Pleasure to use our special guest for
this but when Bush

got his bachelor's degree from
North Carolina at Chapel Hill and

the masters at Princeton University and
I guess what the president

decided he didn't want to go on to get his
doctorate and go to grad school anymore.

So he went back to
North Carolina to get his

law degree working and
he was a Johnson scholar Well you had to

trade with the firm to pick Stockton which
has its main offices here in Atlanta but

Clint is based in Charlotte North Carolina
and his specialty there as

a transitional technology so highly
agreed to come and talk to us today.

Something that we generally don't have
discussed in this forum and that is

issues of property the analogy transfer
as it applies to you so it's very much.

OK because if they don't.

Today we're going to talk about
today as David said it is the aspect

of technology transfer which is
the commercialization of nanotechnology in

some respects a lot of that relates to
life for property because a lot of its

core slicer patents and also depends to
cover the products you're commercialized.

But I want to get a feel for

how many people before it began have any
involvement with technology transfer or

the patent process or anything like
that just by raising hands when

I thought it was going to begin just
my contact information if you ever

guys have have a question about patents or
anything like that you can e-mail me

at that address or you can call my office
which is in Charlotte it sometime.

Three three eight five zero two one.

So given overview of what we're going
to talk about today we're going to do

an overview of technology transfer which
is sort of a buzz word there's a lot of

different ways to define the term and what
it means but we'll try to give it a pretty

clear definition so you guys know what
it is when you hear it importance of

technology transfer in another buzzword
you hear a lot is intellectual property.

What does that mean there's various types
of been a lot of property protection and

what's most relevant to you guys is
probably the patents which will get into

the patent basics what is
the patent what can be patented and

how does the process work.

One of the most important things.

We'll talk about today is
the statutory bars the patent

ability both here in the U.S.
and also abroad.

So we'll let you know what are good things
to do when you invent something what

are the things you do not want to do
when you invent something at least from

a patent perspective.

So that's really where we're going to go.

Starting with technology transfer there
like I said there's a lot of different

ways to find this term but
here's a just a general one that I came up

with is the process of capturing
discoveries innovations in the lab which

is what you guys are doing and
then trains laying those discoveries and

innovations into for
the benefit benefit society where that's

medical applications into industry
applications whatever it's just a general

way to say we're going to take what's
done in the lab that's innovative and

discovered and
then make it useful to society and

what most universities have done and also
research institutes you have a technology

transfer office this responsible for
that link between you guys in the lab and

the industry sort of commercial products
out that you'll see in the marketplace.

So we here take transfer office.

That's what they mean you're going to help
you facilitate what's done in the lab and

translate that into a commercial
product or some benefit of society.

Technology transfer is
most probably prevalent

in universities research institutes and
hospitals because.

Most of the research is being done to
be transferred major industry Corp and

they usually have their internal
departments where there isn't any transfer

there to commercialize
what they make internally.

So this may be mainly applies to places
like Georgia Tech other hospitals and

research institutes and so big deal.

Forty two point three billion was
provided to universities research and

to some hospitals last year for
research funding and

sixty seven percent of this value was
provided by the federal government that's

an important distinction from where
the money comes from as we'll see it later

when we talk about the buy don't act which
gives the federal government certain

rights and inventions that come from
federally funded research grants.

Prior to nine hundred eighty.

This is when we get into the federal
government's involvement in inventions

prior to nine hundred eighty
inventions conceived and

developed with federal funds for
owned by the federal government.

That's not the best idea.

And as you may know why that might be
a good idea to have the federal government

own your invention could be commercialised
the government responsible for

evaluating patenting and
commercializing these inventions and

you know in some respects the federal
government doesn't do the best job.

At being efficient in
taking what's great and

translating into what could be
great commercially or for society.

And the results of this prior to this
government handling everything was

the University of Technology was not being
efficiently transfer there's no incentive

present for the inventors invent then
it goes to the federal government and

you're just you're just there and you
don't have anything any more connection

to it other than your name will be on the
patent as an inventor in one thousand nine

hundred eighty the federal government
held twenty eight thousand patents

less than five percent
are licensed industry for

commercial products that's pretty bad
in seeing how many are out there and

very inefficient process nine
hundred eighty what happens.

Baidoa lacked went to change all this.

They said this is not
an exceptional situation.

What's going on with the patents
coming out of universities and

research institutes.

So what they did was that said OK we're
going to allow the university to retain

title in invention.

If the university research institute or
hospital satisfy certain requirements.

So we say title an invention that means
you own the invention and the title is not

transferred such similar to the title to
a car title to house with a mortgage.

