T5-1ENT Tools for Innovation: Intro to Intellectual Property Jonathan Weaver UDM Mechanical Engineering Department

T5-2ENT References Karl T. Ulrich & Steven D. Eppinger. Product Design and Development. Second Edition. McGraw-Hill,

T5-3ENT Thomas Edison's patent application for an "Improvement in Electric Lamps," November 1, Source: MIT OCW

T5-4ENT Patents and Intellectual Property The Congress shall have power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. –The Constitution of the United States, Article 1, Section 8

T5-5ENT Ted Hagelin - What Every Researcher Should Know About Patent Law - RPI Biotechnology Management & Entrepreneurship Seminar Series

T5-6ENT Patents and Intellectual Property Four types of IP: –Patent –Trademark –Trade secret –Copyright Let’s take a brief look at each, then a deeper dive on patents

T5-7ENT Patents A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. US patent grants are effective only within the US, US territories, and US possessions. The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States.

T5-8ENT Trademarks A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark.

T5-9ENT Trade Secrets Internal secrets vigilantly guarded by companies (no external disclosure or registration)

T5-10ENT Copyrights Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. Registration is not required – and copyright comes into being when the work first appears in tangible form.

T5-11ENT Types of Patents Design –A patent on the ornamental design of a product Utility –A new process, machine, article of manufacture, composition of matter, or a new and useful improvement of one of these things –May be regular ($500 plus attorney fees) or a less detailed provisional (“patent pending”) ($100 plus attorney fees) Plant

T5-12ENT What is Patentable? Useful Novel – new and not revealed to the public more than a year ago Nonobvious A patent cannot be obtained upon a mere idea or suggestion. –The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. –A complete description of the actual machine or other subject matter for which a patent is sought is required.

T5-13ENT Preparing a Disclosure U&E suggest a 7 step process: 1.Formulate a strategy and plan 2.Study prior inventions 3.Outline claims 4.Write the description of the invention 5.Refine claims 6.Pursue application 7.Reflect on the results and the process U&E describe each step more. Here, we’ll proceed to patent searching.

T5-14ENT Patent Search USPTO has an online patent database –Keyword searchable (but what are the right keywords?) –Still classified by class, subclass designations –URL is A keyword search may help get you started, but eventually you’ll end up searching by classification Once you find a few relevant patents, it can be helpful to explore all the patents referenced by those initial patents, and all the patents which reference those initial patents (cited in) to find other relevant patents as well as the appropriate classifications to search more thoroughly The USPTO search engine supports: –searches by area of the patent (title, abstract, assignee, etc.) –AND, OR, ANDNOT booleans and $ for wildcards) –Parenthesis to group terms (i.e., (diesel$ or gas$) AND auto$))

T5-15ENT Patent Search The European Patent Office has a more user friendly (I find) filing arrangement and search engine, and includes most US Patents in its database – on=FormGen&Template=ep/EN/home.htshttp://ep.espacenet.com/search97cgi/s97_cgi.exe?Acti on=FormGen&Template=ep/EN/home.hts

T5-16ENT Patent Search A nice patent search tutorial (though I tend to do keyword searches earlier than they suggest): – tutorial/index.htmhttp:// tutorial/index.htm I’ve not used it much, but students speak highly of Google’s Patent Search option Other useful sites: – you can subscribe for updates on newly published patents related to a search querywww.freshpatents.com – free pdf’s of patentswww.freepatentsonline.com