IP Generation and Management: an Inventor's View

This course will provide students with a comprehensive overview of the generation and management of intellectual property. Topics covered include the definition of a patent, an overview of intellectual property law, filing a patent with the USPTO, and various business aspects of managing and enforcing patents. This course is intended for engineering graduate students as well as upper-level engineering undergraduates. It may also be suitable for some students outside of engineering.

ECE59500

Credit Hours:

3

Learning Objective:

  1. Explain to non-experts the differences between various Intellectual Property categories and terminologies including Patents, Trademarks, Service Marks, Trade Secrets, Copyrights, and Know-Hows.
  2. Secure management approvals for filing your inventions with the United States Patents and Trademark office (USPTO), develop responses to overcome patent examiner's objections, and finally successfully securing Intellectual Property.
  3. Explain attributes and application landscape of Intellectual Property Life Cycle for internal offerings, licensing In-and Out opportunities, infringements, and associated risks and rewards.
  4. Discuss strategic pathways to execute Non-Disclosure Agreements (NDAs), Confidential Disclosure Agreements (CDAs), and Joint Development Agreements (JDAs) as these relate to work for hire and collaborative research and development.
  5. Apply knowledge of critical enablers and barriers to successfully secure intellectual property in your own area of interest at workplace.

Description:

This course will provide students with a comprehensive overview of the generation and management of intellectual property. Lectures will include these topics: What is Intellectual Property - Basics What is a Patent?, How a Patent is Structured and its Associated Contents, Wallpaper vs. Masterpiece, Documenting Your Idea in and Invention Disclosure, What is a Trademark?, What is Copyright?, Contracts and IP Leveraging IP to Achieve Business Objectives, IP Value Creation Process, Risks and Counter Measures, IP Infringement, Joint Development Agreement Addressing Inventorship Issues During Collaborations, Enforcing Your Patents for Fun and Profit...The Business Case, Role in Innovation for IP Generation, Developing Enablers for IP Generation & Commercialization, Developing Enablers While Addressing Barriers for IP Generation Enablers, Barriers and Mitigation Strategies for Industry/University Collaborative Research, University/Industry Interaction Model: Nanocollaborative Example, and Addressing Partner Data Security Team Empowerment Leading to IP Generation and Commercialization. 

This course is intended for engineering graduate students and upper-level engineering undergraduates.

Will have guest lecturers periodically throughout the course from industry leadership (e.g. IBM, Raytheon, ANSYS, Ericsson, Dow Corning, Wacker Silicones, Corning, --) on their IP generation and management processes. We will provide a WebEx link for the live sessions. We will record these sessions and then upload with captions in Brightspace. This is so the students can watch or refer back to at a later time.

Topics Covered:

Module Title Topics

Lecture 1

What is Intellectual Property - Basics
  • Patents
  • Trade Secrets
  • Know-How
  • Copyrights
  • Trademarks
  • Key Policies on Handling IP

Lecture 2

Module 1-5

What is a Patent?
  • Lecture Part 1 Video
    • Module 1 
      • Course introduction and Instructor's Profile
    • Module 2 
      • What is a Patent?
  • Lecture Part 2 Video
    • Module 3
      • What is an Invention?
    • Module 4
      • What is a Patenting Process?

Lecture 3

How a Patent is Structured and its Associated Contents
  • How is a patent structured?
  • Show content details of a US Patent
  • Corporate incentives for inventions and innovation

Lecture 4

Wallpaper vs. Masterpiece
  • Wallpaper and Masterpiece Value Differences
  • What are the attributes of a masterpiece patent?
  • Why not create all masterpieces?

Lecture 5

Documenting Your Idea in an Invention Disclosure
  • What is an ID?
  • ID Writing Tips
  • ID Writing Steps
  • What is a Technology Assessment Panel? (TAP)

Lecture 6

What is a Trademark?
  • Introduction to Trademarks
  • Trademark, Registration and Purpose
  • Difference between Trademarks, Trade Dresses, and Trade Names
  • Selecting and Clearing a Trademark
  • Trademark Protection and Infringement
  • Care and Maintenance of Trademarks
  • Loss of Trademarks, Rights and Avoiding Genericide

Lecture 7

What is a Copyright?
  • What is Copyright Basics
  • What is Copyright Registry Information
  • What is Work for Hire?
  • Protected and Unprotected Copyrights
  • What Rights are Granted Under Copyright
  • Validity Term for Copyright Protection
  • Copyright Infringement, Notice Elements, Enforcement, and Fair Use Defenses

Lecture 8

Module 1-3

Contracts and IP
  • Module 1
    • Intellectual Properties Life Cycle Stages
  • Module 2
    • Agreements Including Confidentiality Terms
  • Module 3
    • Agreements Including Terms for Third Party Engagement

Lecture 9

Module 4-5

Contracts and IP (continued)
  • Module 4
    • Agreements for Sponsored Research Merger and Acquisitions
  • Module 5
    • Contract Terms for Indemnification

Lecture 10

Module 1-2

Leveraging IP to Achieve Business Objectives
  • Module 1
    • Types of IP that has Business Value
    • Value and Composition of IP, Components of S and P 500 Market value
    • IP Life Cycle and Value Creation
    • Ways to Extract the Value from Innovation and Associated IP Portfolio
  • Module 2
    • What is Business Strategy and Competitive Landscape
    • Obtaining IP Rights for Quality vs. Quantity
    • Managing IP Assets
    • Products and Services that Drive Higher Margins
    • IP Monetization and Enforcement, Offenses and Defenses

Lecture 11

IP Value Creation Process, Risks and Counter Measures
  • What are Licenses and Assignments?
  • What are Some of the Processes to Leverage Value Creation
  • What are Some of the Risks and How do Corporations Deal with Them?