It's a show of ownership that you have so
the university will own the invention for

everybody and here will probably happen as
you invent something allow us to execute

an assignment document which says OK I'm
then dinner I assign all my rights and

interest in this invention anything
stemming from this invention to

Georgia Tech and whatever else is asked
in the that you're going to science so

that made a fundamental change in the way
things were done at the university and

Research Institute level
with regard to patents and

other I feel like copyrights and
trademarks but

we're going to develop it later the
requirements the universities had to give

an order to receive Title and then
pension with it was funded by government

funds was the federal government
gets paid out non-exclusive license.

So what that means is basically the
federal government gets to practice your

invention for free.

It's not an exclusive license so
you can license other people but

the federal government will be able
to use whatever you've done for

free because essentially they paid for
to pay for part of it.

That's the major cause and you'll see that
in the patent documents self when the US

patent you have a form but
a federal license rights clause and

they're saying this The federal
government may have license rights and

this invention is just a notice to other
people that this has been developed with

federal funds the requirement is you
have to pursue patent commercialization

of the invention and there reporting
requirements associated with all these.

To make sure you're going forward
by certain timetables you

have to meet in order to retain title.

If you miss these reporting requirements
stand that government can come in and

exercise their right in
taking take interest or

take the whole title of invention.

Another good thing that came out of
the bottle Act is that shares a portion

of the new revenue you receive from
the licensing of the invention with

the inventor certain benchmarks that you
guys will be able to get as an inventor

corresponded to how much or how successful
the commercialization of the product is.

Those benchmarks can bury it's beyond the
scope of what we're going to talk about

today but it's important to know that
the act they went through Congress and

is now law gives recognized
inventors contribution and

wants to make sure that they get
a piece of the pie in the event that

even marginally successful Another
one is you give licensing preference

to small companies because they want
to foster new development new business

out of this new companies new jobs in
the fifth one would be it requires that

the product be substantially
manufactured in United States.

So you're not going to invent and
then retain title and then manufacture

in a foreign jurisdiction they want to
make sure that it stays within the U.S.

in these are the results coming out
after the World in two thousand and

five you see the disparity between what
was going on with federal government and

what's going on now you have
over seventeen thousand and

ten disclosures received by US
universities research institutes and

hospitals in the year two thousand and
five.

That's a lot.

It's quite a lot of research going
on over ten thousand two hundred

seventy new patent applications
were filed by US universities and

hospitals in two thousand and
five which is which is even then

the interest gives an incentive to
want to follow the patent rather than

letting the federal government say
hey we think this is a good idea.

No we don't think this is a good idea.

We're not going to patent disrupt the
university at this point determine who or

what programs they think they are and what
animal material they think is worth going

forward with in two thousand and
five use you.

Universities have over thirty
two hundred patents issued and

they retain title in those patents.

So you see a number of closures being
taken an applications being filed and

actually patents issuing you
can foster new business.

And you have this is
the result of over forty

nine hundred license option agreements
executed in two thousand and five.

So you were starting to see what's going
on in the translating over into what's

going on the commercial marketplace six
hundred twenty and you start companies

based on a license from an academic
institution in two thousand and five.

So you have all these new
companies coming out.

Mind you that prior to this there were
no very little very few companies

coming out because the federal government
had all of the license rights and

all the rights and then it's
responsible for the transfer since

one thousand eight has come up with thirty
six hundred new commercial products.

So you can see that the act.

Had its intention and its intended effect
take what's going on in the lab and

translate into commercial market.

The importance of technology
transfer especially for

nanotech this is regard to patents how
many patents issued per decade for

a decade with the claim to have a claim
with the term nano when it can be

a little bit misleading but for example in
one thousand seven hundred seventy nine.

Yet for patents issue.

They had claims they had the term and when
I say claims the document is a disclosure.

Tell us what you did how to making use
invention at the very end you have what

you call a claim in the claim delineates
what rights you have in your invention.

So if it were there are some examples
of claims that we have later on in

the talk but just give me an idea
what a claim is it's just claiming

what you have so it's kind of a matter
like you'd need a crystal or it would be.

For example a composition
comprising fabricated from

twenty six to six and that would be
a claim and you would have rights to that.

So for nine hundred seventy nine hundred
seventy nine pounds came back with

Nano but the term Nano was used as
a nano second which isn't really

a nano piece and they had a technology
really down to to there you can see

it was maybe about an order of
magnitude each year two thousand.

Right now we have eleven
hundred ninety cents

the year two thousand
with Nano on the claim.

So you're seeing it.

Build.

Contrast that with micro
technology by a decade.

