Research AdministrationFor Scientists

COMP 290-083Tim 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

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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.

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United States ConstitutionArticle 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 …”

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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

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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 1980 3,376 new companies formed– As of 2000 2,309 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

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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

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Patent Law

How long can you exclude others from making, using, selling?

• 20 years from date of filing• You must pay maintenance fees

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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

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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)

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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

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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

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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

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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.”

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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.

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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)

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35 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

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35 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.

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35 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.”

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• Diligence

• Actual Reduction to Practice

• Constructive Reduction to Practice

• Document Disclosure Program (DDP)

• Provisional Patent Application (PPA)

• Divisional Application

Definitions

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

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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.

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• 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

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• 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

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• 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.

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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

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35 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.”

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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

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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

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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 filedPotential rights exist if

“first to invent”

Patent pending, filed but not issued1-3 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

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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

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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

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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.

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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.