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Intellectual Property- A Brief Introduction for SRP Trainees

 

Eric  Suuberg  School  of  Engineering,  Brown  University  

Providence,  Rhode  Island  

Intellectual Property (IP)- What is it?

  Patents- “Utility” and “Design”   Trademarks ®

  Copyright ©

  Trade Secrets

These are various ways in which IP can be protected. What do these mean to those who work in scientific and technological fields, discovering new IP?

IP in the US is so fundamental that it is in

the Constitution Congress shall have the power …tto promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. U.S. Const. art. I, § 8, cl. 8.

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Basic Definitions Property - that which a person owns; right of possession, enjoyment or disposal of anything, especially something tangible (Nesters, 1989) Intellectual Property - property of the mind, those rights which result from the physical manifestation of original thought, either naturally or in compliance with statute. Weil, American copyright law (Chicago, Callaghan, 1917)

Why is Intellectual Property important to science/technology development?

•IP is the lifeblood of technology-based startup firms, when there are few assets of any other kind. Without it, there is generally no investor interest.

•Even if you are not interested in IP, there might be implications of your work for others who are (prior art).

•Might need to respond to a patent infringement lawsuit. •You will inevitably create copyrights for your written works. •In working with others, you might be subject to non-disclosure

agreements. •What are the obligations relative to trade secrets?

Patents in the United States are governed by the Patent Act (35 U.S. Code), which established the United States

Patent and Trademark Office (the USPTO). The first patent law was enacted in 1790. The law now in effect is a general revision

which was enacted July 19, 1952, and which came into effect January 1, 1953.

Newest revision: America Invents Act (2011)- Profound changes in many long-standing aspects. If you are going to do background reading on patents,

make sure it is post AIA.

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Quid pro quo Concept of Patents The inventor discloses the invention to the government in specific enough terms that someone “skilled in the arts” who reads the patent could duplicate it... In exchange, the government grants limited exclusive rights to the inventor.

What is a patent? A patent is a grant to the patentee under seal of the United States Patent and Trademark Office, showing the specification and drawing(s), inventor/assignee information and other data. A U.S. patent is a grant by the Government to an inventor (or his/her heirs and assigns) of a right to exclude others from making, using, offering for sale, or selling the invention throughout the U.S. or importing the invention into the U.S.

& If the invention is a process, to exclude others from using, offering for sale or selling throughout the U.S., or importing to the U.S., products made by that process for a set period of time

Types of Patents Utility New and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof Design Any new, original and ornamental design Plant Whoever invents or discovers and asexually produces any distinct and new variety of plant...

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The value of a patent Applications for patent and patents have the attributes of personal property and may be sold to others, mortgaged, assigned, given away, bequeathed in a will and inherited, licensed and taxed (when transferred). An inventor’s assignee can be any legal entity, including partnerships and governments, as well as individuals and corporations. When a patent is assigned to another in writing, the assignee becomes the owner of the patent and has the same rights as the original patentee.

Common Patent Misconceptions A patent gives its owner right to practice an invention

- Not necessarily. If you invent something, you can practice (build, use, sell) with (or without) a patent, only provided that it is not covered by another patent (within its 20 year enforceable term). Need “Freedom to Operate”

Once I get a patent, I will be rich -If only… A patent is more or less like a hunting license. It just bestows the right to go after infringers. If never commercialized ( put into widespread commercial use) a patent is worthless.

A patented product is superior - Nope, a patent only means sufficiently different from others, NOT necessarily superior

The government will help protect you against infringers

-No. You have to protect yourself (legal expense). A patent is only evidence.

What can be patented? 1. That which was invented by claimed inventors- Need real basis in fact- no “we’re all in this company together” thinking. 2. Things that pass the tests of “New and Novel”, “Useful”, and “Non-Obvious” (fuzzy definitions) 3. Related to above, that there exists no “prior art” anywhere in the world, regardless of whether the inventors were aware of it

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US Supreme Court Decision, June, 2014 Naturally occurring genes/ DNA segments are no longer patentable. Myriad Genetics lost patents covering tests of cancer-predictive genetic mutations. cDNA still is.

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Types of Patent Applications Provisional - one year period, no claims required, written disclosure must meet same requirements as non-provisional. Not examined by USPTO. Must support ultimate claims of non-provisional. Non-Provisional - claims required, written disclosure must meet requirements of 35 USC 112 1st paragraph. Examined for patentability, can result in a patent. Nowadays, a good provisional might cost as much as a full non-provisional.

The “Anatomy” of a Patent Application •Specifications- Written statement of invention, disclosing best way of making and/or using •Drawings •Program listings •Claims (one or more) -Written in very precise legal terminology, defining invention, each numbered. •Declaration of inventorship • Any assignment (recommended!)

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Destroying Novelty •For a patent to issue, it must meet novelty criteria. •Any public knowledge, use, sale, publication prior to application filing date destroys novelty. •Watch out what you say at conferences or put into publications! - For novelty to be destroyed, information must be enabling. Saying “I have made a new vaccine” is not enabling. Discussing procedures followed and the results of tests is potentially.

Patent “Prosecution” i.e., Process •Might start with provisional application (t=0). •Must file non-provisional within 1 year. •Application published in 18 months, unless non-publication request. •Office Action (USPTO) might take 1 to 2 years, with intermediate rejections the norm. •Costs several $ thousands for preliminary patent search, $10,000 for application, and several $ more for full prosecution to issue.

Every country has its own patent laws •US Patents only valid in the US. •Patent Cooperation Treaty (PCT) enables a US applicant to file an international application in standardized format, in English, at the USPTO. •PCT is a filing system, not a granting process. •Other significant Patent Organizations- World Intellectual Property Organization (WIPO), European Patent Office (EPO), Japanese Patent Office (JPO).

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Patent Searching •USPTO Website •Google Patents •Patentscope

Trade Secrets Trade secrets - based on contracts - may offer protection indefinitely

if you maintain secret (NDAs, mark “confidential” docs, escort visitors on site, erase whiteboards)

-Any information that derives economic value from not being generally known or ascertainable

-Can be formulas, patterns, compilations, programs, devices, methods, techniques or processes

-Protection stems from common law dating to the 1800’s -All states have some sort of trade secret protection -Most laws based on the Uniform Trade Secrets Act -Key is- it is still property that cannot just be taken by someone from

you without your permission (as opposed to them figuring it out for themselves).