1. What are the types of intellectual property?

2. Intellectual Property
Patents
Copyrights
Trademarks
Trade Secrets

3. 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

4. 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.

5. 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

6. 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

7. 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.

8. 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

9. 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.

10. 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.

11. 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

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

13. 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)

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

15. 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

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

17. 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

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

19. Licensing

20. 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

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

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

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

24. EVMS Technology Transfer
For questions or to file an invention disclosure contact
EVMS Technology Transfer
Director of Technology Transfer
Paul B. DiMarco