Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Intellectual Property Protection Karen White

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation What is Intellectual Property? Intangible property that is the result of creativity A term referring to a number of distinct types of legal monopolies over creations of the mind Intangible asset that consists of human knowledge and ideas Creations of the mind

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation What is Intellectual Property Protection? Laws that establish and maintain ownership rights to intellectual property Legal entitlements to be the only one to gain from the intellectual property-- the right to exclude others from gaining from the idea

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Types of Intellectual Property Protection Patents Trademarks Copyright Trade Secret

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Why is Intellectual Property protection important? Protects important assets from theft, exploitation or abuse Identifies contributions by the Company or inventor to the field Secures monetary compensation Sometimes all a company has to leverage is its IP

Institute of Technology, Entrepreneurship and InnovationBemidji State University Company ACompany B Employee, Customer and Supplier Goodwill Common Law Trademarks and Trade Secrets Building, Equipment, Inventory Registered– Trademarks, Copyrights Patents– Business Method, Utility, Design IP assignments and noncompetes- employees and contractors Formal Trade Secret Protection Form contracts– employees, suppliers and customers Assets

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Trade Secret Any information that derives independent economic value from not being generally known or readily gained Formula, pattern, compilation, program, device, method, technique, or process Compare with patent The Coca-Cola formula was developed in Had the formula been patented it would have been public at the time the patent was granted. The patent term would have expired by Once the patent term expired anyone could have produced Coca- Cola and made money from the formula.

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Uniform Trade Secrets Act (USTA) Protects trade secrets if disclosed or is gained by improper means Factors Is the information known outside the business? Extent to which it is known to those inside the business? Precautions taken to guard the secrecy of the information How to protect/identify? “Confidential Property of Company X” stamped on all material Company policies and procedures to keep secret

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Copyright Copyright law protects the expression of an idea. Not the idea itself. Protect literacy, dramatic, musical, artistic, and computer works Must be fixed in a tangible medium Computer software can be copyrighted Prevent others from displaying, reproducing, adapting, performing, or publishing copyrighted works

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Duration Individual Life of author + 70 years Corporation 95 to 120 years Identification Notice should be placed on the work with the date being the date of first publication “Copyright © 2010 Company X. All rights reserved.” For computer programs the copyright notice should appear on the first screen

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Registration Copyright registration is not required for protection It is required to sue for infringement

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Trademarks A word, name, symbol or device Used to identify the source of a good or service ® used to identify federally registered trademarks ™ used to identify unregistered trademarks

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Patents The right to exclude others from making, selling, offering to sell or importing the invention in the U.S. Not the right to practice your own invention In exchange for full disclosure of your idea (in other words you put your idea into the public domain) you receive a monopoly for the term of the patent

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Types of Patents Utility Process Manufacture Machine Composition of Matter Design Plant Anything under the sun created by man You cannot patent something found in nature

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Invention patentable if Unique (novel) Useful (utility, needs only 1) Non-obvious Disclosed Described so others can make it (enablement)

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Bars to novelty Patented, published, known or used by others before your invention was made In public use, on sale, or published more than 1 year before your filing date Described in a patent by another with a filing date earlier than your invention date Invented by another Abandoned by inventor, or invented but failure to show diligence from conception to filing

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Nonobviousness Obviousness means that the invention is different from the prior art but the differences are so trivial as to be “obvious to one of ordinary skill in the art” Requirement for obviousness Teaching of each element in the prior art Motivation to modify the prior art to arrive at the invention Likelihood of success in making and using the invention

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Parts of a patent application Specification Written description Enablement Must teach how to make and use the claimed invention Best mode Disclose the “best mode” for making and using the claimed invention Claims Drawings Oath or declaration Filing, search and examination fees

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Patent Applications Provisional Non-Provisional Continuation Same specification, different claims Continuation-in-part Contains some new material and prior application is prior art to the new matter Divisional If the first application really contained two distinct inventions

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Provisional Patent Not examined A place holder Becomes abandoned after 1 year Two ways to become a non-provisional application File a non-provisional application claiming the benefit of the provisional application Convert the provisional application to a non-provisional application No claims No oath or declaration

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Claims Claims define the boundaries of the invention Pointing out and distinctly claiming the subject matter Define the scope of the protection afforded by the patent The claims are what the judges look at regarding infringement cases Sample claims A compound of formula X A pharmaceutical formulation for a compound of the formula X. A method of using compounds of the formula X to treat diseases 1,2, … 10.

