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Introduction toIntellectual Property Law
forScientists & Engineers
University of Arkansas
November 8, 2005
J. Charles DoughertyWright, Lindsey & Jennings LLP200 W. Capitol Ave., Suite 2300Little Rock, AR 72201(501) [email protected]
What is Intellectual Property?
It is often not very intellectual; better to think of it
as intangible property. It includes, among other
things:
- Patents
- Trademarks
- Copyrights
- Trade Secrets
Why do we have IP laws anyway?
Patents and copyrights:
“To 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. Constitution, Article 1, Section 8, Clause 8
What about trademarks? Trade secrets?
What is a patent?
A patent is a government grant of the right to
exclude others from practicing a claimed invention.
A patent is not a government grant of the right to
practice the claimed invention.
How do patents differ from copyrights?
Utility patents are issued for useful inventions.
Copyrights protect expressive works.
Example: software may embody both copyrighted
works (source code, graphical displays) and
patentable inventions.
What kinds of things are patentable?
• processes
• machines
• manufactures
• compositions of matter
- includes business methods, software, and engineered organisms
- not abstract ideas, natural laws, or bare formulas
Is my invention patentable?
1. Novelty
- not shown in a single "prior art" reference
- can be a combination of old elements
2. Nonobviousness
- not obvious to one of ordinary skill in the relevant field
3. Utility
- must really work and have a known use
Who is an “inventor”?
An inventor is someone who contributes to the
conception of the invention.
U.S. patent applications must be filed in the name of
the true inventors. Inventorship is separate from
ownership.
What does a patent application look like?
•Title
•Background
•Detailed Description & Drawings
•Claims
•Abstract
How well must I disclose my invention in a patent application?
Enablement: you must describe your invention well
enough that someone of ordinary skill in the
relevant art could make and use your invention.
Best Mode: You must disclose the best means of
practicing the invention of which you are aware.
What happens if two people separately invent the same thing?
For the moment, the U.S. still adheres to the “first
to invent” rule.
If two patent applications are directed to the same
invention, the PTO will declare an “interference” to
determine who is the first inventor.
Other countries generally are “first to file.”
How long does a patent last?
Current rule: a patent expires 20 years from its
filing date.
A patent’s term may be extended due to PTO delay
or other agency regulatory delays.
Old rule: patents issued before June 8, 1995 expire
17 years from their issue date.
What must I disclose to the PTO?
You must disclose all information of which you are
aware that is material to the patentability of your
invention.
Inventors and patent attorneys are under a duty of
candor and good faith toward the PTO.
What kinds of patents are there?
Utility: the most common type of patent; granted for useful inventions.
Design: for new ornamental designs on an otherwise useful article.
Plant: for new varieties of asexually reproduced plants.
(The USDA administers a separate protection scheme for sexually reproduced plants)
What about foreign patents?
There is no such thing as an international patent. There are, however, treaties that make filing foreign patent applications easier.
•Paris Convention
- obtain U.S. filing date for foreign applications filed within one year
•Patent Cooperation Treaty
- international application process leading to national patents
Can I lose my right to a patent if I wait too long to file?
Yes! Certain “statutory bars” exist to prevent someone from patenting an invention that was already dedicated to the public.
Statutory bars apply even if the inventor did not know that the action taken would result in forfeiture.
Statutory Bars
You must file a patent application within one year of the date when your invention was first:
(1) patented anywhere;
(2) described in a printed publication anywhere;
(3) in public use in this country; or
(4) on sale in this country.
Statutory Bars (publication)
“Publication” includes anything that could be found by a reasonable search, or was distributed (even in very small numbers) to those working in the relevant field.
Dougherty, Jon Charles, 1966- / Design and simulation of an
optimization subsystem for a reluctance accelerator controller. / 1991
THESIS 1991 D744 PCL Stacks
COPY 2
THESIS 1991 D744 Request at Periodicals Desk PCL Level 2
COPY 1 USE IN LIBRARY ONLY
Statutory Bars (public use)
“Public” use means use in the natural and intended
way; generally, any use qualifies as public so long as
no active steps to maintain secrecy were taken.
No bar if public use is experimental, but experimental
use is very difficult to prove.
Statutory Bars (on sale)
The offer need not be public, and no actual sale or
delivery is required.
