American Invents Act (AIA)
The law switched the U.S. rights to a patent from the previous "first-to-invent" system to a "first
inventor-to-file" system for patent applications filed on or after March 16, 2013. The law also expanded
the definition of prior art used in determining patentability. Actions and prior art that bar patentability
under the Act include public use, sales, publications, and other disclosures available to the public
anywhere in the world as of the filing date, other than publications by the inventor within one year of
filing (inventor's "publication-conditioned grace period"), whether or not a third party also files a patent
application. The law also notably expanded prior art to include foreign offers for sale and public uses
Continuation-In-Part Patent Application
When an invention is improved after a patent application disclosing the invention has been filed, a new
patent application, known as a Continuation-In-Part, and abbreviated as C-I-P, is filed to include the
improvement. Prior art that arose after the filing date of the original patent application but not after the
filing date of the C-I-P can be cited against the C-I-P.
Copyright
Copyright is a form of protection provided to the authors of “original works of authorship” including
literary, dramatic, musical, artistic, and certain other intellectual works, both published and
unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to
reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of
the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work
publicly. The copyright protects the form of expression rather than the subject matter of the writing. For
example, a description of a machine could be copyrighted, but this would only prevent others from
copying the description; it would not prevent others from writing a description of their own or from
making and using the machine. Copyrights are registered by the Copyright Office of the Library of
Congress.
Design Patent
A design patent is directed to an ornamental design for an article of manufacture. A design may consist
of surface ornamentation, ornamental configuration of combination thereof. Design patents can also
cover computer displays and icons which are non-functional. The term of a design patent is 14 years and
there are no maintenance fees. An example of this would be the iMac computer. Its ornamental design
and bright colors allowed for it to be protected by a design patent. It should be noted, however, that if
there were still a patent on the computer itself, Apple would have had to acquire a license to sell
computers from the patent holder in order to sell an iMac since the functionality of the iMac, instead of
the ornamental design, would be protected by patent.
Examiner
Examiners are employees of the U.S. Patent & Trademark Office who conduct prior art searches and
determine whether the patent application complies with the substantive and procedure requirements
for the grant of the patent.
First to File
In a first to file patent system, the grant of a patent for an invention lies with the first to file a patent
application. This is irrespective of who developed the invention and when it was developed. This means
that potentially patentable work must be kept somewhat confidential until patent protection is
obtained.
Intellectual Property
Intellectual property (IP) is an intangible creation of the human mind, usually expressed or translated
into a tangible form, which is assigned certain rights of property. Examples of intellectual property
include an author's copyright on a book or article, a distinctive logo design representing a soft drink
company and its products, unique design elements of a web site, or a patent on a particular process to,
for example, synthesize a drug.
Invention
An invention is a new and useful machine, article of manufacture, composition of matter, process, or
any new use of the same that is described and/or claimed in a patent or patent application.
License
A license is simply a promise not to sue. In the context of intellectual property law, licenses are usually
granted in exchange for royalty payments or as a settlement to a countersuit for infringement. There
are two main types of licenses:
 Exlusive: a grant to a single party to exclusively make or sell a licensed invention. This type
of license typically allows for higher upfront licensing fees and better royalty rates because
it disallows the licensing of the invention to anyone else while the license agreement is
valid.
 Non-Exclusive: a grant to a single party to make or sell a licensed invention. This is the
more common method of licensing an invention. This is because it allows the licensor to
issue licenses to multiple parties to further the use of the invention. These licenses,
however, are issued with some restrictions. The most common restrictions are ‘field of use’
and ‘territory’. A ‘field of use’ restriction would only allow the licensee to sell the invention
to a particular industry such as steel producers while a ‘territory’ restriction limits the
physical area that a licensee can sell an invention such as a state or the Midwest.
Non-Disclosure Agreement (NDA)
An NDA is a legal document that allows for the disclosure of an invention to a party who agrees not to
disclose details of the invention that might remove its patentability. This is typically used when trying to
locate a potential licensee for an invention before it is protected by patent rights.
Patent
In return for disclosing an invention to the public, an inventor is awarded a twenty year legal monopoly,
measured from the filing date of the patent application. The patent grants the patent owner the right to
exclude others from making, using, selling, or offering to sell the invention throughout the U.S., or
importing the invention into the U.S.
Patent Bar
A patent bar is an activity that removes the right to patent an invention. This can occur via public
disclosure or a sale of an item. In the US, you can file for a patent up to one year after having publically
disclosed or sold an invention. However, foreign countries tend to be more strict and most require that
a priority patent application be filed before any such disclosure. A disclosure can occur through
publication in journal articles, open seminars, and even e-mail. To ensure global patentability, it is best
to file an initial patent application before publically disclosing or selling an invention.
Patent Claims
Statements included in a patent that describe (or recite) the structure of an invention in precise and
exact terms, using a long-established formal style and precise terminology. Claims form the boundaries
of an invention much like a deed describes the boundaries of real property. They may be broad or
narrow in terms of the scope of the invention they address. The greater the scope of the invention
defined in the claims (that is, the broader the claims), the wider the reach of the patent.