So I should have gone back a little bit
further nine hundred seventy nine hundred

seventy nine thousand and ten pounds
already this with micro in the claims

then you go to eight hundred eighty nine
two thousand three hundred twenty two and

around sixty seven hundred and

then you're just over nine
thousand two thousand to present.

So you can see micro the micro field
micro technology field has been well

developed from the patent filings
having the term micro in the claims and

that's what's most likely to happen
with nano technology now you're starting

to see that as the technology emerges to
characterize this material as what you do

here develop more and
smaller smaller scale on the nano scale.

You'll see the pattern Fons
increase which is important for

what's going on here because you have
a chance to get to the bottom level

of an emerging field and
as we'll see later.

There earlier you get in from a patent
perspective the broader rights

you can lock up in that if
you increase you can license

more you have a broader field of
protection and more people are interested

in taking on what you've already done
from a licensing revenue perspective.

So just go back to that eleven
ninety you are at right now.

So we're maybe.

Three decades behind where
micro technology was.

So we have a lot to go some to think about
that you guys are on the cutting edge of

what's going on not only in
the research and research field but

it's also in the patent field as well.

So if you could see if I was talking
with David earlier if you really came

from my recollection with the carbon
nanotube in the form suggested So that was

in the late eighty's early ninety's were
only maybe twenty years removed from that.

In the characterization technology
keeps getting better and better.

I think we'll continue to see
this will eventually go up

to nine thousand ten thousand as we move
forward in the next couple of decades.

Getting into the types of
intellectual property here

where base is all intellectual property
what is I mean basically I mean for

things you have patents which I think
everybody knows about there are a document

that accords rights and composition or
method that you have made and

it protects innovation which is
when you compositions and methods

you have trademarks which everybody
associates with the brand or source.

So it's a trademark you hear a name
you associate a product with it.

That's the purpose of trademark
is to associate certain

names with certain products copyrights
which are more literary works but

also can be things a software code and
tangible

media and then you have trade secrets
which is an interesting area of law.

It can cover anything you can
cover composition like Coke for

example or K.F.C. has a trade secret on
their formula so they don't want anybody

to see that because yeah if you
look at the amount of protection.

Yeah trade secrets forever.

As long as it's secret once it's out and
everybody knows about it and

you've lost protections that you have
a composition of matter your holding

is a trade secret or a method of
producing a composition of matter you

could hold as a trade secret and
then someone.

Like you describe an employee.

It's out you have rights against them but
once the composition is out you can't

go back and say OK I'm the patents now
you've lost all your rights to that.

So it's a very dangerous area trade secret

people go to great lengths to protect them
and there's a lot of litigation about it.

So imagine I think maybe
you couple summers ago

they had a Coke employee that was going to
hold a secret had access or something and

it's a it's a major major issue.

So for patents you have up to
twenty years for protection.

That's from the data filing so if you
filed today you would have about twenty

years protection on your
invention after that is a quid pro

quo which the government will
give you the protection but

after that if they can practice your
invention trademarks is also forever.

Based on use if you don't use anymore
what they say well rights and

there's a lot there's a funny
cartoon that deals with trademarks

It's called genericized is what they call
it because they and people don't want

their trademarks to be generic an example
that is Band-Aid that was a trademark it

still is but you don't want people using
your trademark to say whatever products.

I just need a Band-Aid media bandish that
loses its meaning you're not associated.

Band-Aid with mandate brain damage is
you're just saying I want to be a bandage.

And that can be you can lose rights
there because once it becomes generic

like the escalator was
a trademark now it's canary

when your trademark goes into
the dictionary as meaning what it

is like a bandaid me a bandage
I mean it's generic and

it no longer has the ability to associate
that word with a brand or source.

So it's no longer going to be
enforceable forceful against

people which is interesting.

I was a little side here since we're doing
most mostly patents copyrights is just

wife of the author plus fifty years and
we went through trade secrets.

So those are your main There's
are the four types of intellect.

Property protection so when people say IP
You know it's patent trademark copyright

trade secret so
begin to take a look at it and

since that's mostly going to
cover what you guys do here.

What is a path.

It's a legal document by the U.S.
government also foreign

governments issue their own bands
in their own jurisdictions.

So now if you have the U.S. you have the
European countries out there and basically

every country has its own band system and
it's all done by different standards but

they're trying to normalize that now
talk a little bit about that one of

the interesting things that I learned
when I went to law school but I did not

know before I went there when I thought
of patent I thought well that gives me

the right to make something that's not
the case that gives me a right to exclude

others from doing what I've done so you
can have the right to make it used to have

the right to exclude other people from
doing it which can be a very dangerous.

