TheOTD Seminar Series on Commercializing …

The OTD Seminar Series on Commercializing Biomedical

Technology

An Introduction to Patents

September 21, 2016 Frank Grassler, J.D. VP For Technology Development

Who Are We?

? The Office for Technology Development ("OTD") promotes the research enterprise at UT Southwestern Medical Center by commercializing biomedical and clinical research results in order to bring medicine to many.

? We manage UT Southwestern's:

? Disclosed Inventions ? Patents ? Licenses ? Startup company initiatives ? Cooperative Research Agreements

Our Goals

? To initiate and sustain cooperation between UT Southwestern and the biomedical industry so as to advance new technologies and therapies for the benefit of society;

? To provide our faculty with strategic & legal guidance to effectively manage intellectual property developed on campus;

? To generate revenue for UT Southwestern and our inventors, in order to support the research enterprise; and

? To facilitate the growth of the North Texas biomedical industry.

What Is Intellectual Property?

? Intellectual property (IP) is a generic term for intangible property rights that are the result of intellectual effort. Patents, copyrights, trademarks and trade secrets are the main categories of IP rights.

? At UT Southwestern, IP most frequently refers to inventions in general, and to patentable inventions in particular.

What Is a Patent?

What Is a Patent?

? It's an agreement between the US government and the inventor.

? They agree to an exchange:

? The US gives the inventor the exclusive right to benefit from their invention for a period of years.

? In exchange, the inventor discloses to the public the knowledge of what the invention is, how to make it, and how to use it.

Patents and the Constitution

? The US Constitution empowers Congress to secure exclusionary rights to inventors for their inventions for a limited period of time.

? Although the inventor receives an exclusionary right, they don't automatically have the right to commercialize their own invention because someone else may already have an earlier, broader exclusionary right.

Patents-Key Characteristics

? Limited Territory-A US patent has no power outside of the US. Likewise, no foreign nation's patent has any power outside of that nation, and therefore has no power in the US.

? Property Rights-A patent can be bought, sold, assigned, given as a gift, willed to heirs, and used as collateral for a loan.

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