these little fluted cutouts in this place for a label, and it covers the thickness of the glass.

And the specific radius of those curves are described and the width of the base and the width of the top. And all of that is carefully and painstakingly measured and then described in the patent application. For this design patent. Okay. So this is a utility patent. So we’re talking about usefulness utility. Right. So this is something that probably most of you have seen.

And you know, we talked about patents as a way to, to help resolve disputes or a tool, a tool to help resolve disputes. Well, you can see these drawings like this is kind of like, cool, right? It’s in this sort of interesting line art style. This is a requirement of the patent application. It must have at least one drawing showing the invention or as it were, the design, invention in use.

So this could be used if any of you have ever lived with roommates who maybe you’ve had this dispute with, which direction does the toilet paper roll go? Well, this image can be used as evidence to resolve that dispute. Because as you can see, the original inventor, intended it to come up and over the front.

So that’s an old patent. One other thing that I like to talk about when I talk about that pattern is how one patent can cover multiple actual products. So this toilet paper roll, another use that was described, in the it cannot be a photograph. No, must be a drawing. Can I patent TP that wraps the other way?

So that may be obvious. So we can talk about obviousness rejections here in just a minute. We have just a few minutes left, so the toilet paper roll indicates a few things. It can be, you know, a useful dispute resolution mechanism to have this evidence as recorded in a patent application. And, it can also be used for multiple things.

So this is also this patent also describes rolls of paper that are perforated to be used as wrapping paper. So like if you think about somebody has a store and maybe they’re wrapping the same exact size package over and over again. And so they have a perforated roll of gift wrap that’s also described and also protected by this patent application.

So there can be multiple distinct inventions that are covered by one technical description that fits into one patent application. Okay, I think that’s about it for that one. Okay. So, genetics can be, patented, with certain limitations. But novel genetic code can be patented as long as it’s shown to have some useful, application in plants.

So plants are sort of the other major application type utility applications for the toilet paper roll or like useful inventions, design applications for things that you’re only trying to protect the ornamental appeal, and plant applications for, of course, plants. So these are the three types talked about that. And registered patents provide a time limited monopoly. Right. So we talked about this time limit who knows what the time limit is.

How long should somebody have a monopoly just because they invented something. Right. And what do we get 50 years okay. That’s that’s a long time. That could be ten years. Okay. Medication. So they all, took it. So 20 years. That’s the answer. 25 years for asexually propagated plants, including some trees and vines. So that’s just a that was just a policy decision, right?

20 years. And what happens at the end of the 20 years I’ve, I’ve invented something, I monopolized it, I capitalized on it for 20 years. I’m Bayer I made aspirin. Now anyone can use my recipe. They can dial up my patent application on Google patents and they can. Oh, okay. I got to put this component in this components.

This is how I make the recipe. And now anyone can make it. So we have Walspirin or whatever. You go down to Walgreens and you can get the Walgreens brand aspirin. And that was a policy decision, right? That in general has the tendency to improve society, to improve the lives of people living in the United States, and to have these generic inventions available for public use.

So that’s kind of the idea here. Time limited reward for a fully enabling public disclosure. Okay. Public disclosures. So we’ll talk about this, if you, like, come to us and you want to patent something and you’re like, “oh, but I want to go to a conference in a week” and we’ll be like, “okay, we’ll work really fast, and we’ll file it before your public disclosure at the conference so that we’re protected.”

In the US, there’s a grace period of about a year. If you make a public disclosure, you could still file a patent. There are some limited exceptions in other places, but it’s really not to be relied upon. And so that means that if you make a public disclosure of any kind, that’s a really broad definition.

In the eyes of the USPTO, that could be me sending you an email. If we are not under a non-disclosure agreement, that would be a public disclosure in the eyes of the patent office. So if I make a public disclosure of any kind of my invention, to anybody to any third party before I file it, then I could be protected in the United States but nowhere else.

Think about that. So when we talk about publications and you come to us with an invention, will be planning around those kind of dates, the conferences, the publications the meetings that you might have with your working groups for different grants and things like that, even, we’ll be talking to you about that if you come to us with something that you’d like us to work with.

