Transcript INTELLECTUAL PROPERTY - Registered Patent Agent

INTELLECTUAL PROPERTY
by
Robert M. (Bob) Hunter, Ph.D.
Registered Patent Agent
WebPatent.com
What is Intellectual Property?
• An intangible product of the intellect
• Free for anyone to use unless protected
• Must be placed in a “vessel”
• Can be sold, rented, licensed, etc.
• Some rights allocated by regulation
– technical data
– subject inventions
WHY SHOULD YOU CARE?
INTELLECTUAL PROPERTY RIGHTS
MAY BE THE ONLY ASSET REMAINING
AFTER THE PROJECT ENDS
Types of Intellectual Property
• Patents
– Utility (technology), design and plant
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Plant variety
Trade secret
Copyright
Semiconductor mask work
Trademark/service mark
Trade dress
Copyright
• Literary works, including computer programs
• Musical works, including any accompanying
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words
Dramatic works, including any accompanying
music
Pantomimes and choreographic works
Pictorial, graphic, and sculptural works
Motion pictures and other audiovisual works
Sound recordings
Architectural works
Cannot Copyright
• Titles, names, short phrases, and slogans;
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familiar symbols or designs; mere listings of
ingredients or contents
Ideas, procedures, methods, systems,
processes, concepts, principles, discoveries, or
devices
Standard calendars, height and weight charts,
tape measures and rulers, and lists or tables
taken from public documents
Copyright Owner Can Prevent
• Reproduction of a work
• Preparation of derivative works
• Distribution of copies
• Performance of the work publicly
• Display of the work publicly
• Digital audio transmission (including
webcasting) of sound recordings
Securing a Copyright
• Secured automatically when the work is fixed in
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tangible form for the first time
Deposit with the Library of Congress mandatory
for works published in U.S.
Use of copyright notice precludes innocent
infringement defense, e.g., © 2000 John Doe
Benefits of timely copyright registration ($30
filing fee) include right to enforce and availability
of statutory damages
Design Patent
• Shape or surface ornamentation of an article of
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manufacture
Protects the way the article looks
Application includes a drawing of the article and
a single claim in a specific form
Must be ornamental, novel, nonobvious
Examples: full user interface or individual icon
embodied in a computer screen; shape of a new
vehicle or instrument
Term: 14 years from date of grant
Computer Icon for Display Panel
U.S. Patent No. D439,912
Plant Patent
• Plants propagated asexually, e.g., by rooting,
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layering, budding, grafting, etc.
Includes cultivated sports, mutants, hybrids, and
newly found seedlings
Excludes tuber propagated plants or plants
found in an uncultivated state
Inventor(s) must have asexually reproduced the
plant to establish reproducibility
Claimed invention must be a distinct and new
variety of plant, not just a flower or a fruit
Plant Patent Application
• Characteristics that distinguish the plant from
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related known varieties, including colors of plant
structures, if distinctive
Where and in what manner the plant was
asexually reproduced
Location and character of area in which a newly
found plant was found
A single claim in a specific form
Two copies of color drawings or photographs
Grape Plant “Sugareighteen”
U.S. Patent No. PP11,820
Plant Variety
• Sexually reproduced (by seed) and tuber
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propagated plant varieties
Variety must be new, distinct, uniform and
stable
Variety may be represented by seed,
transplants, plants, tubers, tissue culture
plantlets or other matter
Term: 20 years from date of issue of certificate,
25 years for a tree or vine
Variety Owner Can Prevent
• Selling or marketing of the protected variety
• Importation of the variety into, or exportation
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from, the U.S.
