Intellectual
Property
Basics
TM®
Industrial Chemistry /February 13, 2008
Elaine A. Lange
Office of Technology Commercialization
Intellectual Property
• Intangible asset
• Protection of IP necessary to encourage investment
and development of inventions
• U.S. patent and copyright system established in
Article 1, Section 8 of the Constitution:
“Congress shall have power.. to promote the Progress of
Science and useful Arts by securing for limited Times to
Authors and Inventors the exclusive Right to their
respective Writings and Discoveries”
U.S. Utility Patents by Year
180000
160000
Granted U.S. Patents
140000
120000
100000
1880
Edison’s
light bulb
80000
60000
1844
Goodyear’s
vulcanization
of rubber
40000
1790
First U.S. patent
20000
0
1780
1800
1820
1840
1860
1880
1900
Year
Source: U.S. PTO
1920
1940
1960
1980
2000
Four Forms of IP




Patents
Copyrights
Trademarks
Trade Secrets
Patents
A patent confers the right to exclude others from
making, using or selling the invention in the country
issuing the patent


A patent does not confer the right to practice your own
invention
Types of U.S. patents
•
•
•
•
Utility
Design
Plant Variety
Provisional
Patentability
Basic requirements for a patentable invention
1. Novelty (must be new idea)
2. Non-obviousness
3. Utility (must have a useful purpose)
The Invention
Two elements to any invention:
1. Conception: “Light Bulb” paradigm
2. Reduction to Practice: Has the invention been
made or practiced? (Does it work?)

