Intellectual Property. John Ayers February 25, 2005

What is intellectual property? Intellectual Property is something produced using human intellect which has commercial value.

How Intellectual Property Law Works Affirmative Rights, NOT Protection Allows owner to file a lawsuit against a transgressor Does not stop a transgressor

Types of IP Law Trade Secret Law Copyright Law Trademark law Patent Law

Trade Secret Law What is a trade secret? –It gives the owner a competitive advantage. –It is something the owner has tried to keep a secret by reasonable precautions. Trade Secret Law allows the owner to file suit against parties who wrongfully obtain and use a trade secret. Trade Secret Law derives from State and Federal Law International Protection stems from the GATT (General Agreement on Tariffs and Trades)

Copyright Law Protects creative works –Books –Paintings –Software –Web sites It protects the exact expression, but not the underlying ideas. Originated in the U.S. Constitution International protection by Berne Convention Protection can exceed 100 years

Trademark Law Protects distinctive symbols –Names –Logos –Slogans Originates in state and federal statutes International Protection by Paris Convention Protection can be indefinite

Patent Law Protects inventions Originated in the U.S. Constitution International Protection by Paris Convention and Patent Cooperation Treaty

Types of Patents Utility Patent –Most common –Expires 20 years after application Design Patent –Expires 14 years after application Plant Patent –Expires 17 years after application

Utility Patent Novel Nonobvious Invention must have some usefulness (even if humorous) Invention must work, at least in theory What is patentable? –Processes –Machines –Manufactures –A composition of matter –A new use for one of the above

Design Patent Novel Nonobvious Purely aesthetic or ornamental in nature No utility

Plant Patent Novel Nonobvious This is not what you think Asexually or sexually reproduced flowers or other plants Least frequently used type of patent

How do I apply for a patent? An Application is filed with the U.S. Patent and Trademark Office (USPTO) The application must –Show how to make and use the invention –Explain why the invention is novel –Describe which aspects of the invention are patentable An application fee is required ($710, large entity; $355, small entity) Large Entity: for-profit company with 500 or more employees

The Patent Application Application Transmittal Form (PTO/SB/05) Fee Transmittal Form (PTO/SB/17) Specification –Title –Cross-Reference to Related Applications –Background –Detailed Description –Claims –Abstract Drawings (when necessary) Oath or Declaration

Under what circumstances will my patent by approved? The PTO patent examiner will first determine if the invention is novel. If so, the patent examiner will determine if the invention is nonobvious. Typically, it will require much back-and-forth negotiation (years!)for the inventor to demonstrate that the invention is novel and nonobvious. If the inventor prevails, a patent will be issued upon payment of the issue fee ($1250 large entity; $625 small entity)

What if someone else applies for the same patent? This is called an interference. A hearing is held to resolve an interference. The key issues in an interference hearing are –Who first conceived the invention –Who first built the invention –Who first documented the invention

How can I prove I was first? Dated entries in laboratory notebook Preliminary Patent Application (PPA) –Requires only adequate description of invention –Requires patent application within one year Disclosure Document Program (DDP) –A disclosure is filed with the PTO –Requires patent application within one year

How do I use a patent? Develop and sell the invention License the invention to one manufacturer (exclusive license) License the invention to multiple manufacturers (non-exclusive license) Companies may trade licenses for mutual benefit (cross-licensing)

Who Applies for US Patents? USA149,825 Source: USPTO, 1999 statistics. Japan47,821 Germany16,978 Taiwan9,411 UK6,948 France6,216 Canada6,149 S. Korea5,033 Foreignors120,362

Conclusion IP Law – Affirmative Rights, not protection Types of IP Law: Trade Secrets, Copyrights, Trademarks, Patents Sources: US Constitution, State and Federal Law, International Treaties Intellectual Property Laws encourage individuals and corporations to make intellectual contributions which benefit us all.

References US Patent and Trademark Office World Trade Organization: Elias, Stephen, Patent, Copyright, and Trademark, 3 rd Edition (Nolo.com, 1999).