Sexual multiplication or propagation of the
variety as a step in marketing
Use of the variety in producing (as distinguished
from developing) a hybrid or different variety
Variety Protection Criteria
• Has not been sold in U.S. by breeder
within 1 year of filing date or outside U.S.
within 4 years of filing date (6 years for
vines and trees)
• Clearly distinguishable from any known
variety
• Variations are describable, predictable,
and commercially acceptable
• When reproduced, remains reasonably
unchanged in essential characteristics
Variety Protection Application
• Name of variety (or temporary designation)
• Description of the variety and genealogy and
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breeding procedure, when known
Basis of the claim that variety is new
Declaration that a viable sample of basic seed
will be deposited and replenished periodically in
a public repository
Basis of applicant's ownership
Trade Secret
• Any formula, pattern, device or information used
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in one's business that has commercial value or
that provides its owner with a competitive
advantage
Sufficiently secret that use of improper means is
necessary to acquire it
A competitor may use legal means (e.g., reverse
engineering) to independently discover the
secret
Term: until the subject matter enters the public
domain
Technical Data
• Any recorded technical information
developed in performance of award
– reports, invention disclosures
– software documentation
• Rights retained by small business for four
years after each phase of project
• After those periods, Government may use,
release or disclose to others, or permit
others to use!!
Game Rule No. 1
Do not rely on trade secret
protection of intellectual property
developed during
SBIR or STTR projects
Subject Inventions
• What is included?
– patentable technology, design or plant
– protectable plant variety
• How does a discovery qualify?
– invention conceived or first actually reduced
to practice in performance of work
– date of determination of plant variety within
period of performance
Game Rule No. 2
Make sure the members
of your project team
can identify a subject invention
when they see one
and understand their obligation
to document it and disclose it to you
Examples of
Patentable Technologies
• Mechanical, electrical, optical devices
• Isolated microbial cultures, DNA, RNA
• Plants and seeds
• Genetically-engineered non-humans
• Ways of making or operating things
• Business methods
• Software systems, processes, interfaces
Cheese Filtered Cigarette
U.S. Patent No. 3,234,948
Method of Concealing Baldness
U.S. Patent No. 4,022,227
Decoy and Hunter Shield
U.S. Patent No. 5,572,823
Types of Utility Patent Applications
• Provisional U.S. patent application
– Asserts priority of invention internationally
• Regular U.S. patent application
– Contains claims; is examined; can issue
• International (PCT) patent application
– Does not issue as a patent
• Regional patent application (e.g., EPO)
• Non-U.S. patent application
Patentability Criteria
• Legal-required to report? can patent?
– appropriate subject matter
– useful, novel, non-obvious
• Practical-business reason to patent?
– valuable
– long economic life
– enforceable
– FUD-Fear, Uncertainty and Doubt
Business Method Defined
• Administering, managing, or otherwise
operating an enterprise or organization
• Processing financial data
• Any technique used in athletics,
instruction, or personal skills
Business Method Rules
• Publication of application required
• Disclosure of search results required
• Nonobviousness of a computer
implemented business method defined
• Grounds for post-grant opposition widened
• Prior use defense created
Allocation of Rights
• Small business (or subcontractor) may
retain title to a subject invention
– depends on who thought it up or built and
tested it
– cannot require subcontractors to give up
rights as a condition of hiring them
• Government receives a non-exclusive,
nontransferable, irrevocable, paid-up,
worldwide license for Government use
Game Rule No. 3
It is often a good idea for the “inventing”
portion of an SBIR or STTR project to
be performed by employees of the
small business recipient of the award who
have signed employment agreements
assigning inventions to the business
Your Responsibilities
• Report invention to Government within
two months of disclosure by inventor(s)
• Elect to retain title within two years of
initial report
• File a non-provisional U.S. patent
application within one year of election
• File non-U.S. patent applications within
ten months of U.S. filing
Commercializing Your Rights
• Licensing or sale (assignment) of rights
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Herculean marketing effort required
Less investment, less risk
Much smaller potential return
Less or no control
Like dancing with an elephant
• New venture formation
– Larger skill set required
– Like riding a tiger
Conclusions
• SBIR and STTR programs are excellent
wealth-building techniques
• But only if you commercialize your
intellectual property rights
• Preserve and protect those rights and then
sell, sell, sell them either embodied in
products or outright!
IP MANAGEMENT WEBSITES
• Patent searching-expect surprises
– www.uspto.gov
– www.delphion.com
– www.surfip.gov.sg
• Invention reporting-an allowable cost
– www.iedison.gov
• Protecting and licensing inventions
– www.webpatent.com