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Intellectual Property Basics Thad McMurray Intellectual Property Manager.

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Presentation on theme: "Intellectual Property Basics Thad McMurray Intellectual Property Manager."— Presentation transcript:

1 Intellectual Property Basics Thad McMurray Intellectual Property Manager

2 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Types of Protection Patent Design Utility Copyright Trademark / Servicemark Trade Secret/Know How What is “Intellectual Property”? SM TM

3 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved IP Protection Copyrights Life + 70 years OR 95/120 years Trademarks Potentially Forever Trade Secrets Potentially Forever Patent 20 years First steps: Knowledgeable Researcher Laboratory Notebooks Patent Disclosures

4 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Copyright A right granted by U.S. Federal law Original expression found in works of authorship fixed in tangible medium Section 102(a): literary works (including computer programs); musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic and sculptural works; motion pictures and audiovisual works; and, sound recordings and architectural works. Exclusive Rights: 1. Reproduction 2. Preparation of derivative works 3. Distribution via public sale, rental, lease or lending 4. Public performance or display of works including a literary, musical, dramatic, artistic or digital work Arises automatically the moment an original work of authorship is fixed in a tangible medium of expression Last 70 years after author’s death, or 95/120 years

5 Laboratory Notebooks

6 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Laboratory Notebooks Bound notebook Sequentially numbered pages Record in ink Cross out, don’t erase (mistakes only) No blank space: lines to bottom Explain what you feel is novel Cross reference (even e-records) Securely affix inserts (sign and date across edge) Sign and date entries, changes, corrections Secure

7 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved What should be included? Instruments used Experimental data Concepts and ideas Procedures and protocols Formulas and calculations Content/date of outside collaborations Raw data/results (both favorable and unfavorable) Results of brainstorming sessions (identify contributors of novel ideas) Laboratory Notebooks

8 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Identify the project for each entry Write complete descriptions, recording all the “little details”: What was done Who did it Why it was done Who suggested it What were the results What conclusions can be drawn Laboratory Notebooks

9 Invention Disclosures First line of protecting your IP

10 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Disclosure –Protecting IP - Any public disclosure before filing appropriate intellectual property protection will adversely affect patenting or other forms of protection. –Give yourself time - initial disclosure assessment can take several months. The sooner you submit your disclosure, the easier to fully review invention and secure any intellectual property rights. Alert Corporate Counsel or appropriate management of any needs for early disclosure. –ALWAYS USE an NDA if you must disclose potential IP subject matter.

11 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Disclosure (con’d) –Evaluation - When you submit a disclosure the company evaluates it for commercial potential. This evaluation includes market and patentability assessments. –Not all inventions are patentable - For an invention to be patented, it must meet the legal standards of novelty, non-obviousness, and usefulness, as outlined by the USPTO. An assessment is made for each disclosure. You may be asked to review certain patents and publications to help determine if they impact the patentability of your disclosure.

12 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Disclosure (con’d) –Insufficient commercial potential - It is important to understand that even though a discovery may be patentable, the commercial potential may not justify the patent investment. There are significant costs associated with patenting. This is an important consideration in the disclosure assessment process. –Copyright - Copyright is another form of intellectual property protection. Although a patent application may not be appropriate for certain types of technologies, copyright may be. Computer software is often copyrighted rather than patented.

13 What is Patentable?

14 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Patentable Compositions of matter Articles of manufacture Processes or methods Computer programs Business methods Designs Plants Improvements on above What is Patentable? Non-Patentable Data Abstract ideas Laws of nature Natural phenomenon Naturally occurring organisms "Anything Under the Sun that is Made by Man" (U.S. Supreme Court, 1980) If it is the result of human intervention = patentable subject matter

15 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved UsefulNovelNonobvious Enablement & Written Description Requirements for a Patent

16 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Inventors should not do any of the following without determining whether patent protection should be sought for the technology: Display or discuss the invention at a seminar, lecture, workshop, poster presentation or trade show open to the public, or Disclose the invention without a signed Confidentiality (or Non-Disclosure) Agreement, or Disclose the invention on inventor’s or University’s web site, or Submit an article to a journal for publication, or Publish a manuscript, letter, note or chapter in format available to the public, or Offer for sale or sell the invention, or Distribute samples of the product to customers or collaborator, or Consumer or market test a new product, or Distribute advertising brochures about the invention, or Demonstrate a prototype to a public group. Public Use/Offer for Sale

