1. INTELLECTUAL PROPERTY
Michael Jaremchuk
Associate Director
CVIP
Phone: FAX:
CVIP Website:

2. 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

3. 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

4. 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

5. 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

6. 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)

7. 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

8. 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

9. 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.

10. 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

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