Transcript Intellectual Property for SBIR/STTR Contractors From 60,000 Feet Tim Wittig Principal Technology Management Group SAIC 202/841-0655 n [email protected].

Intellectual Property for SBIR/STTR
Contractors
From 60,000 Feet
Tim Wittig
Principal
Technology Management Group
SAIC
202/841-0655 n [email protected]
What Are We About?
• A brief Description of:
– The Kinds of Intellectual Property
– How Each is Protected from Mis-Use
– How to Destroy Rights in Intellectual Property
– Intellectual Property Rights Ownership in
SBIR\STTR Contracts
What Is IP?
(Is an Invention the Same Thing?)
• Ballantine’s Law Dictionary says:
“The property rights resulting from the physical
manifestation of original thought.
It refers to any product of the human intellect, such as an:
invention,
unique name,
software,
chemical formula,
expression,
business method,
process,
Overview: Different Forms of IP
Patent (Utility)
Subject Matter
Functional features of
products and processes
Note Design Patents
Copyright
Trademark
Literary, dramatic, and
musical works; pantomimes
and choreography; pictorial,
graphic and sculptural works;
audiovisual works; and
sound recordings
Words, names, symbols or
devices, and colors
Standards for Validity
New, useful, and nonobvious
Originality and fixation in a
tangible medium of
expression
Use of the mark to
distinguish one’s goods or
services
Protection Begins
When issued
Upon creation
Upon use
Duration
20 years from date of first
application
(effective 6/8/95)
Life of author plus 50 years;
or 75 years from publication
or 100 years from creation,
whichever expires first
So long as properly used as
trademark
Copying , Distribute, Perform
and improper appropriation
Likelihood of confusion and
Dliution
(14 years for Designs)
Infringement
Making, using, or selling the
invention claimed
US Mark, Pay Every 10
Years.
US Patent Requirements
Proper Subject Matter
Process, Machine, Manufacture,
Composition, New Use,
or Improvement of the Above
(Do Not Forget Software!)
New
Useful
Non-obvious
No Statutory Bar
e.g., Publication or On Sale Bars
A relatively low threshold
Focus on these
and teach how
to make and use
the invention
AVOID THESE!
Do Not Self-Censure!
• Too Often, Inventors Do Not Disclose Inventions, Saying
“It Probably Isn’t Patentable”
• What About These?
Device For Thumb Wrestling US 4,998,724
Dog Vacuum Cleaner US 3,771,192
Self Destructive Statutory Bars
To Be Avoided!
More Than One Year Prior to Filing
Date Bars US Patent Eligibility
Publication
Anywhere Other Than the US,
Instant Bar to Patent Protection
In Use
On Sale
More Than One Year Prior to Filing
in the US Bars US Patent Eligibility
now Anywhere in the World
Foreign Rights
• Enabling Disclosure Instantly Destroys Foreign Rights
• Patent Cooperation Treaty (PCT) Filing Preserves Priority
Date if filed within 12 months of US Application Filing Against
Publication Between Filing and National Phase Registration
• 30 Months to Decision Time
– National Phase Thereafter
– This Is Expensive
– Find a Private Sector Partner
More on licensing later
What’s New
In October, Congress did pass something. It amended the US
Patent Law in many ways, some of them important to you
– After March 2013, US will become a first to file nation.
– Publication by an inventor will destroy all foreign rights but in the US,
the 1 year grace period will continue.
• File early, do not slack off
– A Series of new opportunities to challenge an invention at the PTO
level has been created (5).
• Prior Art Searches become more important
– Faster Track for an additional $4,800 – Goal is 1 year to Grant.
Copyrights
• Eligible Works:
–
–
–
–
A Writing (Includes Software, Technical Data)
A Sound Recording (Acoustic Spectrum)
A Picture (in Any Non-visible Spectrum)
A Non-functional Thing (Not Design, Not Device)
• Protection:
– Others May Not Copy, Distribute, Perform, Prepare Derivative Work
• Defenses:
– Used for Educational Purposes, Parody, Inconsequential Use
• Note - Data Created Under FAR
– Contractors Generally Are Allowed to Copyright the Works Produced Under
Contract, With the Government Retaining a Royalty-free License to Use the Data
or Software for Government Purposes
Section 105 of Title 17
“Copyright protection under this title is not available for any
work of the United States Government, but the United
States Government is not precluded from receiving and
holding copyrights transferred to it by assignment, bequest,
or otherwise.”
17 USC § 105
So, Contractor or CRADA Partner can copyright the work
and assign the rights to the Government which can then
license it to another.
Trademark - Service Mark
• A Mark/Name That Differentiates Goods of One Maker/Seller
From the Same Kind of Goods of Another Maker/Seller
• A Mark/Name That Differentiates Services of One Seller From
the Same Kind of Services of Another Seller
• The Action is Unfair Competition and Passing Off
– National Registration v. State Common Law Trademark
– Must Be Used, Cannot Sit Idle For Ever
– Can Be Lost Through Dilution
• Thermos, Escalator, Kleenex?
Trade Secret Rules for Business
Trade Secret: Process, List, or Other Information,
Valuable in a Trade or Business That is Not Generally
Available Without Restriction (i.e. a Secret)
• Must Have Commercial Value
– Customer Lists, Secret Sauce, Process
• Owner Must Use Reasonable Efforts to Keep the Secret
•
Reverse Engineering OK
• Must Not Be Generally Available Without Restriction
So, How Do I protect Those Rights
• Inventions – write disclosure, press for
application filing
– Make No Enabling Disclosures Before Filing
– Insure DTIC Reports Have Limited Distribution!
• Trademark – prepare and submit application
– Provide 3 copies of “Use in Commerce”
• Copyright – prepare application and assignment
• Data – control data through possession.
Intellectual Property Rights in a Gov Contract
(but watch out for contract word changes)
• IP Rights Are Created Under a Contract or Cooperative
Agreement
– FAR (Bayh – Dole) Rules Apply
• Under Contracts and Grants, only Contractor Performs
• Usually, Inventions Made Only by Contractor Belong to
Contractor
– 60 days from knowledge if SB or Non-Profit
– 2 Years to Decide to Prosecute
• Contractor Will an Own the Invention With Government Use Rights Attached
– 1 Year to Prosecute
• Or abandoned to the Government then to inventor
• But if Joint Inventions Occurs, It will Be Owned Jointly
The Special World of Data
• Data is Anything First Fixed During the Contract or CRADA is
Data and Unless otherwise Defined
• An Invention is a Special Kind of Data
• Data Generally Belongs to the Contractor (Partner) With
Government Use Rights Attached
– Rights in Data Will Be Changed By Contract Language and Facts
– Data Rights Vary From Unlimited Gov. Rights to Restricted Rights
• Most restrictions are driven by inclusion of prior created data
• Only Gov Paid Material, Some Private Input, All Private Input.
– CRADA and SBIR Data Rights Allow for a 5 Years Proprietary
Period
Basic Rules
• No Enabling Disclosures
• Get to Know a Patent Attorney or Agent
• Use Every Form of Protection The Business Can
Afford
– Patent, Copyright, Trademark, Trade Secret
• Protect Improvements
• Use Provisional Patents – File Early and Often
• Remember small businesses get half off!