1.  Intangible property  Patents  Copyrights  Trade secrets and know-how  Trademarks © TM

2. United States Constitution  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.  Basis for patents and copyrights.

3. “While Inventions and copyrightable works are not the primary objectives of University Research, when they occur the University has the responsibility of insuring that such Inventions and Works are used and controlled in a manner that benefits the public, the Inventor or Author and the University to the fullest extent possible.”  Board Policy 210.1

4.  Inventor-employees receive 50% of the first $200,000 in net licensing net revenues.  35% of any net revenues above $200,000.  Board does not exercise rights over non-employee inventions.  May accept intellectual property from third parties UA Board Policy 210.1 (rev’d 2001)

5.  Mission: To commercialize world-class research to build a sustainable knowledge-based economy to benefit Arkansas and the world.  http://www.uark.edu/ua/tlo/ http://www.uark.edu/ua/tlo/

6.  Right to exclude others  Limited time (usually 20 years from filing)  Scope determined by claims (found at end of patent)

7.  Novel, non-obvious and useful  Utility (includes plants)  Ornamental, novel and non-obvious  Design  Asexually reproduced, distinct and new plants  Plant patent  Novel, sexually reproduced plants  Plant variety protection

8.  Premature disclosure! (Losing novelty)  Publishing or presenting your work  Absolute bar in most countries  Starts one year clock ticking in US  Even mere predictions can start the clock  Electronic publication counts  Offering for sale

9. Claim Example 1. A pet display vest for a person,  having an elongate, enclosed, pet receiving, passageway extending there across with  at least one closable pet admitting entry,  at least part of the passageway being transparent  so that, when the vest is worn, a pet moving along the passageway across a wearer's body can be viewed by a spectator.

10. Patent Searching  http://www.uspto.gov/patft/index.html http://www.uspto.gov/patft/index.html

11. Patent Searching (continued)  http://www.uspto.gov/patft/index.html http://www.uspto.gov/patft/index.html  Boolean  Cited/citing patents  Assignee information

12. 82 patents in US Class 5/486 Patent Searching

13.  More sophisticated searches by class and subclass.  Tutorial suggests 30 hours for a good search.  http://www.lib.utexas.edu/engin/patent- tutorial/tutorial/pattut.html http://www.lib.utexas.edu/engin/patent- tutorial/tutorial/pattut.html

14. Viewing patents online  To see the document as published at the USPTO website, one page at a time.  AlternaTIFF  To quickly download the whole patent or published application.  www.freepatentsonline.com www.freepatentsonline.com  Download file history via PAIR.  http://portal.uspto.gov/external/portal/pair http://portal.uspto.gov/external/portal/pair

15. World Intellectual Property Office  http://www.wipo.int/pct/en/ http://www.wipo.int/pct/en/

16. European Patent Office  Similar search strategies  Broader coverage than just EPO  Also USPTO and JPO  Links to full version of patent (or application)  English abstracts generally available  http://ep.espacenet.com/ http://ep.espacenet.com/

17. Business Considerations for Patents  Shelf life of technology  Competition  Freedom to operate  Value of the barrier to entry  Ease of design around?  Cost to enforce

18.  Tangible form of expression  Protect works of authorship  Reproduction  Derivative works  Distribution  Publication

19.  No tangible form of expression  Unrecorded, improvised speeches (conversations)  Titles, short phrases  Ideas, procedures, discoveries, or devices  Consider patenting  No original authorship  Standard calendars, lists or tables taken from public documents, white pages telephone listings

20.  Work for hire?  prepared by an employee within the scope of employment; or  specially ordered and on a specific statutory list of items (e.g., contribution to a collective work, instructional text, test or answers for a test); or  express written agreement.

21.  Copyrighted as soon as in “tangible form”  No absolute need to register  Don’t even have to have “c in a circle”  Legal reasons to register  Very long term of protection ©

22.  The “secret recipe”  Special techniques  Customer lists  Other secrets

23.  Keep them secret!

24.  Words  Designs  Product configurations  Infinite in duration  so long as mark is still used  Mark must be associated with source of goods or services ™ ™

25. Trademarks: Key to Your Business’ Identity  Get it right the first time.  Trademark search by a professional.  Avoiding a redesign will pay for the search.  Audit your marks from time to time.  Your marks change over time with your business.

26. Trademarks: Searching

27.  Copyright owner must prove  Access to copied material and  Copying.  Patent owner must prove  Infringer is making, using or selling something that is covered by the patent’s claims.  Access unnecessary.  Trademark owner must prove  Likelihood of confusion.

28.  The rules are the same.  Still need to pay attention to copyright  Can’t just lift someone’s words or pictures and claim them as your own  Publishing electronically is still publication for patenting

29. What value do patent attorneys bring?  Nilssen v. Osram Sylvania, Inc. (Fed. Cir. 2007)

30. Questions?  Lisa C. Childs, Ph.D.  Associate Vice Provost for Research  Patent Attorney for the Division of Agriculture  My job? Managing all aspects of the portfolio of intellectual property belonging to UAF and Division.