TO: UA NSF I-Corps Sites Teams
FROM: UA NSF I-Corps Sites Administrators
SUBJECT: Intellectual Property Form Guide
The following form is designed to help you identify the patentability of your invention and discover whether or not you may be infringing on an existing patent or if you have the freedom to operate. The information below is a recap from our class discussion on intellectual property. Please refer to this guide in filling out the Intellectual Property Form.
Forms of Intellectual Property
Patents

Granted to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United
States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.
Trademarks

Any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.
Copyrights

Form of protection to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works.
Trade Secrets

A formula, practice, process, design, instrument, pattern, or compilation of information which is not generally known or reasonably ascertainable by which a business can obtain an economic advantage over competitors or customers.
Infringement vs. Freedom-to-Operate
 Infringement occurs when someone practices another person’s invention without consent.

Freedom-to-operate is whether you are free to commercialize your invention without first obtaining the consent of another patent holder.

Both are important, and we need to know specifically if you can proceed without infringing valid intellectual property rights of others.
Simplified University of Akron Patent Process
Faculty submits
Invention
Disclosure Form to OTT
Faculty contacts
OTT requesting
Provisional
Patent
Application to be filed
Provisional
Patent
Application filed by OTT
Faculty contacts OTT within 12 months of Provisional Patent filing requesting Non-
Provisional Patent to be filed
Faculty, OTT, and outside council work to draft and prosecute patent
Helpful Hints
Conducting a Patent Search

Begin with a general scholarly search for articles within UA’s
Library Research Tools

Gather key information to search deeper within Google Patents o Search using key phrases that would likely appear in the patent (not the title) o Search for scholarly authors as inventors o Look at patents cited as “prior art” in the patents you have already found
Key Resources
 http://www.uakron.edu/libraries/research/
 http://www.google.com/advanced_patent_search

UA NSF I-Corps Sites Team:
Entrepreneurial Lead: Mentor: Academic Lead:
UA Patent Application Status
Provisional
Application
Competitive Intellectual Property
Non-Provisional
Application
International
Application
Office
Action
Find 8-10 other existing patent applications and/or journal articles that may affect the patentability and/or the freedom-to-operate your invention. Be sure to document the title, the author(s), and the citation. If you are documenting a patent, the patent number is sufficient for the citation. Also, please provide a description of how your invention is different from, or an improvement on, the competing patent application or journal article.
Document Title:
Author: Citation:
Brief description and how your invention differs:
Document Title:
Author:
Brief description and how your invention differs:
Citation:
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Author:
Brief description and how your invention differs:
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Author:
Brief description and how your invention differs:
Citation:
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Author:
Brief description and how your invention differs:
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Brief description and how your invention differs:
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Brief description and how your invention differs:
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Brief description and how your invention differs:
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Brief description and how your invention differs:
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Author:
Brief description and how your invention differs:
Citation:
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