Research Administration For Scientists COMP Tim Quigg Class 11: March 24 Introduction To Intellectual Property Bayh-Dole Act Inventions – Patents US Law; GATT and WTO Infringement/Interference Novelty/Non-Obviousness/Usefulness Diligence DDP/PPA Utility/Design/Plant Patents

COMP What is Intellectual Property? Any product of the human mind: Idea Invention Expression Unique Name Business Method Industrial Process Chemical Formula that has value in the marketplace and can be reduced to a tangible form.

COMP United States Constitution Article 1, Section 8 “The Congress shall have power: … to promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries …”

COMP There are 4 categories of IP law that address different types of IP: Patent Law Important: Understand all 4 before seeking coverage for your creation. Copyright Law Trademark Law Trade Secret Law

COMP Intellectual Property Law - Legal Principles that determine: Who owns IP In short, IP law determines when and how a person can capitalize on a creation! When and how owners can exclude others from exploiting IP Degree of recognition courts are willing to afford IP

Application of Intellectual Property Bayh-Dole Act of 1980 Background –Before 1980, government restrictions limited the commercialization of inventions developed with the support of federal funds Bayh-Dole Act changed that –Authorized recipients of federal funds to retain ownership of patents –Charged recipients with ensuring commercial use –Government retains license to practice the invention (plus march-in rights) –Tech transfer was “born”

Application of Intellectual Property AUTM Report Association of University Technology Managers FY 2000 Survey Summary –In 2000 alone, 347 new commercial products were introduced –Since ,376 new companies formed –As of ,309 start ups still operating –2000 adjusted gross income - $1.26 billion (licenses and options)

IP Protection Disclose and Protect (CDAs/NDAs, Provisionals) Patentable Inventions BEFORE: –Publication Submission –Proposal Submission –Presentations –Discussions w/ Non- University Personnel –Web Postings –Thesis/Dissertation Submission

COMP Patent Law What is a patent? A right granted by the government to a person or legal entity What “right” does a patent grant? The right to exclude others from making, using, or selling the patented invention for a fixed period of time

COMP Patent Law How long can you exclude others from making, using, selling? 20 years from date of filing You must pay maintenance fees

COMP Patent Law How do you stop someone from making, using, selling? File a patent infringement lawsuit in federal court Infringement – battle between a product/process and a patent Interference – battle between two patents (may occur up to twelve months after patent issues) filed with PTO

COMP Patent Law Who can apply for a patent? Any true inventor regardless of Age Nationality Mental Competency Incarceration Even deceased persons (through their personal representatives)

COMP Patent Law What form of property is a patent? Personal property Comparison with land Land Sold Leased Willed Boundaries Defined by Deed Exclusionary Rights Yours Till You Dispose of It Patent Sold Leased (Licensed) Willed Boundaries Defined by Claims Exclusionary Rights Limited Life

COMP Patent Law What is the scope of a U.S. patent? U.S. patent rights extend throughout the U.S., its territories and possessions But not to foreign countries Must file country by country

COMP Patent Law U.S. vrs. rest of the world (after GATT and WTO) U.S. = first to invent Rest of the world = first to file

COMP Patent Law 35 USC 101 Inventions Patentable “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement there of, may obtain a patent therefore, subject to the conditions and requirements of this title.”

COMP Patent Law Role of PTO Examiner: Advocate of the public Tries to prevent you from getting a patent (first opponent) If he finds patentable material and you have difficulty writing a proper claim, the law requires the examiner to write one. Adversarial process usually strengthens patent Definition of a strong patent One that can be defended in the courts when infringed.

COMP Patent Law In order for an invention to be patentable, what requirements must it satisfy? Novelty – different from what is known, any difference, even slight, will suffice (35 USC 102) Non-obvious – at the time of invention, it was non- obvious to a person skilled in the art (35 USC 103) Useful – has value, works as described in patent (as perceived by patent examiner)

COMP USC 102 Novelty A person shall be entitled to a patent unless: Invention was known/used by others in U.S. or patented/published in U.S. or foreign country before invention by applicant, or Invention was patented/published in U.S. or foreign country or in use or on sale in U.S., more than one year prior to date of patent application, or Inventor has abandoned invention, or

COMP USC 102 Novelty A person shall be entitled to a patent unless: Invention was patented/filed in foreign country by applicant more than 12 months before filing in US, or Before the date of applicant’s invention, the same invention was made in this country by another who had not abandoned, suppressed, or concealed it.