Reduction to Practice may be actual or
constructive
Patentability
Statutory subject matter includes
•
Machines
•
Articles of manufacture
•
Compositions of matter
•
Processes
•
Improvements on the above
Not Patentable
• Equations
• Data
• Combinations of things that don’t share a
common function
Article of
Manufacture
U.S. 1,470,516
“Artificial Plant”
Composition of
Matter
U.S. 7,230,021
“Potent, Simplified
Derivatives of
Pateamine A”
Non-Obviousness
Obviousness: the invention is different from the
prior art, but the differences are so trivial that they
are obvious to one of
“ordinary skill in the art”
U.S. 3,771,192
“Combination Dog Toy
and Vacuum Cleaner”
U.S. 5,713,081
“Pantyhose Garment
with Spare Leg Portion”
Utility
• Only needs some practical utility (entertainment)
• Specific exclusions for
– products of nature
– perpetual motion machines
– inventions contrary to public policy
US 5,443,036
“Method of
Exercising a Cat”
Enablement
• Patent must teach how to make and use the
invention
• Must provide the “best mode” for making &
using the invention
Bars to Novelty
• Patented, known, or used by others before your
invention was made
• In public use, on sale, or published more than
one year before your filing date
• Earlier invented by another who did not abandon,
suppress, or conceal
• Derived from the invention of another
Public Disclosures
• If you want to protect the IP, be mindful of enabling
public disclosures to “one of ordinary skill in the art”
– Publications
– Posters
– Presentations
– Student theses
• An enabling public disclosure will start the one-year
“clock” for filing in the U.S. or bar a patent in other
countries
Documentation
•
•
•
•
U.S. relies on “first to invent” basis
Need evidence of:
– conception
– reduction to practice
– diligence
Keep a bound notebook journal with numbered
pages, signed & dated
Need corroboration by non-inventors
Inventorship
•
•
•
•
•
•
Determined by who did what, under who’s instruction,
and at what time
Includes conception or reduction to practice
Single, joint, or co-inventors OK
Correction can be made at any time so long as there
was no prior deceptive intent
Often not the same as authorship of scholarly
publications
Incorrect inventorship can lead to loss of patent rights
U.S. Patent Term
 20 years from the filing date for applications filed
after June 8,1995
 For patents in force or in prosecution on June 8,
1995, the term is the longer of 17 years from the
issue date or 20 years from the filing date
 Term extensions under special circumstances
U.S. Patent Application Types
• Provisional application
– Not examined, not published
– 1 year term
• Non-provisional application (utility, design, plant variety)
– Examined by USPTO
• Divisional: invention removed from a previously filed “parent”
application that had more than one invention
• Continuation: same specification, same inventors
• Continuation-in-part: contains some new material
and inventors
Publication of U.S. Patent Applications
•
Roughly 18 months from the first filing date
•
Will disclose the invention to the public, whether or
not a patent is granted
•
Accessible on Google patents, USPTO site, others
•
Details of the prosecution are also publicly
available on the PAIR system of the USPTO
(www.uspto.gov/ebc)
Patent Process
•
Patent applications filed by the inventor, a registered
Patent Agent, or a registered Patent Attorney
•
Typical prosecution time: 2-3 years, but varies widely
among subject areas
•
Typical cost (application through issue): $20-$25K
•
Maintenance fees at 3½, 7½, and 11 ½ years
from date of grant
Typical Patent Action Timeline
Prosecution Phase:
USPTO OA:
Restriction
Requirement
Invention
Disclosure
Submitted
Provisional
filing
Response
due
Response Response
due
due
OA
OA
U.S. Utility
filing
0
Notice of
Allowance
12
24
36
Issue Fee
due
Issuance
48
60
Time (Months)
Publications or
presentations by
inventor (optional)
Publication
of patent application by
USPTO
Post-grant Phase:
60
72
84
96
108
Third Maintenance
Fee due
Second Maintenance
Fee due
First Maintenance
Fee due
120
132
144
156
168
180
192
204
Patent expires
216
228
240
252
Time (Months)
Based on 2007 cases
Typical Patent Action Timeline (2)
Prosecution Phase w/ Foreign Filing and Continued Prosecution:
USPTO OA:
Restriction
Requirement
Invention
Disclosure
Submitted
Provisional
filing
0
Notice of
Allowance
Response
due
Response Response
due
due
OA
OA
U.S. Utility
filing
12
Continuation or
Divisional Application
filing
24
36
Issue Fee
due
Issuance
48
60
Time (Months)
Time (Months)
Publication
National Phase of PCT
(Election of Specific Countries; $$)
PCT filing
Based on 2007 cases
Components of a U.S. Patent
International Patents
•
Major differences:
– “First to file” gets the patent, not “first to invent”
– Absolute novelty requirement; No one-year grace
period for inventors after publications or
presentations
•
Paris Convention provides one year to file abroad in
all signatory countries
•
Patent Cooperation Treaty (PCT) offers convenient
approach to file multiple foreign patent applications
via a single initial filing
•
Typically $15,000-$65,000 per country
Patent Cooperation Treaty (PCT)
• Widely used mechanism of foreign filing
• Initial examination and search report, followed by patent
prosecution in selected countries
• Allows choice of countries, national filing fees, other costs to be
deferred up to 30 months
• Members include most European countries, the Russian
Federation, India, China, many others
• Helpful EPO website and search tools:
http://www.esp@cenet.org
Copyrights
© 2008
Copyrights
•
Protect works of authorship, i.e. the “expression” of an idea
(not the idea itself)
•
Protection attaches as soon as the work is fixed in tangible
medium
Literary works
Choreography
Musical works
Pictorials
Dramatic works
Graphics
Sculptural works
Motion Pictures
Architectural works
Sound Recordings
Pantomimes
Software
Copyrights
•
•
•
•
•
The use of © and federal registration provides advantages
Immediate
File a form and 2 copies of the work with the U.S. Copyright Office
Term: life of author + 70 years
In “works for hire”, term is 95 years from publication or 120 years
from creation, whichever is shorter
Not Copyrightable
•
•
•
Ideas
Factual information (phone book)
Short names or slogans
Trademarks
TM ®
SM
Trademarks
•
•
•
•
Distinguish and identify the origin of certain goods or services
Should be distinctive
Can be renewed forever as long as it is used in business
Marks may include:
Names
Abbreviation
Logos
Packaging
Colors
Representation of building
Word
Symbol
Shape
Sound
Slogan
Representation of character
Types of Marks
•
Arbitrary (Fanciful) mark (no correlation)
–
•
Suggestive mark (hint at product)
–
•
Duracell®, OneADay®, Off!®BotanicalsTM
Descriptive mark (actual description)
–
•
Colgate®, Hormel® , Tony the TigerTM
Frosted Flakes®
Generic
–
Columbian®
Trademarks
•
•
•
•
Trademark identifies the source of the good
Service Mark identifies the source of the service
Trade Name identifies a product or company
– may or may not be a Trademark
Trade Dress characterizes the “look and feel” of a product or
packaging or configuration
– Classic Coke bottle shape
Rules of Usage
•
•
•
•
If in use and/or registration filed, use TM ; but if registered, use ®
Try to make use distinctive (capitalize, bold, italics)
Never use as a noun; Proper use is as an adjective
Klennex® brand tissues
Band-Aid® brand adhesive bandages
Rights arise from use or intent to use the mark in commerce
Gatorade
• University of Florida
• $37 million+ in royalty income on trademark
Trade Secrets
Trade Secrets
• Any formula, pattern, device or compilation of information that is
used in one’s business, which gives its owner an opportunity to
obtain an advantage over competitors who do not know or use it.
• Examples of successful trade secrets:
– Recipes (Coca-Cola, KFC batter)
– Client lists
Trade Secrets & Know-How
•
•
Know-How: specialized knowledge or information that has
economic value in not being widely known
Trade Secrets: like know-how, but satisfies more rigorous statutory
or common law requirements
•
Value in being known to company and not others
•
Mainly used in industry, not universities
•
Diligence needed to maintain trade secrets; Can be lost through


inadvertent disclosure
loss of employees

expired confidentiality agreements
Uniform Trade Secrets Protection Act
Includes but not limited to:
Technical Data
Non-technical Data
Formulas
Compilations
Patterns
Programs
Devices
Methods
Graphics
Drawings
Processes
Techniques
Questions?