Educational Research Retreat: When to
Publish, Patent or Protect a “Trade Secret”
P. Gunnar Brolinson, DO, FAOASM, FACOFP, FAAFP
Vice Provost for Research
Discipline Chair for Sports Medicine
Team Physician Virginia Tech
Director of Primary Care Sports Medicine Fellowship
What is Intellectual Property?
• Article I, Section 8
•
“The Congress shall have power to…promote the
progress of science and useful arts, by securing
for a limited time to authors and inventors the
exclusive right to their respective writings and
discoveries”
Intellectual Property
Distinct from tangible items….
▪ More abstract than other types of property
▪ Products of the mind
▪ Types:
• Patents (Title 35, U.S. Code)
• Trademarks (Title 37, U.S. Code)
• Copyrights (Title 17, U.S. Code)
• Trade Secrets (State law)
Intellectual Property
▪ Patents – inventions of functional and ornamental design
•
•
•
• design, plant and utility
• provisional applications
▪ Trademarks – identifies source or origin of product
•
•
•
•
•
•
•
•
words, brand names, slogans, graphics/logos
e.g., Nike logo, “We bring good things to life”, VIOXX
should seek federal registration (®)
use ™ for non-registered marks
Intellectual Property
▪ Copyrights – literary and artistic impressions or arrangement
• protects medium from copying by others
• identifies author’s specific expression
• e.g., articles, videos, computer programs
•
• protection is automatic; use © with year and name of owner
▪ Trade Secret – protection from unfair appropriation of information
•
• any information (e.g., software, formulas) that: provides competitive
advantage; not available to public; and treated as confidential
Patents
▪ Utility
• demonstrated use or proposed use one of “ordinary skill in the art”
would believe
▪ Novelty
• not fully described in one patent or publication > 1 year
before you filed (the “prior art”)
▪ Non-obviousness
• whether one skilled in the art at the time of the invention would have had
a rational basis to combine prior art to reach the claimed invention
Patents
▪ Enablement
• one of ordinary skill can carry out the invention without
“undue experimentation”
▪ Best mode
• provides best known way of making and using the invention
when application was filed
Patents
• Patents are not
technical publications,
they are legal
documents…
US Patent 5,433,036
Method exercising a cat
US Patent 5,255,452
Method and means for creating anti-gravity illusion
Patenting
Provisional
Application
Filed: $2-4K
Office Action #2
Received:
Response
Office Action #1
Filed:
$2-4K
Received: Response
Filed: $2-4K
Nonprovisional
Application Filed:
$7-10K
12 Months
20-30 Months
PCT International
Application Filed $4-5K
18 Months
National Phase
Applications Filed:
$25-30K
20-30 Months
Notice of Allowance
Received: Issue Fee
Paid: $2K
US
Continuation
Patent
Application
Issued
Filed (?)
6 Months
National Phase
1st Office Action
Received: Response
Filed $3-4K
12 Months
6 Months
National Phase
2nd Office Action
Received: Response
Filed $3-4K
12 Months
6 Months
3 Months
Regionalized
In EP
6 Months
EP, JP, AU, CA
Notice of Allowance
Received: Issue Fee Paid:
$4K
Foreign Patent
Issued
Two Different and Conflicting ways
to protect IP and Technology
• Patent Protection
– The inventor strikes a bargain with the government for a limited period
of exclusivity in exchange for full disclosure of the idea or technology
• Trade Secret
– Can protect any form of confidential information that has business value
– Trade Secret protection can last forever as long as the IP owner
maintains confidentiality
• Can only prevent the use of the information if someone has misappropriated it
• “Reverse Engineering” is allowed
• So must carefully consider which way to go….
Some Cases are Clear
Cut…some not so much
• The US FDA requires full disclosure on any new
medication brought to market so the “trade secret”
approach is not an option.
• Variables to consider include the length of time
and difficulty a competitor would have in “reverse
engineering” your idea
• Patent protection and trade secret protection have
two very different statutory frameworks
Is there a “defensive” strategy?
• For scientists and technologists the defensive strategy is to publish
in trade journals
• Inventions must have these characteristics
– Utility
– Novelty
– Non-obviousness
• The invention or IP must be sufficiently different from what is found in the
literature, in public use or for sale
• A “defensive” publication establishes “prior art”
– Potentially disabling a patent or preventing it from issuing
Publish or Protect…the thought process
• Is public disclosure necessary?
• Is the idea easy to reverse engineer or discover
independently?
• Is the technology area evolving rapidly?
• Is this a new area of technology?
• Are you potentially interested in licensing the invention?
• Do the potential market revenues out weigh the costs
associated with patent protection?
General Approach….
VCOM Process
IDEA
DISCLOSURE FORM
•
•
•
•
Potential Protection?
Requires further research
Marketing/Licensing
Abandon
EVALUATION
ACTION
PLAN
Cleveland Clinic Healthcare
Innovation Alliance
• The Healthcare Innovation Alliance is a
program to manage the innovation and
commercialization functions for hospital
systems, academic institutions and corporate
partners across the country. We leverage the
size and capabilities of the collective Alliance
to improve the visibility of innovative products
and to expedite commercialization.
IP Policy
1. Inventor
discloses Ideas
and assigns to
VCOM
2. IP Office
manages
protection and
marketing
3. License
revenues split
50/50 between
Inventor(s) and
VCOM
The IP Office will do all the heavy lifting
In Conclusion…
• Working together, we
can make sure VCOM
innovations are
managed so they
have the best chance
to make a difference
in art of teaching or
the practice of
medicine!