Patents & Other Types of IP
A patent for an invention is a grant to the patentee, his/her heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof [Title 35 U.S.C., § 154(a)(1)]. A patent is granted to the inventor of a new and useful machine, design, or plant after submitting an application and paying appropriate fees. The right conferred by the patent grant extends throughout the United States. International patents exclude others from making, using or selling the invention in other countries.
When would you apply for one? Why is it beneficial? Etc.
- An individual must apply to the government for a patent to secure his or her constitutional ownership rights.
- A critical feature of the Patent Code is "Right To Exclude," meaning the patent holder has exclusive rights to the invention - nobody else can use the invention without the patentholder's permission.
- It is up to the patent holder to enforce his or her rights if the patent is granted
If an Inventor wants to apply for a patent to protect their invention, they must take the following two steps:
- Conception: actually have/conceive the idea for a given invention
- Reduce to practice: an invented item is physically constructed or a process is performed. It suffices if an individual skilled in the art can duplicate the invention with the information provided in a patent application.
Provisional vs. non-provisional Patent Applications
The USPTO offers inventors 2 options for filing a patent:
- Nonprovisional: basic applications that undergo full Patent Office review and provide full protection. The applicant must first determine if the idea has already been patented by searching the USPTO database.
- Provisional: applications are not reviewed but establish a filing date. Can be filed up to 12 months following the date of first sale, offer for sale, public use, or publication of the invention, whichever occurs first, giving the inventor an additional year to develop & market the invention. Another benefit is that they establish an earlier start date. A subsequent nonprovisional application is based on the earlier provisional filing date, affording "patent pending" protection from that date. For more information, refer to the USPTO's website on Provisional Patents
Patent applications can become quite expensive and the process may be rather lengthy.
Basic filing fees for provisional and nonprovisional applications are $220 and $330, respectively.
Nonprovisional applications can easily cost many tens of thousands of dollars in search fees and attorney expenses, and, it can take the US Patent Office a about two or three years to process an application.
On September 16, 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act. Some of the main changes directly benefit public universities.
The legislation switches America to a first-to-file from a first-to-invent nation, expands the "prior art" that can be used to challenge a patent, sets up a new regime to challenge patents at the patent office, and gives the USPTO more flexibility to set and spend fees paid for by inventors and businesses to get patents and register trademarks. In all, the legislation is designed to make patent approval swifter and make it easier to weed out low-quality patents." More at Politico.
Universities were able to insert so-called "safe harbor" language into the bill that giving researchers a year after disclosing their discovery, say, in a publication, to file for a patent. Others remain skeptical that provisional patents will protect researchers from foreign patent filings, since other countries do not have safe harbor provisions.
- US Patent Office Implemention website
- Association of University Technology Managers? (AUTM) resource website on Patent Reform
- Statement of Administration Policy on H.R. 1249
- Full text of H.R. 1249
- US PTO link
- More at Politico
A Copyright is a form of protection, available to both published and unpublished works, provided by the laws of the United States [Title 17, U.S.C., § 102(a)] to the authors of original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works, Copyright is owned by the creator and is secured automatically when the work is created; a work is "created" when it is fixed in a copy or phonorecord for the first time.
Basically, if you put an idea in writing on paper or in a computer file, or record it with a tape recorder or camera, it is automatically copyrighted. The copyright can be registered formally with the federal government, which is required before an infringement suit may be filed in court.
A trademark is a word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services. The terms "trademark" and "mark" are commonly used to refer to both trademarks and service marks.
Generally, any confidential business information which provides the holder a competitive edge may be considered a trade secret. The unauthorized use of such information by persons other than the holder is regarded as an unfair practice and a violation of the trade secret. The subject matter of trade secrets is includes sales and distribution methods, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing processes, among other things. What information constitutes a trade secret will depend on the circumstances of each individual case.
A licensing agreement is a partnership between an IP rights owner (inventor/licensor) and another party authorized to use such rights (licensee) in exchange for an agreed payment (fee or royalty). The owner retains ownership rights, but the licensee is authorized to carry out certain acts protected by the copyright or patent.
At the Inventor's request, SF State may be able to convene an ad hoc review panel with external reviewers to evaluate an invention's marketability. For more about this matter, please contact the Interim AVP of Research.