Right because there's no affirmative
duty in the United States

like to pay in other countries to
actually practice your invention.

If you don't practice
in those jurisdictions.

You can actually use your
patent in the United States.

Once you get a patent it's yours.

If you want to practice it or if you don't
want to practice it that's up to you and

you can exclude others from practicing and
one of the dangers of that is if you can

imagine if someone got
a very broad patent like

house we were talking earlier expressed
sequence tags on pending proteins.

Once that pattern comes down.

That's going to prevent on that protein
that's going to prevent others from

actually using that
protein without a license.

So you can reach really
stop research in its tracks

by having a patent that no one's
practicing or refusing to license.

So it's really can be very dangerous to
have that provision where you don't have

to actually do what you covering and
again the patent term is twenty years.

There's also things called design patents
which essentially cover features.

It's like a trade dress if you
had a Tupperware container for

example the shape that you wanted
to protect you could follow design

pattern which is basically just
the picture of what it looks like and

there's various design patterns one of the
more humorous ones I've seen were design

patterns on stuff like that which is
interesting but those are less important.

So they're not less important.

They have less protection
it's only fourteen years and

she wants the normal twenty.

Some of the uses that
we have are to exclude

others you get a competitive advantage
I have this pattern in this area.

I want to exclude others from doing that.

I want everybody come to me to buy
the product because I'm the one that has

a patent on it and the industry that has
the most I guess that comes out the most

is a big pharma you have all these drugs
are patented and they're not going to

be shared with anybody else and that's why
you see a lot of fights with generics and

stuff like that other ones passive
discouragement which would mean

a lot of people read the patent literature
to say OK I'm going to go into this area.

What's out there that I need to know
about from a patent perspective because

I don't want to get down the road
to build a manufacturing facility

based on this product
we're going to me back.

Sure.
In all by the way.

Mike better as a patent on the one
hundred million dollars facility and

now we can't use it.

So people will read it and see that
someone else is already in that area to

stake their claim and
not go down into that area.

Another consideration is licensing you
can always derive money from the past and

a lot about is done with universities to
license the patent rights out to a company

you know pay you certain amounts of
money based on product the patent covers

certain benchmarks that are hit the fence
of mutually assured destruction defense.

We've seen that come up where better
A has a better B. has a patent.

They both can block each other and

they can say well if it's
a story gets be no one wins.

So that's that.

And that can lead to cross licensing
it enhances company value.

It's an asset.

When companies are sold
especially these days.

Everybody looks at the intellectual
property of what they have what do

they own what rights do they
have in this technology.

So it's a major part of a company now
especially like I said pharmaceuticals or

any industry heavy with intellectual
property that's covering their technology.

So they don't have it.

What value do you have because everybody
else can do essentially what you're

doing and it's reduces the value
the company if you don't have it.

It's a negotiation.

It's recognition for the publicity for
the company your university

here we have this great technology we've
got a patent on it and Ray can read it.

Everybody knows to come to us now
to deal with this technology.

So it's good.

From there and also for employee or
company morale because it's it's

an intangible asset you do get
the patent and with the cover and

has people's names on it you can you
can show it's something you can hold.

Well let's patentable is
an interesting area of law.

Usually it's new not obvious
useful subject matter.

But the bar is much lower
than people think but there's

an interesting dichotomy especially in the
biotech field or even in the technology

as well depending on what you're doing and
it virtually anything is patentable.

But certain scientific principles like
gravity or phenomena are not patentable.

Mathematical formulation to
explain those are not patentable.

But things like Purify
proteins are patentable.

Even though they do a cure and

current nature of the purified formulas
argued doesn't occur in nature.

So if you develop.

Protein that's a purified
form of one you see

that doesn't exist in nature which
I disagree with it is patentable.

But on the flip side of that
if you look at elements for

example to say you want to purify silicon
by flooding zone are you going to do it

the purified silicon is not
going to be patentable.

So there's a break in the wall
here we're biological inventions

in the purified form that do
not naturally occur in nature.

Our panel.
Whereas elemental forms of things and

other inorganic materials are not
patentable whether they're in

their natural state or in a purified for
and that has yet to be resolved.

Since the one nine hundred seventy S.

usually anything is
possible including methods.

A lot of people don't think about methods.

When they are doing everything
composition to have to have this cup

Here's my invention and
I can see it but that's not the case

there's methods of doing a say
methods of chromatography there's

there's all kinds of methods of business
methods methods of doing business.

If you can believe that.

