Intellectual Property. EMBL Summer Institute 2010 Dusty Gwinn WVURC

Transcription

1 Intellectual Property EMBL Summer Institute 2010 Dusty Gwinn WVURC

2 Presentation Outline Intellectual Property Patents Trademarks Copyright Trade Secrets Technology Transfer Tech Marketing Tech Assessment Business Incubation Summary Patent Pending

3 U.S. Constitution Addresses Intellectual Property The Founding Fathers of the U.S. realized the importance of Intellectual Property for the development of our country. U.S. Constitution Article 1, Section 8, clause 8 states: The The Congress shall have power to promote the Progress of Science and Useful Arts, by securing for limited times to the authors and inventors the exclusive right to their respective writings and discoveries

4 What is Intellectual Property (IP)? Property created by intellect, not naturally occurring. Although intangible, IP is considered property in the sense it can be owned, sold, licensed (rented), willed, etc. Types of Intellectual Property i. Copyrights ii. Patents iii. iv. Trademarks Trade Secrets

5 PATENTS

6 Patents Temporary monopoly extended to the patent owner by the government. The monopoly is granted in exchange for full disclosure of new technologies. Patent rights exclude others from making, using, selling, or importing that which is patented. Does NOT give the owner the right to make, use, sell, or import that which is patented.

7 Anatomy of a Patent Administrative Details Prior Art References Detailed Disclosure Reveals Best Mode Detailed Drawing(s) Inventor, Assignee, Attorney/Agent, Filing Date, Priority Date, Issue Date, etc. Patents, publications, web pages, etc. Enables one of ordinary skill in art to make or use invention. All elements in claims should be shown. Claims Defines Legal Scope Every word has significant legal meaning.

8 Motivations to Patent Technologies Defensive Deters others from entering into the same market. Patent owner maintains control of the technology. Offensive May sue infringers for damages. May stop infringers from making, using, selling, and importing. Licensing/Commercialization Earn licensing fees and royalty income. Demonstration of Capabilities

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10 Types of Patents Utility Patent - Under federal statute, any person who "invents" or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent." Design Patent - protects the way an article looks but not how it functions. Plant Patent - may be granted when a new variety of plant is discovered and asexually reproduced.

11 Utility Patents To be an invention, there must be at least conception of an idea and a reduction to practice. The inventor s best mode to make and use the invention must be revealed. The idea must also have all of these three attributes to be patentable: Novelty (must have at least some element which is new to the world) Usefulness (have any utility) Non-obviousness obviousness to one of ordinary skill in the art.

12 Utility Patents (cont d) Statutory Statutory Bars to Patentability Public disclosure or use more than one year prior to filing patent application. A public disclosure of the invention immediately bars patentability in many foreign countries. Offer for sale more than one year prior to filing patent application.

13 Utility Patents (cont d) Types of Utility Patent Applications Provisional Patent Application Available since 1995 to provide a fast and inexpensive way to establish a filing date and patent pending status. Non-Provisional Patent Application Standard patent application in the Patent Office. May refer to a previously filed provisional application for priority date.

14 Provisional Patent Application A place holder application whereby an official priority date is obtained and held for one-year in the US Patent Office. Never reviewed nor will it issue into a patent without converting to a non- provisional application. No such thing as a provisional patent, only a provisional application. File One Year Convert

15 Provisional Patent Application (cont d) Must be as complete as a non-provisional application with respect to disclosure. Claims are not required unless applicant plans to file internationally. Filing cost is much less than non-provisional application. Provides patent pending status for one year only. Beware of pitfalls.

16 Non-Provisional Patent Application A formal application that may issue into a patent in time. Time to issue into a patent typically varies from 1.5 years to 5 years depending on numerous factors. Length of patent term is 20 years from date of filing of non-provisional application.

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18 Specific Types of Utility Patents Machine Process Article of Manufacture Composition of Matter

19 Specific Types of Utility Patents (cont d) Machine An apparatus, device, or mechanism that will operate to produce a desired result. Components may all be known, however, the machine may still be patentable if it is configured and operated in a novel, useful, and non-obvious obvious manner.

20 Specific Types of Utility Patents (cont d) Process A method consisting of one or more steps. Focuses on the steps required to produce the desired result rather than any physical materials used to achieve the result.

21 Specific Types of Utility Patents (cont d) Article of Manufacture Any article made for use from raw or processed materials. The articles are not machines, but rather generally more simple structures. Examples include a toothbrush, a paperweight, a table, etc.

22 Specific Types of Utility Patents (cont d) Composition of Matter May include physical mixtures or chemical compounds. The substance is the patentable element, not the form of the matter or process for manufacturing it. A bar of soap is an article of manufacture but the soap compound itself is a composition of matter.

23 Design Patents Design patents protect a new, original, and ornamental design for an article of manufacture. Design patents do not protect the utility of the article. The term of a design patent is 14 years.

24 Plant Patents Protects any new and characteristically distinct variety of plant that has been invented or discovered and asexually reproduced (without seeds). Plant must not be discovered in an uncultivated area (i.e. can t be discovered in the wild). The term of a plant patent is 20 years from the date of filing.

25 Duty of Disclosure to Patent Office Inventor is under duty to disclose to the Patent Office any other known prior art that may be considered material to the patentability of the invention. Willful withholding of known prior art can result in loss of all patent rights for the invention. Disclosing all known prior art during patent prosecution results in a stronger patent.

