2011 Industry Sponsored Research Workshop INTELLECTUAL PROPERTY Michael Jaremchuk Associate Director CVIP Phone: FAX: CVIP Website:

Intellectual Property Examples Intellectual Property is any product of the human intellect that may have value in the marketplace. Ideas, inventions, and expressions are all examples of IP. IP law involves Patents, Trademarks, Copyrights, Trade Secrets  Patent: the right granted to a person or legal entity to exclude others from making, using or selling the “claimed” invention  Copyright: the right given to the author of an original work of expression to exclude others from copying or commercially using that work without proper authorization.   Trademark: any word or symbol which is consistently attached to goods to identify and distinguish them from others in the marketplace (ex. a brand name).   Trade Secret: any information, design, device, process, composition, technique or formula which is maintained as a secret and which affords its owner a competitive business advantage

PROTECTION OF PROPRIETARY INFORMATION  PUBLIC DISCLOSURE BEFORE PATENT APPLICATION IS MADE  CONFIDENTIAL DISCLOSURE AGREEMENT  MATERIAL TRANSFER AGREEMENT

General Information Patents and Trademarks …….are granted by the USPTO. They must be “applied for” and “registered” Copyrights and Trade Secrets …..are self defined. Should issue notice of a Copyright when you distribute your work. Notice should read: Copyright  year, owner All Rights Reserved

What is a Patent?  A right granted by the government to a legal entity;  To exclude others from making, using or selling the invention “claimed” in the patent deed;  For 20 years FROM FILING;  Provided that certain fees are paid. A patent is like a piece of property and can be sold outright for a lump sum or licensed in return for royalty payments

Types of Patents  Utility Patents  Inventions which function in a unique manner to produce utilitarian results  Application consists of:  Detailed description teaching how to make and use the invention  Claims which define the invention  Drawings of the invention

Patentable Inventions  Mechanical or electrical devices  Unique processes  Software  New compositions of matter  New uses of materials  Significant improvements  Biologicals (assays, cell lines)

Basic Technical Requirements  Utility / Usefullness  Novelty Invention must be different from what is already known to the public (“Prior Art”) Slight differences qualify  Unobviousness At the time of the invention, it is considered unobvious to a person skilled in the art New, unexpected, surprising, far superior results qualify

Administrative Issues  Patent Filing Deadlines US: Within one year after a public disclosure (commercialization, publishing of details……) Outside USA: Before any public disclosure  Patent Life 20 years from the date of filing  Patent Scope Granted by the Federal Government through the United States Patent and Trademark Office (a division of the Department of Commerce) Valid for the US, its territories and possessions Is transferable by gift or sale

One Common Patent Misconception  A patent gives one the right to practice an invention. A patent gives you the right granted to exclude others from making, using or selling your invention. You may practice your invention without a patent, provided that doing so does not infringe someone else’s patent.

How a Patent is Lost or Abandoned  Maintenance Fees are not paid  A prior art reference, unknown at the time the patent was issued, is uncovered and shows that the invention was not new  The inventors were not properly designated