So that's another aspect I think if you're
in the lab you say wow develop this great

protocol for making this material
had this various way to purify you

have a method of purification a method of
fabrication something like that it's not

just a composition you can have a totally
unpalatable composition but you can have

a totally patentable method because
it can be be a new way of doing it.

So that's something to think about when
you're in the lab looking at things.

It just doesn't have to be a composition
it can be a method as well.

This is one of the most important slides
here when we say what is patentable.

It has to be new and novel in
the United States you have a disclosure

on your your invention the say you
had made a breakthrough composition

published on it went to speak
about it at a conference and

then you say I forgot I
should have patented it.

So you have a one year grace period
to get that patent application that.

Or you're going to be barred on novelty.

But in one jurisdiction and
that is not the case

disclose that information whether
it be a talk submit the paper for

publication it will when the papers
published I want to submit it.

That's commune absolute
Now with your invention so

you'd lose all foreign rights if you did
not have a patent application on file with

any patent office in the world
including the US to go question.

It does it has the law on that is
the print it's a printed publication or

otherwise known by others and
yes web pages are a frustration for

me because It hasn't yet
it's not a web page so

that is that's a major thing so when
you're if you submitted a paper and it's

under confident confidentiality until it's
published make sure you look at the web

publication date that always predates
the actual physical journal publication

date because that's going to be when you
have to submit your application before.

But when I was in graduate
school I didn't know this.

So we'll give talks about
these things we did.

And later on.

Like what I was good idea
what we're going to do.

We've lost four rights we
can only do in the US.

So if you come across
something significant.

I always think well if I'm going to
publish this I'm going to lose all rights

unless I have some type of pattern
protection filed with the U.S.

Patent Office or
any other patent office in the world.

Hopefully by the U.S..

So that's a major consideration that
you want to think about before.

Just letting it go and going to
a conference or having the paper published

in the tech transfer office.

I don't know what the policy here is or
door to door but

you can fill out a disclosure I'm
sure you have and submit it and

say this is what we have let someone
evaluate it because once again the tech

transfer office is about doing it and
not the U.S.

government You're not get hung up with all
that stuff with the U.S. government's.

Much easier process to let people know
what you've done and still be able to

protect your foreign rights here we go not
disclose their publication like you said

that includes a website that includes in
the library that people have written for

their masters or P.H.D.
hears or in the senior thesis

doesn't matter what language it's in
it's not in public use for on sale.

That's another thing if you add
if you have an invention and

you want to sell it if you
have patent protection.

You have one year from the date of
offer of sale to file in the US but

in any foreign jurisdiction
you're completely done.

You know I should be able to
patent that and we're going

to see coming up the pan reform they're
going to reform the Patent Act.

It's in Congress right now.

And one of the issues on the table with
the Reform Act along with a lot of them

are are we going to reconcile U.S.
patent law with one patent law or

international patent law is going to say
we're going to be an absolute country as

well we're the only one believe that gives
us this one your grace period to file.

There may Taiwan may do it too.

I'm not sure Philippines does it.

OK so we may go to an absolute novelty
state in the first file system.

So that's another consideration
is international and for sure.

A station is first to file
it's not first and then.

So the first person in the Patent Office
is going to be the one that can be

accorded than in the US That's
not the case you have

a procedure where you can prove
that you're the person better but

that's not going to be that may
not be available very much longer.

So we'll see.
So

the key thing to take away from this is
before you give a talk before you publish

put a disclosure and protect transfer
office to make sure that everything

is covered because you don't want to have
a great billion dollar invention and then.

Well we can only fax in the US.

That's going to be terrible.

So just something to think about.

For Grant Yes for most for the most part
unless it can be published somewhere

and I sat for their Internet use that
would be considered not a publication.

But to be ultimately on the safe side.

You can find what will a lot of people
do is follow the provisional application

which is easy to do you just put the you
can take your proposal file the U.S.

Patent Office and

that will be considered holding your
life just what's in that proposal.

So if you're up against it.

I have to submit it Friday at five.

There's no time to get a planetary
look at this just file it

should take to get your take.

Transfer office tell him what's going on.

You can follow a provisional for
sixty dollars and

that will cover what's in
your in your proposal so

that is a good question
because it comes up a lot.

Steps in the patenting process
identify the patentable invention and

you document it which would be the
documentation to the tech transfer office.

Do you want to do a search file
a provisional like we just said based on

time considerations in
whether to decide to follow.

Do you want to do a trade secret is that
a method is something we just want to keep

here in Georgia Tech and

not let anybody else know about it because
it's easy to do easily trade secrets or

our methods because they are your
internal and no one can really see it.

