The Other Intellectual Property

AuthorElizabeth Rodriguez - Sean Solberg
Charles C. Valauskas1
Traditionally, the university technology transfer ofce (TTO) has focused on subject matter
that is protectable by patent. Patents do provide powerful property rights. However, pat-
enting may not be the best form of protection—or even possible—for every creation and
opportunity. In a rapidly developing marketplace, multiple and faster forms of intellectual
property (IP) protection may be more appropriate. As compared with patent prosecution,
these other forms of IP protection can be perfected with little or no out-of-pocket costs
to the TTO. (Remember that patents require a grant from a federal agency, the U.S. Pat-
ent and Trademark Ofce (USPTO), before there is any effective protection.) Through a
combination of these non-patent rights, TTOs—even those with limited resources—can
assemble commercialization portfolios for a diverse range of technologies, creations, and
opportunities. Potentially, new groups of faculty members and other university creators
can be served, and previously overlooked works commercialized to the benet of the uni-
versity and the general public.
I. Rationale for Emphasis on Patents
There are many reasons the TTO has traditionally focused on patents. With limited per-
sonnel and nancial resources, many TTOs simply cannot do everything. Since universities
1. Charles Valauskas is a partner in the rm Valauskas Corder, LLC. This chapter reects the personal views
and thoughts of Charles Valauskas and is not to be construed as representing in any way the views, opinions,
or practices of the law rm Valauskas Corder, LLC. This content is solely for purposes of discussion and illus-
tration and is not to be considered legal advice.
Chapter 11
The Other Intellectual Property
Thinking Beyond Patents

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