17 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights ReservedNovelty Published or patented anywhere before invented Journal, Poster presentation, Non-confidential grant submission, Abstract, Website, Newspaper, Magazine, TV, etc. Known or used by others in the U.S. Thesis defense Presentation Offer for sale or used publicly in U.S. more than 1 year before application filed Patent or described in a printed publication more than 1 year before application filed Another files an application before your invention date All Elements

18 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Non-Obviousness Single reference or combination of two or more Review scope and content of the art Look at a person of ordinary skill in the field Contrast art against the “claimed” invention

19 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Non-Obviousness Arguments against obviousness: Long Felt But Unsolved Needs Failure of Others Prior Art Teaches Away Commercial success All elements of the claimed invention are not taught or suggested by the reference or combination of references Proposed modification of the reference renders the reference inoperable ***Include in application comparison data with state of the art and/or failure data

20 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Non-Obviousness More Arguments against obviousness: There is no reasonable expectation of success There is no teaching suggestion, or motivation to combine the references Combination of elements is not obvious The prior art does not work, or does not work as well as the invention History of failed attempts Two or more changes away from the cited reference may/should be considered undue experimentation Simplification of a process may constitute a patentable invention Success of invention not obvious even if it is “obvious to try” – lack of complexity of invention is not evidence of obviousness.

21 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Enablement and Written Description “It is not the reward for the search, but the compensation for its successful conclusion,” Brenner court Enablement Specification: enough detail to enable one to practice your claimed invention (w/o undue experimentation) Written Description Specification: evidence that applicant was in possession of what is claimed Constructive Reduction Able to describe the invention in such detail that it would enable one skilled in the art to make and use that which is disclosed Actual Reduction Build a working invention An experimental machine that does not demonstrate utility is insufficient

22 Inventorship, Ownership, Cost & Value It is all about making money

23 The “quid pro quo” of the patent system Early disclosure of technical information for a “patent monopoly”, i.e., exclusive rights Companies may use patents to Show value. Patents are treated as assets Sell, trade or use as financial vehicles, treated as a commodity. For product protection from others use As negotiating leverage in their questionable infringement on others patents Motivation

24 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Inventorship An inventor is... A person who “conceived” or made a material contribution to the conception of the invention or at least some part of the claimed subject matter Inventorship is a legal determination An inventor is not... One who merely suggests an area of research or a desired result (or simply identifies a problem); One who only follows the instructions of the person who first conceived the solution; Co-authors and investigators listed for an academic paper are not necessarily “inventors” Supervisors are not necessarily inventors

25 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Ownership In the U.S. ownership initially rests with inventor! Assignment: Transfer of ownership Most universities and companies have statutes or company rules that require assignment

26 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved When do I have an invention? You might have an invention if... No one has solved the same problem or addressed the same need... In the same way... To achieve the same result Two elements of an invention Mental – constructive reduction Physical – actual reduction

27 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Costs US Application Patentability Search and Opinion: 1.5-5K Patent Preparation: 4-20K Fees: Patent Prosecution: 4-15K Allowance Fees: Maintenance Fees: ,000 PCT and Foreign Filing: 2K Foreign National Stage Filings: 3-6K Translation Costs: 5-10K Prosecution and Annuities: 4-15K

28 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved It’s a Patent, But Can You Commercialize It? –Only 2 – 4 % of all patents are ever commercialized –Even in Industry only as high as 10% It Gets Commercialized, But Does It Get to the Market? –Funding –Distribution –Competition Does It Make Any $? –For the company? –For investors? Patent Value

29 End Thanks to UB-STOR for providing this material

30 What is a Patent

31 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Term is 20 years from filing of application (Everything before June 1995 – choice of which ever is longer 17 yrs from issue or 20 yrs from filing) Purpose of a Patent? Basic Principle: Inventor – Discloses invention to public in sufficient detail to show something new and significantly different Government – Grants inventor right to exclude use by others for some period EXCLUDE Patent Gives Right to EXCLUDE Prevents others from making, using, selling, offering for sale, or importing

