INTELLECTUAL PROPERTY Michael Jaremchuk Associate Director CVIP Phone: 577-6121 FAX: 545-3632 Email: jaremchuk@research.umass.edu CVIP Website: http://www.umass.edu/research/technology-transfer

Intellectual Property Examples Intellectual Property is any product of the human intellect that may have value in the marketplace. Ideas, inventions, and expressions are all examples of IP. IP law involves Patents, Trademarks, Copyrights, Trade Secrets Patent: the right granted to a person or legal entity to exclude others from making, using or selling the “claimed” invention Trademark: any word or symbol which is consistently attached to goods to identify and distinguish them from others in the marketplace (ex. a brand name).  Copyright: the right given to the author of an original work of expression to exclude others from copying or commercially using that work without proper authorization.  Trade Secret: any information, design, device, process, composition, technique or formula which is maintained as a secret and which affords its owner a competitive business advantage

General Information Patents and Trademarks …….are granted by the USPTO. They must be “applied for” and “registered” Copyrights and Trade Secrets …..are self defined. Must issue notice of a Copyright when you distribute your work. (Notice should read: Copyright ) Must act to “protect” a Trade Secret

What is a Patent? A right granted by the government to a legal entity; To exclude others from making, using or selling the invention “claimed” in the patent deed; For 20 years; Provided that certain fees are paid. A patent is like a piece of property and can be sold outright for a lump sum or licensed in return for royalty payments

Types of Patents Utility Patents Inventions which function in a unique manner to produce utilitarian results Application consists of: Detailed description teaching how to make and use the invention Claims which define the invention Drawings of the invention Design Patents Inventions which describe a unique shape or design that is ornamental or aesthetic Application consists of: Drawings of the shape Plant Patents Inventions which are asexually or sexually reproducible plants

Patentable Inventions Mechanical or electrical devices Unique processes Software, algorithms, designs New compositions of matter New uses of materials Significant improvements Biologicals (assays, cell lines, gene sequences, targets, transgenics)

Basic Technical Requirements Novelty Invention must be different from what is already known to the public (“Prior Art”) Slight differences qualify Unobviousness At the time of the invention, it is considered unobvious to a person skilled in the art New, unexpected, surprising, far superior results qualify

Administrative Issues Patent Filing Deadlines US: Within one year after a public disclosure (commercialization, publishing of details……) Overseas: Before public disclosure Patent Life 20 years from the date of filing Patent Scope Granted by the Federal Government through the United States Patent and Trademark Office (a division of the Department of Commerce) Valid for the US, its territories and possessions Is transferable by gift or sale

Common Patent Misconceptions A patent gives one the right to practice an invention. A patent gives you the right granted to exclude others from making, using or selling your invention. You may practice your invention without a patent, provided that it is not covered by someone else’s patent. Once you patent an invention, you will become rich and famous. If the invention isn’t commercialized, the patent is usually worthless. If a product has been patented, it is bound to be superior. A patent means the invention is different, not necessarily better.

How a Patent is Lost Maintenance Fees are not paid A prior art reference, unknown at the time the patent was issued, is uncovered and shows that the invention was not new The inventors were not properly designated The owner engages in certain illegal activities, such as anti-trust violations The patent is seized or lost in a general legal proceeding

PROTECTION OF PROPRIETARY INFORMATION PUBLIC DISCLOSURE CONFIDENTIAL DISCLOSURE AGREEMENT MATERIAL TRANSFER AGREEMENT CONSULTING DISCLOSURE