Lecture 12

Module 1-4

IP Infringement
  • Module 1
    • What are Trademarks, Service Marks, and Trade Dresses?
    • What is Trademark Infringement?
    • Remedies for Trademark Infringements
  • Module 2
    • What are Trade Secrets?
    • Misappropriation of Trade Secrets
    • Remedies for Trade Secrets Misappropriation
  • Module 3
    • Copyright Basics, Infringement, and Remedies
  • Module4
    • Practical Considerations for IP Enforcement
    • A Word on Patent Enforcement

Lecture 13

Module 5-7
  • Module 5
    • Utilities Patent Infringement and Remedies
  • Module 6
    • Design Patents Infringement and Remedies
  • Module 7
    • Practical Considerations for IP Enforcement
    • A Word on Patent Enforcement

Lecture 14

Modules 1-3

Joint Development Agreement
  • Module 1
    • Why do Businesses Want to Partner/Collaborate?
    • Who will Own/Control/Have Access to the Newly Developed {foreground IP}?
    • What Pre-existing IP's (background IP) Needs to be Used/Licensed?
  • Module 2
    • Finding and Engaging a Potential Development Partner
    • How to Deal With IP Terms in Joint Development and What Background and Foreground IP Need to be Brought on the Table
    • Pitfalls are Default Rules of Joint Development Agreements (Absence Contractual Agreement Otherwise)
  • Module 3
    • Ownership/Control/Licensing of Background IP Under Joint Development Agreements
    • Examples of IP Terms in Joint Development Agreements, Responsibilities for Protecting IP Created Under Joint Development Agreements
    • Contemplating the Exit Strategy

Lecture 15

Addressing Inventorship Issues During Collaborations
  • Contrasting Missions and Cultures
  • Conflicting Values - Common Interest
  • Bayh-Doyle Act for Federally Funded Research
  • Potential Distractions in Collaborative Settings
  • Ways to Avoid Problems for a Win-Win Outcome

Lecture 16

Enforcing Your Patents for Fun and Profit...The Business Case
  • Patent Enforcement Basics: Proving Infringement and Remedies
  • Patent Enforcement Basics: In the US and Outside the US
  • Building a Business Case and Developing an Enforcement Strategy: Risks and Rewards

Lecture 17

Role in Innovation for IP Generation
  • Difference Between Open Innovation and Closed Innovation
  • Open Innovation Categories, Brokers, and their Business Models
  • Technology Trends Impact on Research and Development in Businesses

Lecture 18

Developing Enablers for IP Generation & Commercialization
  • Role of Global Trends for R&D Investments Leading to IP Generation
  • The "Valley of Death" for IP Generation and Commercialization

Lecture 19

Developing Enablers Wile Addressing Barriers for IP Generation
  • Enablers to Cross the "Valley of Death" for IP Commercialization
  • Role of Boundary Spanners and Soft Skills to Generate IP Leading to Innovation

Lecture 20

Enablers, Barriers and Mitigation Strategies for Industry/University Collaborative Research
  • Motivational Factors for University Industry Collaborative Innovation
  • Selecting and Executing Partnership Strategies for Efficiency and Effectiveness
  • Challenges, Tensions & Mitigation Strategies

Lecture 21

University Industry Interaction Model: Nanocollaborative Example
  • University Industry Interaction Model: Nanocollaborative Example

Lecture 22

Addressing Partner Data Security
  • Addressing Partner Data Security Withing Your Organization
  • Processes for Receiving Customer/Partner Confidential Information
    • Attributes of Gatekeeping Process and Best Practices
  • Role of a Gatekeeper for Incoming and Outgoing Confidential Information

Lecture 23

Modules 1-2

Team Empowerment Leading to IP Generation and Commercialization
  • Module 1
    • The Teams Collaborative Concept
    • Addressing Critical Business Problems While Generating IP via Teams Collaborative
    • Share Some Examples of Personal Participation and Leadership of Formal Teams
  • Module 2
    • Creating Collaborative Team Environment (things to do)
    • Avoiding Competitive Team Environment (things not to do)

 

Prerequisites:

Have at least 2 years of undergraduate work.

Applied / Theory:

10/90

Web Address:

https://purdue.brightspace.com

Homework:

7-10 assignments with 1 group assignment 

Exams:

3 Exams, no proctoring 

Textbooks:

None.  PDFs will be provided to the students to accompany each lecture.

 

Instructor(s)

Santokh Badesha

Email
sbadesha@purdue.edu