32 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Design Patent - protects only the ornamental appearance of an article, and not its structure or utilitarian features, i.e., protects the way an article looks (35 U.S.C. 171). Term: 14 years from date of issue

33 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Anatomy of a Patent Title Specification –Abstract –Background –Brief Description of the Invention –Brief Description of the Drawings –Detail Description of the Invention Drawings (if needed) Claims –Deed of your patent –Define the boundaries of your invention –Infringement occurs if every element of at least one claim

34 Path of Patenting

35 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Prepare the application – interview and discussion with patent attorney –Draft claims that are broad but narrow enough to overcome any prior art File the Application Prosecution – dialogue with the patent office –Examiner will reject application based on prior art that was found –Applicants supply reasons why the claims are patentable in spite of the cited art OR –Amend the claims Allowance and Issuance Patent Path

36 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Prosecution Flow Chart Patent application filed Examination by USPTO Patent issuesRejection of Application 2 nd examination by USPTO Patent issuesFinal rejection Applicant’s reply Patent issues Reverse rejection Appeal to BPAI Appeal in District Court or Fed Circuit Affirm rejection Denial Appeal of Final Rejection Board of Patent Appeals and Interferences

37 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved InventPrepare Patent Application (interview and discussion with patent attorney) (draft broad claims that do not read on prior art) File Patent Application with USPTO (Provisional or Non-provisional) Patent Prosecution Application is Published (Negotiation with USPTO) (18 Months after Filing) Patent Issues (Patent Exclusivity Starts) 3, 7 and 11 Year USPTOPatent expires 20 years Maintenance Feesfrom filing date Patenting Process in the U.S.

38 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Timeline Invent Disclose U.S. filing deadline Invent Non-Provisional Patent Application Conversion Decision & PCT (foreign) Filing Deadline File a U.S. Provisional Patent Application 1 year Loss of foreign rights 1 year

39 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Prior Art Standard against which you have to establish patentability of your invention Disclosed in publications; Known to others before you; Patented by others before you; Offered for sale or in use by others; Published or publicly used or disclosed by you more than one year ago

40 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Duty to Disclose 37 C.F.R. § 1.56(a) imposes a duty on patent prosecutors to disclose information material to patentability. (IDS) –The duty extends to inventors, legal assigns, patent attorneys and agents, staff, and anyone involved in the preparation and prosecution of the patent application. –Need to be sure to pass along references material to patentability to outside counsel

41 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Public Disclosures Why are these important? First to invent – One year grace period to file patent application First to file – Patent application must be filed before ANY public disclosure Abstracts Manuscripts Websites Oral presentations Poster presentations Theses and Dissertations Grant Awards Offers for sale Public Use

42 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Provisional Patents One year lifespan Not examined by the USPTO Do not trigger the 20-year patent term Establish an early filing date

43 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved The Patent Cooperation Treaty (PCT) is an international agreement that created a system for filing patent applications internationally without having to initially file an application in the patent office of each selected country. Patent Cooperation Treaty (PCT)

44 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved Invent File PCT International Patent Application With USPTO (Often relying on Provisional filing date) Prior Art SearchApplication is Published is Carried Out (18 Months after Filing) National Stage Filing and Prosecution (30 Months After Priority Date) Patenting Process under the PCT Country 1 Prosecution Country 1 Patent Issues Country 2 Prosecution Country 2 Patent Issues Country 3 Prosecution Country 3 Patent Issues Country 4 Prosecution Country 4 Patent Issues

45 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved PCT filing is key to securing “global” patent coverage Benefits of Using PCT PCT filing makes technology more attractive and valuable PCT filing reduces overall patenting costs

46 Thad McMurray, Intellectual Property Manager © 2007, Research Foundation of State University of New York, All Rights Reserved USPTO: European Patent Office: The Invention Blog: Patently-O: Just a Patent Examiner: PHOSITA: Patent the Progress: PDFs of Patent: Useful Patent Sites


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