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Patent Term Term of utility patent Start of term– when patent has been granted End of term– 20 years from patent filing date Effective only in the U.S. Foreign patent applications must be filed separately

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Duty of Candor Applicants must disclose all material/relevant information to patent office Information Disclosure Statement (IDS) Ongoing duty that continues until issuance If new art is discovered after issuance, the patantee or others may ask for reexam

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Patent Ownership Inventors Inventors must be individuals, not companies or corporations Not listing the actual inventor/s makes the patent invalid To be an inventor the individual must have contributed to at least 1 claim Correction can be made at any time so long as there was not prior deceptive intent

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Patent Ownership Assignees Can be an individual or a company Can be listed at the time of the application or added at any time during the patent term This is how companies own the intellectual property Can exclude the inventor from future patent procedures

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation What is a license? A contract Licensor grants the right to practice the technology claimed in the patent to the licensee Licensor agrees to not sue licensee for infringing on licensor’s patent No transfer of ownership

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Who can file a patent application? Inventors Registered Patent Attorney Must have a bachelor degree in engineering or science field Must have law degree Must have passed USPTO Patent Bar Exam Can work on all aspects of patent law

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Who can file a patent application? Registered Patent Agent Must have a bachelor degree in engineering or science field Must have passed USPTO Patent Bar Exam Cannot litigate or other services considered practicing law (contracts) Your buddy with 5 issued patents and experience with the application process cannot represent you to the USPTO

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Invention Two elements to any invention Conception Idea that is complete enough that the invention can be made by others Reduction to practice Has the invention in fact been made/practiced? Does not need to be in final form Inventors must account for time lapses between conception and reduction to practice– otherwise abandonment Testing/experimenting, researching, fine tuning

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Why keep records U.S. operates on a “first to invent” Need evidence of conception, reduction to practice and diligence – all three Need corroboration by non-inventors Aids in writing the patent Establish a date of invention

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Best Practices Keep a lab/research notebook Separate notebook for each invention Signed regularly by someone knowledgeable in the field but NOT a co-inventor Usually never needed but when it is needed it is desperately needed (like insurance or smoke detectors)

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Patent Application Process Preparing the application Filing the application and formal documents Office actions Responses Appeal Allowance Issuance Maintenance

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Patent Search

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation How much does it cost to file a patent? Patent filing fees ptember15.htm ptember15.htm Patent Attorney/Patent Agent fees

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation How much does it cost to file a patent? USPTO fees Basic filing fee $82.00 Independent claims in excess$ Claims in excess of 20$26.00 Multiple dependent claim$ Utility search fee$ Utility examination fee$ Utility issue fee$ ($1,548) Maintenance fees (3 separate fees)$3, Total$5, Provisional Patent$ Patent Agent fees Patent search$1,000 Patent application$8,000 Total$9,000 ($14,000)

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Patent Justification Short summary of the invention What are the potential markets? Who might be interested in licensing this invention Summarize the closest prior art and how this invention can be distinguished Summarize any dominant patents that might make it difficult to commercialize the invention

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Publications of Patent Applications Patents applications are published unless You request in writing that the application not be published The application cannot ever be involved in a foreign patent application requiring publication Patents are published

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Patent Marking Required to mark the articles with the word “Patent” and the number of the patent Penalty for failure to mark Patentee may not recover damages from an infringer Unless the infringer was duly notified of the infringement and continued to infringe after the notice Marking something as patented when it is not is against the law

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Patent Pending Has no legal effect Only give information that an application for patent has been filed Protection afforded by a patent does not start until the actual grant of the patent

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Best practices Keep good records Inventors notebook Dated photos Receipts Build prototypes Do not talk about the invention except to persons who have signed a confidentiality agreement Search to determine what is possibly patentable Continually work on “who is going to pay me?” Find a good attorney and keep asking “What can I do to help keep my costs down?”

Institute of Technology, Entrepreneurship and InnovationBemidji State University Compare and Contrast Intellectual Property Term Patents protect the knowledge behind how to make an invention Copyrights protect the work Trademarks protect the name or image Trade secrets protect anything secret Patents expire within 20 years Copyright expires within 70 years Trademarks never expire Trade secrets last until they become public

Institute of Technology, Entrepreneurship and InnovationBemidji State University Institute of Technology, Entrepreneurship and Innovation Questions?