26 Patenting Software An evolving area of patent law Only machines, processes, articles, or compositions of matter may be patented. No category exists for software. Software may be patentable if it can be incorporated into a process or machine patent category. Algorithms by themselves are non-patentable.

27 Simplified Patent Prosecution Conception of idea Public disclosure or offer for sale more than one year ago? No US application filed in USPTO Yes Statutory bar to patent First office action from USPTO (almost always rejection) Extremely rare Response to office action by applicant (Amendments, written arguments, interview) Is patent application now in condition for allowance? No Second office action from USPTO (Usually final rejection) Yes Second office action from USPTO (Allowance) Notice of allowance of patent Payment of issue fees Request for Continued Examination Appeal Successfully amend or argue Patent Issued (1-5 years after filing)

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29 Inventor Protection of Ideas under Development Proper record keeping is critical. Record keeping is often viewed as laborious and tedious by an inventor and is often neglected. Record keeping can become key to establishing the true inventor. Can prove date of invention. Can prove inventor diligence in reducing concept to practice. The U.S. is currently a first to invent country. ( invention means conception and reduction to practice) Record daily progress in a handwritten, bound notebook.

30 Inventorship Differs from Paper Authorship Authorship of Paper Authors of papers often include those persons who contributed in some way to the paper, either through collecting data, analyzing data, drafting the text, etc. Usually, the names of the authors are listed in order from the most contributing author, first, to the least contributing author, last. Smith, A., Jones, B., Public, Q., Smart, B., Publish, I., Tenure, M. Y.,

31 Inventorship Differs from Paper Authorship (cont d) Inventors of an Invention Inventors must have a definite part in the conception of the invention which results in at least one claim of the issued patent. One who simply reduces a patent to practice is not an inventor. All inventors must sign a legal oath and declaration that they are inventors. Each inventor has equal patent ownership unless another agreement exists.

32 Who is NOT an Inventor? The following are examples of persons involved with an invention but who are not inventors of the invention. A machinist who makes parts for a prototype is not an inventor. A computer programmer who simply writes computer code for the invention is not an inventor. A patent attorney or agent who drafts the language in the patent application is not an inventor. A person who gives advice on how to reduce the concept to practice is not an inventor. A person who tests the device and records performance data is not an inventor.

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34 Trademarks

35 Trademarks A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. Registration with the USPTO is required to enforce the trademark in a court of law. Rights in a federally-registered registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times.

36 Trademarks (cont d) The symbol may only be used after trademark registration is complete. The symbol TM may be used immediately by unregistered trademarks to claim rights to the mark and to provide notice to the public of your claim.

37 Trademarks (cont d) Advantages of Registering Trademarks Federal Courts may prevent others from improperly using your trademarks on their goods and services. May receive up to three times your damages ( treble damages ) if a party is found by a court to be willfully using or infringing on your mark. May file applications for trademark registrations in other countries, based upon your United States Registration. May prevent people and/or businesses from other countries from shipping goods into the United States that falsely display your mark on their goods.

38 Trademarks Registration Issues Proposed mark causes confusion with a previously registered mark. Proposed mark is immoral, deceptive, or scandalous. Proposed mark disparages, falsely suggests a connection with or brings into contempt or disrepute: persons, institutions, beliefs or national l symbols. Proposed mark consists of the name, portrait or signature of particular living person without his or her consent. Proposed mark is just a surname. Proposed mark misdescribes the goods or services to which it is applied.

39 COPYRIGHTS 2010 West Virginia University

40 Copyright An idea is not protected here, but rather the tangible expression of the idea. Exists immediately whenever an expression is fixed in a tangible medium (paper, electronic media storage, etc.) Requirements: The expression must be original The expression must be creative (minimally) but not simply a compilation of data (e.g. a telephone book). The expression must be put into a tangible form.

41 Copyright (cont d) Rights excludes others from copying, distributing, displaying publicly or making a derivative from the original work. Registration with the U.S Copyright Office is not necessary to create right, but is necessary to enforce the right in court for damage remedies. Life of Copyright - life of the author plus 70 years or, as work for hire - 95 years from publication or 120 years from creation, whichever occurs first.

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43 Trade Secrets

44 Trade Secrets Information, including a formula, pattern, compilation of data, program device, method, technique, or process, that: (i) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

45 Uniform Trade Secret Act Federal Law currently adopted by 38 jurisdictions. Information must not be generally known or readily ascertainable. Information must have independent economic value due to its secrecy. The trade secret holder must use reasonable measures under the circumstances to protect.

46 Points to Remember Copyrights provide protection for the expression of an idea, not the idea itself. Copyrights are established immediately when the expression of an idea is in a tangible form. Copyrights must be registered with the U.S. Copyright Office to sue for infringement damages.

47 Points to Remember (cont d) A patent is an agreement between the inventor and the government full disclosure in exchange for temporary monopoly. A patents protects a composition of matter, an article of manufacture, a method or process, or a machine. A patent provides its owner with the right to exclude only. A patent is simply a license to sue an infringer. An otherwise patentable invention can be lost if improper disclosures are made.

48 Points to Remember (cont d) Trademarks protect words, names, symbols etc. used to distinguish a manufacturer or seller of goods. Trade Secrets protect information, ingredients, process etc. which may be critical to manufacturing a unique product or providing a unique service.

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50 Contact Info Dusty Gwinn, J.D., MBA, Licensing Associate, Registered Patent Attorney 56,