What are the types of intellectual property?

Intellectual Property Patents Copyrights Trademarks Trade Secrets

Patents Coverage: Invention/technology Requirement: Useful / New / Non-Obvious Awarder: United States Patent and Trademark Office Mechanism: Grant of Patent Time Period: 20 years from Filing

Copyrights Coverage: Writing, painting, sculpture, recording, performance, software Requirement: Original work Awarder: Copyright law Mechanism: Notice (©,Year, Name) & registration with Library of Congress Time Period: Author’s life + 70 years or if “work made for hire” (corporate authorship) earliest of 95 years after publication or 120 years after creation of work.

Trademarks Coverage: Word/symbol for goods, services or company Requirement: Distinctive Awarder: United States Patent and Trademark Office Mechanism: Use & registration Time Period: As long as used

Trade secrets Coverage: Invention/technology/business information Requirement: Secret Awarder: In house Mechanism: Employee secrecy agreement and security Time Period: As long as secret and protected

What is a patent? A patent gives its owner the right to exclude others from making, using, selling, and importing an invention for a limited period of time, usually twenty years from patent filing. The patent rights are granted in exchange for an enabling public disclosure of the invention.

Patent Definitions Invention - new methods, machines or compositions (abstract ideas are not patentable) Novel - something new that has not been known by anyone before or has not existed before Prior Art – publically available information prior to the following of the patent

Patent Definitions Claim – A patent claim defines the limits of the right to exclude. Specification – Must describe the subject matter in sufficient detail so that one of skill in the art can make or use the invention Infringement - unauthorized making, using or selling of an invention covered by someone else’s patent.

Patent Definitions Priority date - Date of initial filing if subsequent filings meet certain deadlines Doctrine of equivalents – even though an infringing device or process does not fall within the literal scope of a claim, it is considered to be an equivalent of the claimed invention.

Inventors Persons who have intellectual contributed to the final concept of the invention as described in the patent claims Not individuals who have undertaken tasks in the reduction to practice or validation

Patent Prosecution The back and forth with the US Patent and Trademark Office to obtain a patent

Patent Prosecution Basic Process File patent application USPTO usually rejects claims in an “Office Action” File a response to the Office Action arguing that the patent claims are valid (depends on rejections raised on Office Action) Possible additional rejections and responses Hopefully the PTO eventually allows patent claims (possibly amended) and the patent issues Can take several years (depends on the technology)

Patentability 3 requirements Utility (useful) Novelty (new) Non-obvious (to someone skilled in the art)

Novelty USA After initial public disclosure by the inventor there is a grace period up to a year to file for patent protection in the USA The grace period is for the US patent only Non-USA There is no grace period for most countries. The public disclosure of an invention disqualifies the invention for European and most foreign patent protection Multinationals require global protection File for patent protection before publishing if commercializing

Protective documents Invention disclosure Non-disclosure (confidentiality) agreements Material transfer agreements Inter-institutional agreements of cooperation

Issuance Patents are awarded to the party that is the first to file, not the first to invent; new condition in the USA in 2013 Though issued in the name of the inventors, the patent may be owned by an assignee

Filing types Country (USPTO) Community (European Patent Office - EPO) Treaty (Patent CooperationTreaty - PCT)

Licensing

Reasons to out license Validates technology Attracts new investors or licensees Advances technology at quicker pace Brings capital Depending on agreement, may give access to new skills or resources

Reasons to in license Access to new capabilities Leverage novel technologies To acquire products or technologies

Concerns of licensor Money Publicity Speed Ownership rights Residual rights Markets Territories

Concerns of licensee Compatibility with strategic direction Markets Time to market Territory Return on investment (ROI) Control of development process

EVMS Technology Transfer For questions or to file an invention disclosure contact EVMS Technology Transfer Director of Technology Transfer Paul B. DiMarco dimarcpb@evms.edu 757-446-7112