So patent applications are reviewed for novelty and non-obvious ness compared to prior art. As we talked about and print printed publications, are included, of course. And enabling disclosure requirement of the patent application is not necessary. You don’t have to make an enabling disclosure to somebody else through the public disclosure in order to spoil your patent rights.

There’s a lower bar for spoilation than there is for the full disclosure that’s required in the application itself. Okay, so this is a really complicated and, sort of gross looking timeline, and I’m not going to go through the whole thing. But this is just to demonstrate this is a long process. And the first step in this is like the review process and the examination, the pendency for this right now, this step here, 6 to 18 months is actually 20 months right now.

So there’s like a little dashboard you can go online and you can look at the USPTO s website. You can see how long it takes them to read your patent application. But it’s a really long time. And that’s because there are a lot of applications in line. And so there’s two routes here, the US route and the PCT route.

I talked earlier very briefly when I talked about the definition of intellectual property, about the World Intellectual Property Organization, that is, with whom you file the PCT or the patent cooperative treaty is what that stands for. So you can file this sort of proto patent application with the World Intellectual Property Organization and then later apply that proto application to, you know, any of several countries, like, almost 200 countries.

And US is one of those. So you can start with the PCT and then transfer those rights into it, you know, translate those rights into a U.S., European or other foreign country application. But the applications are always handled after that proto application that PCT, once they’re converted to a real national application in one specific country, it will always be handled by the patent office in that specific country.

Because they have their own laws, they have their own regulations, and they have their own procedures. So, you know, you see, in the in the best case scenario, you have a patent that gets granted. And then at three and a half, seven and a half and 11.5 years, there’s maintenance fees associated, they pay the patent office. And that’s just so that if you stop using it in commerce, you’re not going to pay the maintenance fee.

So then the patent office knows, okay, we can make this one open to the public to we get to that, one gets to skip to the front of the line and not have to wait the full ten, 20 years. So those maintenance fees are a critical component. And then yet 20 years after it issues, then it’s in the public domain.

So utility, novelty, and non-obviousness. What does this mean. And what is patent eligibility. So what might be eligible for a patent is a process machine, an article of manufacture or a composition of matter, but not discoveries in general. Natural laws, scientific principles, national natural phenomena, mathematics, abstract ideas or, ideas in general. Atomic weapons. Why would we not want atomic weapons to be patented?

Why would we not want atomic weapons to be patented? You can’t, patent naturally occurring things except plants that you’ve taken efforts to cross yourselves. Yep, because the full disclosure requirement would, allow other people to make atomic weapons. So no patents there. Anything encompassing a human being. So we don’t want designer babies. And anything that has been publicly disclosed as we discussed.

So utility it must have some usefulness, some beneficial use. And the famed Justice Story of the… former Justice Story of the US Supreme Court: “The invention should not be frivolous or injurious to the well being, good policy or sound morals of society.” This is the low bar in patenting, guys. This step is the easy step. Like you can claim that your invention is useful.

This is a patented invention called the bird diaper, and it’s exactly what it seems like. And it is an issue patent. So the utility requirement is low. Novelty. So it must be new, demonstrably different from what’s, publicly available. And again, this is, judged in reference to all prior art. And this comes in two flavors anticipation, where one prior patent application covers all of the claims of your existing patent.

Of you’re new patent application or they can combine other patent applications, previous applications or issued applications that says, no, you know, your application really is just a combination of these prior to inventions, and it lacks novelty for that reason. So non-obviousness this is probably the more difficult one or the most difficult one. The highest bar of these three requirements on the invention can’t be obvious to a person having ordinary skill in the art.

So this is difficult. This is not we have pizza at Pizza Hut. That’s pretty obvious. That’s not the kind of obvious we’re talking about. We’re really talking about, more careful analysis. And one way the courts will test for this is the teaching suggestion motivation test. Was your invention taught by prior art? Was it suggested by prior art, or was it motivated by prior art?

And if the answer is yes to any of those, then the application might be rejected. So this one is a toughie. But let’s go back to the bird diaper. If you like. Have a bird diaper. You can make a washable bird diaper. Like that’s going to be an obvious improvement to anybody who’s ever used the bird diaper, right?

