Patents and Trade Secrets

Four Major Types of Intellectual Properties (US Law) Patents – inventions/ideas Trademarks – goodwill of the business Copyrights – expression of an idea not the idea itself (e.g., computer software) Trade Secrets – difficult to discover secrets (e.g., manufacturing processes, customer lists)

Why do we care about IP? IP licensed to other companies may be a tremendous source of profit In many cases, companies must pay competitors to license their intellectual property In other cases, IP held by competitors temporarily excludes a company from manufacturing and selling components, costing the business substantial income. Licensing costs may be multi $MM/year for larger companies

What is a patent? A grant from the US government giving the patent holder the right to exclude others from making, using, selling, and offering for sale the invention. It does not necessarily give the patentee the right to practice the invention.

What is a patent - II? A contract between a government and the inventor to protect the individual’s control of an invention for a certain length of time for the economic benefit of the inventor and to promote innovation in society..

Patent Limitations They are national in scope. Must file in each individual country to receive protection in that country. The protection is limited in time. (generally 20 years from filing date) The protection generally begins on the issue date of the patent (2+ years from filing date) They can be expensive and time consuming to get and maintain (>$15K initially plus maintenance fees)

What can be patented? Processes - way to produce a result (computer software, business methods, methods of mfg.) Machines - assemblage of parts Compositions of matter – chemicals, drugs, living organisms Articles of manufacture - anything man made that is not a machine or composition of matter

Types of Patents Utility – Subdivided into Electrical, Mechanical and Chemical Categories Most Common Group of Patent Types Granted for 20 years Design – Ornamental or implementation aspects of a design Granted for 14 years Plants & Compositions of matter – chemicals, drugs, living organisms

What are the requirements for a patent? New – a single prior art reference (e.g., patent, publication, product) cannot disclose the idea. Can’t patent something that is already in the public domain. Utility – idea must have some benefit Non-obvious, Novelty – an obvious combination of prior art references cannot disclose the idea. Must have some basis for combining references. Usually not intuitive or obvious to “one skilled in the art”

STATUTORY SUBJECT MATTER ? Issued U.S. PATENT NO. 6,XXX,XXX Consideration Pyramid NON-OBVIOUS ? NEW ? USEFUL? STATUTORY SUBJECT MATTER ? PATENTABILITY

New: What is a prior art reference? Disclosure in a previously filed patent application A publication A public use of an invention A sale or an offer to sell the invention Already known by others in this country thru trade or academic association or other affiliation

Non-obvious To be patentable, an invention must be non-obvious Issue: Would the subject matter of the invention, as a whole, have been obvious at the time the invention was made to a person having ordinary skill in the art ? The determination of obviousness rests on factual inquiries: scope and content of prior art differences between prior art and the claimed invention level of ordinary skill in the art to which the invention pertains

Patent Examiner: Patent Attorney who evaluates your patent application Examiner assumes the application is initially worthy of a patent and proceeds to try to prove otherwise. If negative proof cannot be found with reasonable effort, a patent is usually granted. The presumption is that an invention is entitled to a patent. It is the patent examiner’s legal burden to prove that it is not.

Typical Corp Disclosure Form

Additional Questions to Consider   1)       DESCRIBE ANY RECENT WORK ON DEVELOPING AND DEMONSTRATING THE IDEA? Has feasibility been proven? How? Is there a prototype? 2)       ARE THERE ANY PLANS TO USE THE INVENTION IN A PRODUCT? Give Product/Program name and dates if known. Has this invention been identified as a formal project deliverable? 3)       WHAT ARE THE PLANS OR DESIRES TO PUBLISH? It is absolutely critical to identify the earliest possible public disclosure of the invention for legal reasons. This may include publication, installation of prototype, trade shows, etc. Companies may lose the right to patent an invention by premature public disclosure. 4)       DESCRIBE ANY KNOWN RELEVANT COMPETITOR ACTIVITY. Are any competitors working on solutions to the same problem? Have any competitors addressed the same problem? 5)       WAS THIS INVENTION DEVELOPED IN THE COURSE OF A PROJECT WHICH WAS FUNDED IN PART BY AN ENTITY OTHER THAN YOUR COMPANY? Has any work been done, for example, with Government funding, university collaboration, even if such funding was provided indirectly? 6)       WHAT IS THE EARLIEST TANGIBLE DOCUMENTATION OF THIS INVENTION? Is it a lab notebook, engineering report, etc., or this disclosure document? If not this document, please provide a reference and a date. 7)       HOW MUCH DIFFICULTY WOULD A COMPETITOR EXPERIENCE IN TRYING TO DESIGN AROUND THIS INVENTION? Are there many ways of relatively equal difficulty to solve the problem, or is the invention a unique solution in terms of benefit and simplicity?

Specification... Patent – Title Page US Patent Format Sections Title - A short description of the invention. Inventors: Assignee: Company (may be a person) Filing Date/Info: References, Prior Art: Patent – Title Page Abstract - A general description of the nature and gist of the technical disclosure. US Patent Format Sections

Patent - Drawing Drawings - Drawings are required if necessary for the understanding of the subject matter sought to be patented. Patent - Drawing

Patent - Specification Background of the Invention - Describes the technical field of the invention, the state of the art of the technology involved, and the shortcomings of existing prior art. Summary of Invention - A brief description of the nature, substance and object of the invention. Brief Description of the Drawings - Drawings accompanying the technical disclosure shall be briefly described, and the detailed written description of the invention shall refer to the different drawing views by specifying drawing figures and reference numerals. Written Description - A detailed written description of the invention describing the best mode of operation and enabling someone to make and use your invention. Claims - A NUMBERED precise and detailed description of the subject matter which the applicant regards as his invention. 14

Claims may be independent or dependent on previous claims Example of a Patent Claim 1. A utensil for the feeding of children consisting of a handle which terminates in the face of a clown, with provisions for an attachable disposable food utensil which fits into the mouth of said clown and is fastened to said handle, together with means to illuminate the eyes and the nose of the face of the clown by means of electric bulbs mounted to the face powered by a battery mounted inside the handle, said eyes and nose being formed of transparent material. Claims may be independent or dependent on previous claims

Using the Internet for Patent Searches www.uspto.gov/web/offices/pac/doc/general/ http://www.us-patent-search.com/ http://www.msoe.edu/library/patent_searching/index.htm www.uspto.gov www.us-patent-search.com www.msoe.edu/library/patent_searching/index.htm

Do NOT Under-Estimate What Can Be Patented !!

Do NOT Under-Estimate What Can Be Patented

Do NOT Under-Estimate What Can Be Patented

Do NOT Under-Estimate What Can Be Patented

Trade Secrets One possible classification of an idea of disclosure is to keep it as a “trade secret” Generally is applied to something that is not detectable in the product (for example a process for making something, manufacturing recipes, etc.)

Trade Secrets Anything not known generally (public knowledge) or easily established (reverse engineered). Protects against misappropriation of those secrets. Must enact “reasonable measures” to protect secret. Patents publications are easily found but trade secrets are not public domain

Advantages/Disadvantages of Trade Secrets No cost and no legal paperwork. Lasts forever Disadvantages No protection against legitimate reverse engineering