COMP USC 102 Novelty “In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was the first to conceive and last to reduce to practice, from a time prior to conception by the other.”

COMP Diligence Actual Reduction to Practice Constructive Reduction to Practice Document Disclosure Program (DDP) Provisional Patent Application (PPA) Divisional Application Definitions

COMP Diligence – (or reasonable effort) applies only to the time between conception and reduction to practice (prototype development), not between reduction to practice and filing!

COMP Actual Reduction to Practice – building and testing the “hardware” or prototype of the invention. Constructive Reduction to Practice – under the law, the act of filing a patent application.

COMP PTO date stamps and returns one copy to inventor Small fee Document Disclosure Program (DDP) File with PTO two copies of “Proof of Conception” documents

COMP One year to file full application No claims included (articles and papers) Not examined Disadvantage – nothing new can be added Provisional Patent Application (PPA) Locks in filing date

COMP Withdraw and re-file or File a “Continuation in Part” (CIP) – a second patent application that relies heavily on the first Danger – double patenting! Provisional Patent Application (PPA) Options if either new material is to be added or some claims are not supported by attached material.

COMP Divisional Patent Application Patent examiner determines that the application addresses more than one invention. Divides one application into two or more smaller applications and requires that they be prosecuted separately

COMP USC 103: Non-obvious Subject Matter “A patent may not be obtained…if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention as made to a person having ordinary skill in the art to which said subject matter pertains.”

COMP Patent Law Are there different types of patents? Utility Patents (most common) – cover inventions that function in a unique manner to produce a utilitarian result. Examples: New Drugs Electronic Circuits Software Manufacturing Processes New Bacteria, Animals, Plants Machines Manufactured Products

COMP Patent Law Design Patents (ornamentation) – cover the unique, ornamental or visible shape or design of an object. Uniqueness of shape must be purely for aesthetic reasons If for functional reasons – utility patent applies Plant Patents – cover asexually reproducible plants through use of grafts and cuttings. Example: Workshop wall clock in shape of saw blade – design patent Special shape for airplane to reduce turbulence – utility patent

COMP Patent Law What can’t be patented? Mental processes and abstract ideas (unless reduced to tangible form) Laws of nature Naturally occurring articles Literary/dramatic/musical/artistic works (copyrightable items)

The Life Of An Invention Conceived but not documented Inventor has no rights! Documented, but patent application not filed Potential rights exist if “first to invent” Patent pending, filed but not issued 1-3 year process kept secret by PTO Patent issued: In-force Right to exclude Patent infringement suits Licensing Public Record Patent Expires 20 years after filed No rights remain Prior-art reference

COMP Patent Law Can a patent right be lost? Failure to pay maintenance fees One or more prior-art references (earlier patents or other publications) are uncovered that show that the invention wasn’t new Patent owner engages in illegal conduct, e.g., antitrust violations with patent Fraud on PTO by failing to disclose material information (e.g., prior art) while patent was pending Re-examination

COMP Re-examination Modest fee Re-examination conditions Prior art that existed at the time patent application was filed has been discovered Results of re-examination may include: Patent is fine Some claims invalidated Some claims narrowed Patent invalidated Anyone can initiate

COMP Common Patent Misconceptions 1. Patent gives owner the right to practice an invention. Fact – if no person holds an exclusionary right (patent) you can practice your invention freely. 2. If a product is patented, it is bound to be superior. Fact – a patent merely means that the invention is significantly different, not necessarily superior.

COMP Common Patent Misconceptions 3. Once you get a patent, you’ll make money. Fact – less than 5% of all patents produce enough revenue to pay for their prosecution costs.