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ref: -0 tags: microelectrode patents date: 05-02-2014 00:07 gmt revision:1 [0] [head]

Various microelectrode patents:


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ref: notes-0 tags: patent maintenance fee date: 01-06-2008 17:23 gmt revision:0 [head]


  • A maintenance fee is due 3 1/2, 7 1/2 and 11 1/2 years after the original grant for all patents issuing from the applications filed on and after December 12, 1980

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ref: notes-0 tags: Duke Licensing patents university royalty royalties intellectualproperty date: 10-12-2007 17:41 gmt revision:4 [3] [2] [1] [0] [head]

What I have learned about licensing & Duke (or really, licensing at universities in general), in no particular order:

  • Licensing fees split up: 50% to the inventors, 10% to the lab, 10% to the department, 30% to the dean
    • The 50% inventors' fees are split up based on what is determined fair by the inventors themselves, or if that fails, by the Office of Licensing & Ventures (OLV) itself. If there are several patents in a licensing, then it is split between patents based on relevance / contribution, then between each of the inventors. Royalties are split in the same way.
    • The OLV & patent's budget is indirectly paid through these licensing fees.
  • Universities are granted ownership of any intellectual property developed by graduate students & other employees under federal funding through the 1980/1984 Bayh-Dole Act. Universities assume ownership of IP developed through privately funded work, though there is no one law for this.
    • Graduate students are considered employees under the law, hence IP retained, even if no formal contract was signed.
  • Even if an independent inventor (e.g. me) files a invention disclosure form to Duke in good faith, and upon investigation the OLV agrees that the claim of independence is supported, this does not prevent future litigation.
    • If the fields of invention and research overlap, as is probably true for me, then OLV & Duke are likely to protest (money is at stake, after all).
  • Patents require a servicing fee every 3-5 years - have to learn more about this!
  • Almost certainly want a patent on a device. without it, it is very easy to steal :/
    • Can patent software 'ideas' or 'methods' that have utility, but not the actual software. The text of the software is copyrighted, like a book.
  • If a patent has people on it who were not involved in the invention, the patent can be legally contested and voided. Conversely, if the patent does not have all the inventors on it, then it can also be contested by an outside party, and voided.
  • Duke will pay the legal fees for patents & writing up a licensing contract
    • Duke will also pay the fees to patent in other countries (where the patenting fees are much higher), depending on market.
      • The European Union has no centralized patent office - patents must be filed in each country and translated to & from the official language. The legal and translation fees & time spent on this can be very high, so usually companies only file in a few largest markets, if at all.
    • Concerning the named inventors on a patent, above, Duke determines who is involved usually by asking the PI, without delving into the internal politics of a lab. This may or may not be an issue.
  • Typical licensing fees $25k - $1M, depending on what is being patented.
  • Duke can revoke the licensing agreement if the company is not using it / making progress within a period specified by the licensing contract, e.g. 6 - 9 months.
  • Duke typically licenses multiple patents at a time to startups; startups typically need more than one patent.
  • Duke typically pursues non-exclusive licenses on biological models (e.g. Gouping Feng's OCD mouse), and exclusive licenses on devices (like this, i suppose)
    • In some fields, device licensing is exclusive to a field - e.g. one company licenses for Parkinson's application, another for Alzheimer's, etc.
  • Once a patent is licensed to a company, it typically becomes gradually 'diluted' as the company & employees invests more in the idea/technology. If the initial royalty level was 5%, and the company makes significant changes & improvements, then the company will re-negotiate the royalty percentage.
    • Oftent the licensing agreement specifies the maximum amount of dilution / the minimum royalty level, as ultimately the university was involved in the first step to commercialization, without which anything else could have happened.
  • Similarly, if the company licensing University IP needs to give a certain royalty percentage to another patent holder & cannot remain solvent without decreasing University share, then the company and University will negotiate a lower royalty rate.


  • Everything is fluid & up for negotiation, depending on the desires and situations of each of the parties.
    • Typically, the university and inventor are on the same side, but that is not true for me.
  • Need a lawyer to navigate the maze!

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ref: notes-0 tags: wheelshoe sideskate patent date: 09-26-2007 17:51 gmt revision:1 [0] [head]

Here are a few figures I screengrabbed during my prior art search for the sideskate patent. The first one is kinda silly, but, well, demonstrative of a nice curb-grind. In general, I think it is really useful to be able to jump off & wear regular shoes, as in sideskates or freeline, hence these have limited appeal. The primary advantage with seperate wheeled devices is that the device manufacturer does not have to make special shoes nor collaborate with a shoe manufacturer - users can wear whatever shoes fit them best. That said, heeling shoes have become rather popular, and those require custom soles -- why have they not rotated the wheel and moved it to the instep/arch, then?

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ref: notes-0 tags: patents USPTO date: 02-22-2007 04:28 gmt revision:0 [head]

http://0-www.uspto.gov.mill1.sjlibrary.org/web/offices/com/iip/transcriptsf_m.htm -- great FAQ