Compositions are harder because it's going
to be on the marketplace people like to

reverse engineer things that's always a
consideration can someone reverse engineer

what you've done looking at
the composition to see what's there

you have a disclosure conference with
a patent attorney we draft application and

file it and then twenty three months later
you get the first examination report and

it takes about two and a half to four and
half years after filing to get an actual.

Patton if everything goes well
we've had some applications

in the biotechnology field in the software
field where you filed application and

you're eight years away from getting
a first examination report and

the kind of mistakes account for

that they're not going to clip your
patent term because of that but

it can take a long time
similar to the other stuff.

You were going about where we are talking
about the claims of the patent

are actually what give you rights
to assert against other people.

So if you have a claim that
has elements A B. and C. and

then someone has is seeing elements A and
B.

you can't search your patent because they
don't have each each and every element

in order and friends have to be doing each
and every element listed in the claims.

So that's an important thing to remember.

So if you're worried about it.

We don't do this elementary side of the
claims then you are likely to be outside

but you may want to consult
your tech transfer office or

patent attorney before you
make that determination.

This is what we're talking
about earlier earlier and

you feel generally garner a larger
scope than patents later so

if you think about claims SCO think about
offense and everything within your fans

is what you want in the larger
the fenced area the larger you want.

So I or you can keep people out.

So that's why I think about it.

So when you're early in
a field by nanotechnology or

certain aspects of the technology like.

Carbon nanotubes which has never
been done before you can get

a really broad scope of coverage
to exclude others where people

in order to practice their invention
have to license your invention or

license your patent that's a commonly
common mistake a lot of people make

is they think they don't have a patent on
their second automatically can do this.

That's not the case you can have a patent
that makes an improvement on someone.

Composition where if you
want to practice your path

you have to take a license from them.

So for example if someone had
a patent on elements A and

B. composition comprising a and B. you
know like we're going to be great if we

had an element C N N You got a patent that
said I have a composition comprising a B.

and C. you can't make a B. and C. unless
you license in the patent that covers

a and B. So it's kind of a weird
situation where you could have a patent

because someone else had
something broader than you.

So you simply you would be
overlapping with their fence.

This is an example of an application for

carbon nanotube which had in
the say form a substance to it and

also had a luminescent compound to it and
you can see here.

It's a very simple claim you haven't
made it to comprising a carbon which is

attaching the same substance and the same
form a substance is also linked to a label

compound capable of being you do still
luminesce if you look at a filing date.

It's March one thousand nine hundred six.

But the actual priority
date is ninety four.

I'm not going to go into
what a primary date is but

essentially I was there was conceived
in one thousand nine hundred four.

So that's a pretty broad claim which
is corresponds with nanotechnology

is still very early in
the early ninety's but

if you go ten years later
March twenty fourth.

This is a similar type claiming
corporation carbon into it was not

to want to say based compositions
to a field a mission

comes this was a little
it's a lot different.

Actually But you can see how many
limitations get put in ten years later

because there's so
much prior art out there in this field

that you have to carve out what you
have it's not already disclosed so

you get sort of very long claim to that
and I was ten years later then the.

One of the first ones saying here.

This is actually one claim
that prosecuting a wild

method of synthesizing Cloyd on an.

Crystals comprising can body
count on a precursor a leg and

non coronating solvent to form a complex

than an iron precursor with complex
timber sufficient for me and of course.

Every is probably lighthouse.

Which is what I thought so
that was in two thousand and one.

This is AROUND THE WORLD a lot of the
quantum dot stuff was coming out and so

that was that was pretty
broad claims there but

if you go in and
just what four years later.

Here's another method of doing
quantum dots we're going to deposit on

the substrate and you can see just the
difference two years makes the claim Skip

you're going to get this first claim
just a couple lines two steps and

this next claim is done by
a completely different process but

it's a lot more because the prior has
built up so much so that the point.

Going back to my first slide.

We're not.
The first one of the first sweeping of

nanotechnology patents because only
eleven ninety have been filed.

Contrast that with Microelectronics in the
same date we have over ten thousand being

filed you stand a very much better chance
of getting broader claims now in what

you're doing as opposed to later
on down the road were lot of prior

art has been generated so if you have
something you think is new right away.

It's good to go ahead and
start the pending

process rather than develop it
because you can get a large claims.

From that person is that I mean there's

a lot of different today.

That's one of the major points I want to
make to that is just always be vigilant of

what you're doing because you're still
relatively new to the patent field and

there's a lot of rights
to be gained out there so

always think about that when your
lab sad story bars the pad ability.

