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Intellectual Property Workshop
Patents and WPI’s Policies
November 12, 2003
William W. DurginAssociate Provost for Academic Affairs
Vice President for Research
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PatentsPatents
Provisional Utility Others Confer rights to owner Prevent competitors from profiting from
the invention defined by the patent claims
Rights can be enforced in court
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RightsRights A patent does not give the owner a right to make, use
or sell the invention. Rather, it prevents others of so-doing without
permission. The owners’ rights may be limited by patented
inventions of others - blocked. Infringement is the – offer to sell – selling – making
– using the invention defined in the claims.
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Sample PatentSample Patent
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Elements of a U. S. PatentElements of a U. S. Patent 1st Page Figures Specification Prior Art Ordinary Skill in the Art Preferred Embodiment Claims–Means plus function
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What’s Patentable?What’s Patentable?
Invention or discovery
–New and useful process
–New and useful machine
–New and useful composition of matter
–Or any new and useful improvement thereof
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Four HurdlesFour Hurdles
1. Patentable subject matter
2. Utility
3. Novelty
4. Non-obvious
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Patentable Subject MatterPatentable Subject Matter
Process Machine Manufacture or composition of matter New and useful improvements
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UtilityUtility
Useful Specific and substantial Credible Must actually work
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NoveltyNovelty
New First to invent Prior art– Printed publications– Public knowledge– Sale or offer to sell– Description in a patent with a filing date
prior to the date of invention
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Lose RightsLose Rights
Abandoned Invented by someone other than those
named First made by someone elsewhere in the
world provided not abandoned, suppressed, or concealed
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Non-obviousNon-obvious Scope and content of prior art at time of
invention Differences between prior art and claimed
invention Level of skill in the art Other evidence: – Long felt need– Commercial success– Failure of others– Unexpected results
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DisclosureDisclosure Don’t publish or present until:– Disclosed to WPI– Talked to one of us
Fill out and submit a WPI Disclosure Get your records in order:– Lab notebooks– Working notes, sketches, drawings– Draft publications
If you have worked on a federally-supported research program, we are legally obliged to notify the government.
If you have worked on a corporate-sponsored project or program, there are probably notification requirements.
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You’ve Invented Something - What Next?You’ve Invented Something - What Next?
Get your records in order Search the prior art File a disclosure– WPI owns:• We will designate a patent attorney• You will need to work with that attorney
– You own: • We will sign a letter relinquishing any WPI claims• You work with your patent attorney
Patent application is prosecuted Patent Issues
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Before you disclose, search the prior artBefore you disclose, search the prior art
Textbooks Journals Technical magazines Manufacturers’ catalogs Patents - www.uspto.gov
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Invention Disclosure FormInvention Disclosure Form
Fill it out Get required signatures Return to: – either Associate Provost/VP for Research
or Director of Intellectual Property
www.wpi.edu/Admin/Research/Sponsored/Forms/
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Contact InformationContact Information
William W. Durgin
Associate Provost/VP for Research
Boynton Hall, 2nd Floor
508/831-5065
Michael B. Manning
Director of Intellectual Property
Higgins Labs 123
508/831-5834
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Intellectual Property PolicyIntellectual Property Policy
Inventions Ownership Royalty division Copyrights/mask rights/service and
trademarks Appeals Students, faculty, staff
www.wpi.edu/Pubs/Policies/intell.html
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Royalty Rule IRoyalty Rule I
If WPI pursues the patent, then WPI will absorb the costs and will share royalties on a 50-50 basis with the inventor(s), after the costs of the patent are recovered, or will share royalties in accordance with WPI institutional agreements.
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Royalty Rule IIRoyalty Rule II
If the student(s) wish to pursue the patent, WPI will assign any ownership rights it may have to the student through a jointly signed agreement providing that the student will give 10 percent of net future financial gains from the patent to WPI. The student will absorb the costs of pursuing the patent. Alternatively, if the student wishes to have WPI absorb the costs of pursuing the patent, then Rule I applies.
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Royalty Rule IIIRoyalty Rule III
The inventor(s) will pay all costs associated with patenting the invention, and will receive all benefits from the patent.
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Student Rule 1Student Rule 1
For an invention made by students, on their own time, with their own facilities and resources, and in research/projects not within the stated objectives of their current sponsored research, PLAN projects, or thesis or dissertation research, the invention is owned by the inventor(s). Royalties for such inventions are covered by Rule III.
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Student Rule 2Student Rule 2
For an invention made by students while employed on a sponsored project (research or educational), including off-campus PLAN projects, the invention is owned by WPI, subject to any other agreements. Royalties for such inventions are covered by Rule I.
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Student Rule 3Student Rule 3
For an invention made by a student as a part of any project or sufficiency report, thesis, dissertation, course work, directed study, directed research, or examination, the invention is owned by WPI, subject to any other agreements. Royalties for such inventions are covered by Rule II.
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Student Rule 4Student Rule 4
For an invention made by students without significant use of WPI resources, the invention is owned by the inventor(s). Royalties for such inventions are covered by Rule III.
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Student Rule 5Student Rule 5
For an invention made by students with significant use of WPI resources, the invention is owned by WPI, subject to any other agreements. Royalties for such inventions are covered by Rule II.
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Patent Glossary URLsPatent Glossary URLs
From UCSD:http://
scilib.ucsd.edu/howto/guides/patsearch
/
From the Journal of Metals:http://www.tms.org/pubs/journals/JOM/matters/matters-9609.html
Thomsen Derwent Companyhttp://
www.thomsonderwent.com/patinf/terms
/
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Patent ResourcesPatent Resources
Intellectual Property: Patents, Trademarks, and Copyright in a Nut Shell, Arthur R. Miller and Michael H. Davis, West Publishing Company, P.O. Box 3526, St. Paul, Minnesota 55165, May 1983.
General Information Concerning Patents, U.S. Department of Commerce, Patent and Trademark Office, Reprinted August 1997.
Patenting, Beth E. Arnold, Foley Hoag Attorneys at Law, One Post Office Square, Boston, MA 02109.