And so that’s going to be, that’s going to be obvious in the eyes of the patent office, and you’re going to be rejected. So we’ve talked about a lot of different things, and we’re all the way down here at the end of the, difficulty to obtain continuum. And so, you know, there’s a real, question sometimes about how to approach these patent applications.

And that’s where we come in. That’s where the Office of Commercialization comes in to help you. I’m going to skip over this example. And those of you who recognize this image just put a ha ha in the chat box. So we’re here to help assess whether all of this undertaking is worth it with respect to some particular research outcome that you’ve identified in your lab.

So is it patent worthy? That’s what we’re here to help, figure out. So we identify new technologies, we help protect innovations. We make these investments generally upfront, to file provisional applications to bias that year to continue to talk about the work. And then we look for third party licensees during that time.

At the time of conversion, we’re looking to have a third party licensee in place so that they can assume those patent costs as part of their business operation. So we like to come in as early as possible to help you with your inventions and discoveries. Because timing is so critical, with respect to commercialization. So come to us early, come to us often.

We’re here as a resource. And each of you, no matter what department you’re in, you have a specific person on my team that’s assigned to your work. And so if you come knocking on our door, it’s not just going to be some generalist random person. We try to tailor the expertise within the office to the needs of our institution, and we work with business development, officers around the university.

We work with college development, we work with WSU Communications, to Extension, Corporate and Foundation Relations, economic development, and the Office of Research Support Operations. So, you know, the important part of this is kind of a busy slide. But the important part of this is that, you know, we’ve got invention assessment, patent market license. That’s kind of the general flow of these things.

And we are here to help throughout this continuum. We can do a lot of different things with our license agreements. We can license know how even that’s not that maybe doesn’t rise to the level of patent eligibility. And licenses can be exclusive or they can be non-exclusive, depending on what, technical area the invention is.

We can define them by field of view. So say the invention is good for two users or five users. We could have a couple of different companies take up those individual uses to commercialize. And again, the ultimate goal is to get the technology that you invent in your laboratories into the hands of the people who it can benefit.

So this is just a reminder that this is not a simple process. It can be really difficult and it can feel, like a really long time. But there is success to be had, through this process. So I know that there are a couple of questions here in the chat. So let me just take one moment to answer the questions.

How much are the filing fees? So typically for us to file a provisional application, we budget between 3 and $5000. We file those using an internal, group that, in my team of patent attorneys who write the applications themselves and get those submitted, and then when we go to convert it, that’s when the real expense comes.

So we filed a provisional application that buys you a year to continue to work on it and to maybe talk about it at a conference or to maybe published on it. And then when that year is over, then we have to convert it into a utility application. That’s where the real expense comes. And it’s usually not the fees from the patent office.

It’s the, the fees from the attorneys for preparing those applications, because at that stage, we hire the work out to, third party independent counsel. So it can be very expensive in the long run. Each patent, I mean, can cost $60,000, could cost $160,000, depending on how fraught the prosecution or the examination is with the Patent Office, the back and forth is with the Patent Office.

And how much are the maintenance fees? You can look at all of this online. The maintenance fees are fixed, but they do go up sometimes you know, like every five years or so, they’ll raise the maintenance fees a little bit. But it’s not like, it’s not crazy. The main expense is not those filing fees and those maintenance fees, but rather the preparation that goes into creating the patent application itself so that it actually describes adequately the invention that we’re trying to protect.

Okay. Okay. Great. I don’t see any other questions. And so barring any other questions, I’ll just start my screen share

Thanks for your presentation, Jeremy. There was a lot of, good information. Yeah, absolutely. My pleasure. And don’t hesitate to, reach out to me. I am available, even though my schedule is a little bit crazy. But if you send me an email, I will get back to you, and I’ll connect you with the person in your area who’s, you know, relevantly going to be able to understand your questions.

And I’m. Yeah, I’m really happy to be here today, and I’m really happy to help you, into the future. So I look forward to seeing each of you listed as an inventor on an invention disclosure in the future.