This is this is U.S. patent law
right here but it applies also into.

It doesn't apply to your stations but

the concepts are pretty
much the same you can't.

If it's patented or just described in
a printed publication or offer for

sale more than a year prior to filing your
application which we talked to earlier

you're not can be in the U.S.
and definitely not foreign because

the foreign at least in the US.

If you're if you commercialize
something for more than a year.

People have come to rely upon
its commercial availability

with no patent protection so

they don't want to people to be ten years
down the road say well we should go and

then everybody thinks it's not coming
behind them and get a patent on it and

that's just not the way it's going to
be allowed by the U.S. government and

this may all change because it may go to
the bar to where if you have anything you

don't have to disclose anything you
know how about when your grace period.

But never a consideration they want to do
at least in the US is allow a reasonable

time following a sale or
disclosure to see if we really want to

pass this is it worth going through
the extreme cost gaining it.

Just give you an idea about how
how much patents usually cost.

At a firm like ours we're looking at maybe

ten twelve thousand to
file an application.

In another fifteen to thirty to prosecute.

That's just us.

So if you wanted foreign
jurisdiction that's even more it's

hard to say how things are going for

the patent office is getting
extremely difficult to deal with now.

So it's going to take
even longer more money so

they want to Congress at this point.

So we want to see it gives people
a chance to see if it's actually viable.

If you publicly use your
invention in the U.S. you have

a year to file people like what is public
they had a case when the very early cases.

Defining public use was
a guy who invented.

Some type of undergarment
that people would wear but

no one when he was he had people wear
it without having a patent on it but

no one knew no one could see it but
the Supreme Court held and

that was because he used in a public place
although no one could see it was a non And

for me it was still a use none the less so
I think what it is not that

the requirement is there is no requirement
to see it or know what it is in order for

to be public use or commercially using
it in ordinary use of the scene or

practice of a process in the usual course
using articles for commercial purposes.

It would be a public use.

And it would stop you from being able to
have any type of patent rights to that

secret use secret and you're not going be
able to get a patent on trade secrets and

there was a case on this one.

They held held it as a trade secret
commercially exploited it and

then what happened.

Unfortunately to these guys is
someone developed the same process and

patented it.

And they came back and he said well
we've had this process for ten years but

we had a straight secret in the court
system to us that I'm sorry you had to

trade secret your competitor got a patent
on your process because they independently

developed it now you're going to take
a license from them to do your own patent.

So I mean so you don't process.

So that's always the danger of
becomes clear with trade secrets.

So it can happen and
it happened in this case.

And so there's simply done.

It's gone through that you sense this
is a good one experimental use is

a public use in the US and

in important jurisdictions to a limited
extent more Linux the US You're allowed to

use that experimentally to
see what's going on with it.

So if you have if you
want to run experiments.

So you developed a new road material.

I know that's not relevant to
the microelectronics center so

you develop new circuitry and
you want to see how it would be used.

You can do experiments with it
the other people can see and

verify without losing your patent rights.

I would recommend doing except to prove to
the Patent Office in foreign jurisdiction

that was experimental and
that wasn't a real disclosure.

But you're still a lot
of if you're not sure

about whether this is going to work or
not.

Don't be afraid to experiment with it
because you could go with the experiment

that will stop you from triggering
the running of the statutory period.

So it's kind of a point so

that was basically had a sort of people
glazed over about the patent process.

Anybody have any questions just generally
about patents generally about IP

technology what we're seeing in IP

that's a really good question.

It depends on if there's
a recent case law about with

University of California because
I think they are immune under

what they would cost sovereign immunity
from patent infringement suits.

So for example if a industry company
a private company developed a composition

that U.C. Berkeley wanted to use
in their lab to do something and

they didn't pay a license for
that or they developed it.

We're using it but the rights being
accorded a license rights from the private

industry the ability to

bring suit against the state of
California to stop to block patents.

So it's really not even a two way street
because University of California can sue

on their patents.

But they can use sovereign immunity
which means you can't sue the government

to block any private
industry from coming there.

That's going to be more of a stain.

And again.

The same thing with the federal government
the federal government generally cannot

be sued under very limited

statutes one is the Federal Tort Claims
Act Another one is you can see Congress

wrote in a provision under twenty
eight where you can sue for

patent infringement say the government
has a contract or a contract.

That was circuitry that was developed
here in Georgia that I want to see

the government and they can do that in
general you cannot sue the government.

So that's how that's
a very complex question.