Patent Cooperation Treaty
An international treaty that facilitates foreign patent filings for residents of member countries when
obtaining patents in other member countries. Member countries include all European countries,
Mexico, Canada, China, Japan, Korea, Russia and many other industrialized countries. No certified copies
of the original application are needed and most expenses are delayed until two and a half years after the
original filing. This is not a patent application but, rather, a means to declare intent to file in other
countries covered by this treaty. A PCT application sets the priority date for all member countries. This
must be followed up by entering the national stage of each member country in which one would want to
secure a patent.
Patent Maintenance Fee
All utility patents which issue from applications filed on and after December 12, 1980 are subject to the
payment of maintenance fees which must be paid to maintain the patent in force. These fees are due
3 ½ ($800), 7 ½ ($1,800), and 11 ½ ($3,700) years from the date the patent is granted. The listed fees
are for small entities which ISU is as determined by the US Patent & Trademark Office (USPTO).
Patent Term
Patents are valid for a period of 20 years following the initial submission of the patent application. This
term is only valid if the applicable maintenance fees are duly paid.
Patent: Types
A utility patent protects the functional aspects of an invention and not the ornamental features as does
a design patent. Utility patents protect new software, mechanical items, chemical formulations,
methods and processes that are new, useful and non-obvious.
A provisional patent application is a quick and inexpensive way for inventors to establish a U.S. filing
date for their invention which can be claimed in a later filed non-provisional application. A provisional
application is automatically abandoned twelve months after its filing date and is not examined. An
applicant who decides to initially file a provisional application must file a corresponding non-provisional
application during the 12-month pendency period of the provisional application in order to benefit from
the earlier provisional application filing.
A design patent is directed to an ornamental design for an article of manufacture. A design may consist
of surface ornamentation, ornamental configuration of combination thereof. Design patents can also
cover computer displays and icons which are non-functional. The term of a design patent is 14 years and
there are no maintenance fees.
A plant patent is granted by the Government to an inventor (or the inventor's heirs or assigns) who has
invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber
propagated plant or a plant found in an uncultivated state. The grant, which lasts for 20 years from the
date of filing the application, protects the inventor's right to exclude others from asexually reproducing,
selling, or using the plant so reproduced. This protection is limited to a plant in its ordinary meaning:
 A living plant organism which expresses a set of characteristics determined by its single, genetic
makeup or genotype, which can be duplicated through asexual reproduction, but which cannot
otherwise be "made" or "manufactured."
 Sports, mutants, hybrids, and transformed plants are comprehended; sports or mutants may be
spontaneous or induced. Hybrids may be natural, from a planned breeding program, or somatic
in source. While natural plant mutants might have naturally occurred, they must have been
discovered in a cultivated area.
 Algae and macro fungi are regarded as plants, but bacteria are not.
Prior art
All subject matter (patents, publications, etc.) bearing on the novelty and non-obviousness of a claimed
invention. This is all the relevant publications, patents, and products that are reviewed in order to
assess the patentability of a new invention.
The Paris Convention
An international treaty that enables residents of member countries to file patent applications in other
member countries. A Paris Convention patent application must be filed within one year of the original
(home country) patent application, and it must be accompanied by a certified copy of the original
application and a translation into the language of the foreign country. If a patent application is to be
filed in three or four foreign countries, the Paris Convention is usually less expensive than the Patent
Cooperation Treaty. However, if patent protection is sought in all seventeen (17) countries of Europe,
for example, more savings are realized if the Patent Cooperation Treaty is used.
Trade Secret
A trade secret is information that is kept confidential and has commercial value. Examples include
undisclosed inventions, technical and marketing data, and financial information. The recipe for Coca
Cola is a well-known example of a trade secret.
Technology Transfer Office (TTO)
A technology transfer office handles invention disclosures from faculty members in an effort to promote
widespread use of any invention. This office provides guidance to faculty pertaining to intellectual
property, negotiates material transfer agreements, aids in the patenting and marketing of technologies,
locates potential licensees, and negotiates licensing agreements. TTO’s are a service provider to faculty
members. Faculty members are experts in their respective fields and TTO employees are helpful in
bridging the gap between discovery in a lab and the commercial marketplace. The use of a technology
transfer office is widely considered the best way to ensure an invention provides the greatest public
benefit.
Test for Patentability
In order to be granted a patent, an invention must pass a series of tests or questions. Any invention
must meet all of the below criteria in order to have a patent issued.
 Patentable Subject Matter: any new and useful process, machine, article of
manufacture, composition of matter, or any improvement thereof. Mathematical
methods, scientific theory, and items that would prove detrimental to society (weapons
of mass destruction).
 Novel: the invention, or at least some aspect of it, must be new. It cannot have been
previously disclosed through existing patents or publications.
 Useful: the invention must provide an industrial application or be of some use to
society.
 Non-Obviousness: most often the hardest criteria to pass. The invention must not be
readily apparent to someone with ordinary skill in the art to which the invention
pertains. Example: suppose someone holds a patent for a ball point pen with black ink.
If someone were to try and patent a ball point pen with red ink, they would likely get
their patent claims rejected based on non-obviousness. This is because someone with
ordinary skill in the art of making ball point pens would likely come to the conclusion
that different colored inks could very well be used instead of black.
Trademark
A trademark is a word, name, symbol or device that is used in trade with goods to indicate the source of
the goods and to distinguish them from the goods of others. The Nike swoosh symbol
USPTO
USPTO is the abbreviation for the United States Patent and Trademark Office. It was known as the
United States Patent Office until 1975. This office is responsible for the examination and issuance of US
patents and trademarks.