Statutory Bars (foreign patents)
In almost every other country, there is no grace period
whatsoever.
The exact rules vary by country. The lesson though is
that if you may be interested in foreign patents, you
should file an application somewhere before any of
the statutory bar acts occur.
Protecting your right to a patent
1. Development:• Maintain confidentiality• Document your work
2. Drafting the patent application:• Fully disclose the invention• Confirm inventorship• Disclose all material information
3. Filing:• File as quickly as possible
Also, plan ahead, especially if you are pursuing foreign applications.
Copyrights protect original, expressive works. Only
minimal expression is required.
Copyright protection is automatic; neither registration
nor notice are required under current law.
Copyright lasts for a limited (but very long) time.
What is a copyright?
No copyright can exist for mere facts, raw data, or
functional elements of otherwise expressive works.
A copyright can exist, however, for a compilation of
facts or data.
What is not protectable by copyright?
The copyright holder may exclude others from:
• copying the work• making "derivative works"• distributing copies• for certain works, performing the work publicly• for certain works, displaying the work publicly
What rights are granted by copyright?
Notice is not required for protection, but may impact
damages.
Components:
"©" or "copyright"
Date of first publication
Name of author
Example: © 2005 J. Charles Dougherty
How does copyright notice work?
Registration is not required for protection, but you
must register before filing an infringement suit.
Statutory damages and attorneys' fees are available if
you are registered at the time of infringement.
Registration is simple and inexpensive.
How does copyright registration work?
A mask work is a two- or three-dimensional layout for
an integrated circuit (IC).
These are protected under federal law in a manner
somewhat similar to copyrighted works.
The term of protection is only ten years.
What is a mask work?
A trade secret is information that (1) derives value
from being kept secret and (2) is the subject of
reasonable steps to maintain its secrecy.
Trade secrets are solely a creature of state law. There
is no trade secret registration scheme.
Trade secrets can potentially last forever, but
generally are of very limited life.
What is a trade secret?
Scott Hancock Innovation Center , Suite 107535 Research Center [email protected]: http://www.uark.edu/ua/techip
VALUE OF UNIVERSITYTECHNOLOGY TRANSFER
• Commercialize research results for the public good • Recruit, reward, and retain best and brightest
among faculty and students • Cement collaborations with industry• Promote economic growth and create wealth
• Generate income to support R&D infrastructure
UNIVERSITY POLICY
All intellectual property rights to research governed by university policy (e.g., Board of Trustee Patent and Copyright Policy 210.1) subject to superceding contractual rights and federal law and regulations as applicable.
TECHNOLOGY EVALUATION
• Feasability, e.g., manufacturability• Infrastructure supporting proposed work, e.g., budget• Security of intellectual property• State of the art in proposed & competing technologies• Credibility of proponent; likelihood of achieving
technical success• Commercial potential; likelihood of achieving
economic success• courtesy: Beta-Rubicon, LLC
DANCE OF DISCLOSURE
“Protect and commercialize”
LicenseAgreement
File/Negotiate
Patent
Request for Information
Disclose •Log in•Assess
Office of ViceProvost forResearch
EurekaInventor
Dept.Head
Dean
Outside Patent
Counsel
U of A Chancellor
Patent & Copyright Committee
Sea
rch
Find
IndustryPartner
…has many complex pieces!
Market-drivenOpportunity
MatchingResearch $$
ScientificResearchTeam
CommercialPartner
Risk $$
FederalGrants
QualifiedManagement
Private/Public/UniversityPartnership
StrategicImplementation,Market Research & Marketing Plan
The Road from Basic Research to Commercialization...
OPTION/LICENSE AGREEMENT
A university and company XYZ can enter into an option or license agreement that
sets out the business terms and conditions under which the university provides access
to patent or technology rights .
LICENSE AGREEMENTForms of Financial Consideration
• Running Royalties, e.g., __% of net sales
• Exclusivity Fee
• Milestone Payment
• Minimum Annual Payment
• Patent Cost Reimbursement
• Equity (start-up deals)
• Sub-licensing Royalties
THE NEW ECONOMY AND YOU
• Throughout history, research has provided us an understanding of the world around us. But, research makes its greatest contribution when it results in new technologies that provide medical, social, and economic benefits.
• Classical university technology transfer• Start-up Enterprise – technology-based economic
development• Technology transfer as a career
