NSF Proposal Writing Workshop June 2019 Prior Art Searching

Gregory Sechrist Licensing Associate

Who we are:

The Office of Technology Commercialization exists to Understand, Catalyze, Support and Protect the intellectual property of Ole Miss employees. We also work with students and innovators in the Oxford community.

Much of the scholarly research conducted at the University of Mississippi has applications in the commercial sector. We help inventors realize and harness this potential. Commercialization rewards both the researcher and the University, and ultimately, benefits the larger public.

UNIVERSITY OF MISSISSIPPI © Disclaimer

This Is Not Legal Advice.

* I am not an attorney in the University of Mississippi Office of the General Counsel, nor am I legal counsel for the Office of Technology Commercialization or the University. I am not licensed to practice law in Mississippi and the information that I provide does not constitute legal advice or counsel.

UNIVERSITY OF MISSISSIPPI © NSF Clause on Intellectual Property Inventions made during NSF-assisted research are governed by the Foundation's standard Patent Rights clause which is invoked by article 21 of our Grant General Conditions published in the Grant Policy Guide. Normally, awardees are allowed to retain principal rights to these inventions, provided they disclose them to the Patent Assistant in the Office of the General Counsel. Rights to copyrightable material ("subject writings") created during NSF-assisted activities are governed by article 18 of our Grant General Conditions. • 730 Intellectual Property - Link

UNIVERSITY OF MISSISSIPPI © What is Prior Art?

• Patents are for new inventions • Public disclosure is the date your invention is shared with the “public” • USA has 1 year grace period to file application once public, the rest of the world is gone • Use NDA’s and pay attention to the terms of a contract / proposal • Prior Art - ANYTHING that can be used against you which is relevant to your claims of originality that exists ANYWHERE BEFORE you file • Literally can be anything in the public domain – Patents, Publications, Thesis, YouTube, Goods for Sale • Does not need to exist exactly as your invention - can be a combination if obvious to combine • Just because you have a patent on a product does not mean you can produce it if the “pieces” of it are protected by other patents that belong to someone else

UNIVERSITY OF MISSISSIPPI © Prior Art Searching Using Lens.org and Google • Searching for patents is similar to searching for publications • Patent Search Tools Comparison Guide • Lens.org • Can create structured keyword and classification searches and Boolean searches • Can create folders, save and share searches, create notes, download results • Free IP trend analysis tools • Can search for scholarly articles separately • Video Tutorials • Google Patents • Keyword search using Boolean operators and group by classification • Good translation capabilities • Can include grants, scholarly articles, and patents in same search • Basic structured search filtering and IP trend analysis tools

UNIVERSITY OF MISSISSIPPI © Prior Art Searching Using Publication tools • Basically, search for similar publications, articles, etc. • Lens.org and Google Patents are free and offer both publication and patent searches • The Library subscribes to several resources for publication searching • One Search on library page • Library has access to full-text versions of a lot of articles or they can get them • Use the librarians – https://libraries.olemiss.edu/request-a-library-research- consultations/ • You can be your own prior art

• Talk about the value, NOT how it specifically works • Think of the invention as your secret sauce, don’t disclose more than you need to • Market and IP trends can show value • If someone outside of the University wants to know the technical information we can setup a NDA • Be wary of language in contracts regarding intellectual property. Some will tell you not to disclose intellectual property or what you are disclosing belongs to them. • Prior art is not limited by time, jurisdiction, or patents. Literally can be anything in the public domain which came before you. • Filing a non-provisional application is considered a public disclosure • Do not lie about having a patent or patent application • Provisional applications are not disclosed.

UNIVERSITY OF MISSISSIPPI © 5 Practical Tips for IP 1. The terms in a contract are important, please ask questions • We have seen proposals that say the company owns whatever you submit 2. Protect confidential information • Establish security policies, use NDA’s, and label things as “Confidential” 3. Do your homework so you don’t waste your time 4. DO NOT publically disclose inventions until you are ready • This starts clocks you cannot stop 5. Use your university resources, both the tools and the people

UNIVERSITY OF MISSISSIPPI © What Type of IP Do You Need • Copyrights – Creative Works • Examples: Art, literature, pictures, movies, music, code • Trademarks - Branding • Examples: Phrases, designs, logos • Trade Secrets – Confidential Business Secrets • Examples: Recipes, algorithms, manufacturing process, customer lists, business strategies • Patents - Inventions • Examples: Methods of manufacture, products, processes, compositions of matter, software