SC333 Intellectual Property: Bringing Academic Invention to the Market
Monday, May 17, 2010
1:30 p.m.–5:30 p.m.
Nadya Reingand; CeLight, Inc., USA
Level: Beginner (no background or minimal training is necessary to understand course material)
Course Description
This course equips attendees with key working skills crucial to achieve commercial success for an academic invention. In particular, the course covers patent ownership depending on the type of research funding, types of agreements in industry-sponsored research, government rights in federal contracts, as well as inventor’s reward in academia. Special attention is given to certain distinctions in intellectual property laws in various countries, limitations in the material publication prior to European (and some other non-US) patent filing. This is important due to the growth of international cooperation, outsourcing and the multi-national character of companies.
The course helps inventors in scheduling their work with inventions. The first step, prior to patenting, includes identification of the invention novelty via prior art searching. The course provides tools and techniques of the efficient prior art searching to clarify the novelty of the invention. It is followed by a business valuation. In case the invention shows potential novelty and business value, the inventor may proceed with patenting. The course teaches what to file as a patent and how to make it moneywise. Differences in US and European patent laws are highlighted. The course addresses efficient ways to deal with university Technology Transfer Offices and further patent licensing or start-up formation.
The course provides up-to-date information on significant changes in intellectual property prosecution over the past few years, such as the advent of electronic submission and procedures for accelerated examination. The course teaches optimization of intellectual property strategy, including patent families, continuations and a newly introduced practice of how to get a patent issued within 12 months from filing. This course analyzes differences and common features in university and industrial intellectual property strategies and the ways to profit from those differences.
Benefits and Learning Objectives
This course should enable you to:
- Identify your rights in inventions made in academia.
- Make decisions about the timing for open publication and/or patenting.
- Learn how to file and prosecute patent applications efficiently.
- Accelerate your patent's granting.
- Learn the differences in patent law in various countries and restrictions in material open publication.
- Maximize the outcome of your invention by patent licensing or start-up formation.
- Optimize intellectual property strategy to occupy a larger market niche.
Intended Audience
The target audience includes the academic scientific and engineering community as well as industrial partners working on joint projects with universities. Scientists and researchers in all disciplines across science and engineering and advanced undergraduate and graduate level students may learn about intellectual property basics and the specifics of university inventing.
Biography
Dr. Nadya Reingand is an Intellectual Property Counsel at CeLight, Inc. Dr. Reingand has over 10 years of experience in patent filing and prosecution; she has been a part of the USPTO team of frontiers that assists the PT Office with the electronic filing system. Other interests and experience include planning new businesses, technology development and investment projections basing on the patent portfolio analysis. Prior to switching to a legal career, she worked in photonics, defended her doctorate in holography, and authored more than 70 scientific papers.