Leah Haman
Intellectual Property Associate
March 3, 2015
Investing in research, making a difference.
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• Intellectual property (IP) refers to creations of the mind
• Inventions
• Designs
• Literary and artistic works
• Symbols, names and images
• IP is protected by law - owners are granted certain exclusive rights to these assets
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• Competitive advantage
• Exclusivity provides a justification for research and development spending and motivation to invest in the development of innovative ideas (risk/reward)
• Without protecting IP, competitors can use it and do not have to recoup the R&D investment
• Especially valuable for start-ups
• Can be critical in attracting venture capital (VC)
• An important part of a company’s valuation
• Importance can vary by industry
Investing in research, making a difference.

Patents
Machines and devices
Compounds
Processes and methods
Improvements on any of the above
Copyrights
Literary works
Webpages
Software programs
Trademarks
Words and phrases
Colors
Pictures or logos
Sound
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Investing in research, making a difference.

What is a patent?
• A grant of a property right to the inventor
• The patent gives the patent owner the right to exclude others from practicing the patented invention.
• Making
• Using
• Selling
• Offering to sell
• Importing
Investing in research, making a difference.

Patent Types
• Utility
• Provisional
• Plant
• Design
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Utility Patents
• What can be patented?
• Machines and devices
• Compounds
• Processes and methods
• Improvements
• Parts of a patent application:
• Specification
• Drawings
• Claims*
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Example Claim
What is Claimed is:
1. An electronic device, comprising:
• a fingerprint sensor having conductive structures and having fingerprint sensor circuitry that is configured to gather fingerprint data with the conductive structures;
• And near field communications circuitry that is coupled to the conductive structures and that is configured to receive near field communications signals with the conductive structures.
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Drawing of Previous Claim
Title: Electronic Device with
Shared Near Field
Communications and Sensor
Structures
US application #: 13/409,615
Assignee: Apple Computer, Inc.
Inventors: Benjamin Pope,
Daniel Jarvis, Nicholas Merz,
Scott Myers
Filing Date: January 3, 2012
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Patent Prosecution
• Process for obtaining a patent carried out between inventors or patent attorneys or patent agents and the United States
Patent and Trademark Office (USPTO)
• Examiner at USPTO evaluates the patents
• Can take years
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Application assigned to an examiner
Initial rejections of some or all claims are common Examiner searches for prior art
Examiner applies tests for novelty, non-obviousness and utility
Office action spells out issues that need to be addressed
Arguments to persuade the examiner that the prior art was incorrectly applied
Claims may be amended to further distinguish the invention from the prior art
Examiner reviews arguments and/or amendments
Applicants can respond if only minor amendments are needed
Congratulations!
Claims are allowable and the patent can issue
If arguments are persuasive, claims may be allowed or new rejections may be made
Otherwise, a request for continued examination or an appeal can be filed
Issue and publication fees are paid
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Statutory Requirements
• Utility/Novel/Non-obvious
• Claims are definite and appropriate written description
• Specification enables the practice of the invention and discloses best mode
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Invention must be “New”
• Novelty: each element of the claim cannot be contained in a single, enabling, fully anticipatory reference
• Cannot be over one year since publically disclosed by the inventor (US only)
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Invention must be “Non-Obvious”
• Different than novelty because it applies when an invention is not identically disclosed
• Invention is non-obvious when a Person Having
Ordinary Skill In The Art would not find the invention obvious
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Prior Art
• Evaluate prior art to determine if invention is novel and non-obvious
• Public “references” created before the
of the patent include
• Patents
• Publications
• Poster presentations
• Open thesis defense
• Thesis catalog
• Abstracts for conferences
• Grant applications posted online once funded
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Leahy-Smith America Invents Act (AIA)
• U.S. is a “first inventor to file” system
• Actions and prior art that bar patentability include public use, sales, publications, and other disclosures available to the public as of the filing date
• One year grace period for inventor
• Intervening art concerns
• Filing before a public disclosure can provide stronger patent protection
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Patents in the Rest of the World
• The Patent Cooperation Treaty
• Special uniform application procedure to simplify multinational patent acquisition
• File PCT application
• “Nationalize” the application by selecting countries to prosecute the application in
Investing in research, making a difference.

Investing in research, making a difference.

Copyrights
• Copyrights protect an EXPRESSION of an idea
• Gives protection to authors of “original works of authorship”
• Copyright encourages creative efforts by securing the exclusive right to reproduce works and derive income from them
Investing in research, making a difference.

Copyrightable Subject Matter
• Literary works
• Musical works
• Dramatic works
• Pictorial, graphic and sculptural works
• Web pages
• Software and computer programs
• Mask works and semiconductor chips
• Architectural works
• Motion pictures and other audiovisual works
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Obtaining Copyright Protection
• Copyright is created automatically once an original effort has begun and it has been fixed in a tangible medium
• Registration is not required (but recommended)

Additional protection and notice to potential infringers

Simple and inexpensive

Symbol, year, author
• Works created on or after January 1, 1978
• Life of the author plus 70 years
• Work-for-Hire: earlier of 95 years from publication or
120 years from creation
Investing in research, making a difference.

Investing in research, making a difference.

Trademarks
• A word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods or services of one party from those of others
• Why have trademarks?
Investing in research, making a difference.

Investing in research, making a difference.
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WARF Overview
• An independent, tax exempt, nonprofit, supporting organization for UW-Madison and Morgridge
Institute for Research (MIR)
• WARF’s Mission: To support scientific research at UW-Madison and MIR by:
• Moving inventions into the community
• Investing licensing proceeds to help fund further research
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Research and Discovery
Conceive and start to develop your idea for a new technology or an improvement to an existing technology.
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Invention Disclosure
Make your invention known to WARF.
 Submit an Invention Disclosure Report.
 Meet with a WARF Intellectual Property Manager.
 Explain your invention to WARF.
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WARF Decision
The WARF Disclosure Committee assesses your idea.
 Is it protectable?
 Is there a market for it?
 Can we license it?
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Inventor Is Notified by WARF
 We either accept or don’t accept the invention and notify the inventor.
 For all disclosures there’s a Graduate School Equity Review to determine funding sources and ownership rights to the invention.
 If we accept, inventors sign a Memorandum Agreement.
Investing in research, making a difference.

Patenting
 You meet with your WARF Intellectual Property Manager and a patent attorney retained by WARF.
 The patent attorney drafts the application with your input.
 The application is filed with the U.S. Patent and Trademark Office (USPTO) and examined.
 A patent issues and the inventor is notified.
Investing in research, making a difference.

Marketing
WARF Licensing Manager identifies companies that may be interested in the invention and pro-actively markets the technology to those companies.
 WARF Licensing Manager identifies the commercial space for your invention.
 A summary of the technology is written and posted on the WARF Web site.
 Other marketing materials may be developed.
Investing in research, making a difference.

Licensing
 A patent license is negotiated with a potential licensee.
 A patent license is a contract between the patent owner (WARF) and a commercial partner that gives the Licensee permission to make, use, sell or import the invention.
 Licensing revenue is returned to the Inventor and the University, where it is used to support further research.
Investing in research, making a difference.

Investing in research, making a difference.