So I

know you can't do that the way
that would be handled well I mean

the owner is going to be
inventors like you but if you

enter into an agreement with somebody that
says we are not going to hold you liable

for research that the patent itself
is just the right to exclude

others free and clear of any type
of provision allow you to put in

any type of indication of where we
will see where we were going to be.

Compositions and
other alternatives are compositions

to say you do it.

So it's more of a decision
of you can't you can't limit

the documents.

It's just a decision

that's going on in the computer software
which don't have the ability here

now with respect for.

Drug delivery or use them as
a place where you would take for

example the radio frequency radiation

you're seeing a lot of
patients right now things are

depends on what the composition
of the pharmaceutical.

Whether it's going to govern.

If they have.

Independent of any type of
binding arrangement but

you won't be able to use them.

But if the claim is related
to a certain age and

then if you don't use an engine you're
outside the scope of that claim.

So you would have to read it and
say well if it binds the engines in a for

example that doesn't make sense but
in a generic using engine be

any interface required by the claim
then you'd be outside my client.

You know

that's there.

Maybe I have to look it up.

I'm sort of going to put the water
thing here on the client cause of

the question to look it up.

I'm not sure I understand
what you're trying to say and

it very well may be I just don't
deal with a lot of that area.

Already

I do not but

I would imagine that it's
pretty much the same trend.

The trend upward.

I would imagine that was
a quick maybe we see you.

Any other country in the world
the Japanese especially.

Because

pretty much the same

from their search and
search their database.

So it's hard to search to see
exactly how many are out there

but it does for

us a conception and
either a conception or reduction of

transfer six months later down the street.

Weeks from now they filed
on the day you can see

what happened as you were going to.

Clear interference which means we
have to determine who first and

filling it out before they did so
what would happen is your application.

No it's like you go on a website
where anybody can access and

say then it's not going
to talk about money.

They do not know but don't put it

out how this happened to me
university patent rights.

Professor disclosure.

The title on his
publications on his website

because he had enough disclosure
there internationally and

then the one year period where you
have to be completely confidential.

So you don't want that I mean you could
probably get away with the title there

depending on how the script recommended

between when you conceive and
when you file.

There's two parts to the invention.

One is the actual conception which is
OK I understand this is what I have and

another one is actually in the practice
which means I actually made what I

what you're referring to there
is some sort of practice.

So you know how to fill
invention there and then so

much time between the conception and
actually.

That can be difficult to prove but
you can see something every once in a.

Just context because I'm going
to ask you about it and say well

you look at is one of them came
in asking for that can't happen.

Essentially for six months and
someone came through and

they could they could try to join you
to say we're not to let you do it.

That's usually the first step to
comes down from the court you want to

join the activity the damages
are going to be calculated on profits

from a commercial perspective so
if you go to research.

You're not just mean injunction against

litigation and prosecution and what that
means is I actually write the patents and

we usually do some searching of
the database in the search companies

they're usually a search

company to get an idea of what's out
there from the bad if it's a really.

Scholars out there.

The searches will be run and
one is that will stop me from getting

which includes general literature because

I want to write in this area to see
if my private discovered just to

see something that could potentially
interfere with what you're going to do.

Yeah that's a big deal in pharmaceuticals
and other things they requirement is

to file a valid to teach how to
make how to make the invention.

So you have to have a composition you have
to teach him how to make the conversation.

So for example disclosure.

He says these are these
are the real agents.

This is how we process to do it.

This is what comes out here
the characterization of the material.

If you're going to have
a treatment of a disease.

You're going to have data showing the
composition of pharmacy and specifically.

The composition itself which is
the drug method of high cholesterol.

Let's say a method of reducing the cost
of an individual comprising administering

a therapy in order to get that claim

is going to show that this actually works.

You're not going to get that treatment to
get the composition claim on its own it's

made it here it is
here's the data showing.

But actually as I'm in a bar I R
whatever you have stuff like that but

yeah you have to be able to
show one of your how to make if

if there's a hole in your disclosure where
no one knows what you're talking about.

It's not there and no one knows
how to make it from Step A to step

in subspecies missing in the pants down
for lack of an able man is what I call it.

So you've got to have it all in there and
that's you know

if he's going to turn your he or she has
a good turn to make sure that happens

now he's right.

He's talking about more
talk about polymorphs.

But you have more than
one question structure.

Yeah yeah you do.

Yeah you

can put it you know that's
a provisional Yeah you can get.

Yeah you can have a theoretical reduction
in practice recognize what you've done.

That's fine you can do that.

I mean you're allowed a certain number
of an opera so you have a compound

has a bunch of different groups on it.

There's certain if you
have a certain number and

we can make this happen in there that's
not going to such a high number.

You can't make the patent.