7/29/021 intellectual property ron buchanan, ph.d., chp consultant for osu’s office of...

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Intellectual Property

Ron Buchanan, Ph.D., CHP

Consultant for OSU’s Office of Intellectual Property Management

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What is Intellectual Property (IP)?

• Know-how that others do not know.

• Discovery of something or some process that others have not discovered.

• Resulting tangible form:productprocesssoftware

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Who are the Inventors?

• Person(s) creating the new idea and how it is to be implemented.

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Who are NOT the Inventors?

• Persons who only wish something could be invented to solve a problem.

• Persons that have an idea on how to solve a problem, but it is not a practical or workable solution.

• Persons that only implement what the inventor directs, i.e., lab assistants, engineers, students, etc., that do not contribute to the novelty of the invention.

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Inventorship

• Inventorship is very important:Include only those contributing to the new

idea.Including those that did not contribute can

void a patent.Not including those that did contribute can

void a patent.Inventorship is not the same as authorship on

a published paper.

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Who Owns the IP Rights?

• Generally, the organization you work for.

• Part of the condition of employment.

• The patent has your name, but is assigned to your organization.

• Any material benefits you receive is above what is required.

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What is the Process?

• Number 1 - Discovery/develop a useful item, process, etc.

• Contact your IP office and fill out an Invention Disclosure Form (internal doc.)

• IP office will evaluate the invention for uniqueness, usefulness to their business, etc.

• IP office will contact you with decision.

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Next Step

• If the organization is not interested, they may allow you (for a fee) to patent, market it, etc., but they may (in some cases) retain the assigned IP rights.

• If the organization desires to protect their IP rights, then the following may occur:

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Protecting IP Rights

• Patent to prevent the competition from using it.

• Do not patent, but keep it as a trade secret.

• Patent and then use it within the organization and/or sell products.

• Patent and license it to companies outside the organization.

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Three Tests Of Patentability

1. New, novel, innovative - Demonstrably different from prior art New use Improvement.

2. Utility, usefulness - Perform some function Does what it says it does Provides some benefit.

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Tests

3. Non-obvious to person with ordinary skill in the art

SurprisingUnexpected

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Types of Patents

• Formerly, 17 years from date of issue.

• Types of patent applications (8 June 1995):Provisional Patent (1 year from date of filing)

Utility Patent (20 years from date of filing)

Plant Patent (20 years from date of filing)

Design Patent (14 years from date of issue)

Foreign filing (20 years from date of filing).

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Provisional Patent Timeline

• Inv. Disc. --> Provisional Patent Appl.:1 year to file an Utility Patent Appl.1 Year to file a Patent Cooperation Treaty

(PCT) Appl.18 month after filing of PCT to file foreign

patent applications (total of 30 months from time of Prov. Pat. Appl.)

• Caution! Prov. Pat. Appl. locks you into coming up with something in 12 months.

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Utility Patent Timeline

• Inv. Disc. --> Utility Patent Appl:1 Year to file a PCT:

• 18 month after filing of PCT to file foreign patent appl. (total of 30 months from time of Utility Pat. Appl.)

Maintenance fee due in 3.5, 7.5, and 11.5 years (total fees = approx. original cost of patent).

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Patenting Process

• Submit desired type of patent application (patent attorney).

• Exchange of information between IP office, inventor, U.S. Patent and Trademark Office, and patent attorney.

• Claims accepted or denied.• Final USPTO decision –

Grant patent # on a given datePatent denied

(Cost for each patent application and each office action)

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Public Disclosure & IP Rights

• In the U.S.A and Canada you have 1 year to file after making public disclosure (but best to file before!)

• Foreign countries, you do not have any IP rights after any type of public disclosure.

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What is Public Disclosure?

• Enabling technology by:PresentationsPublicationsPrivate conversations/meetings without a

confidentiality agreement in placeMarketing of product/processCollege thesis available to public

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Confidentiality Agreement

• Confidentiality Agreement (CA) or sometimes called a Non-confidentiality Agreement (NCA) or Secrecy Agreement:One and/or both parties agree to keep

information secret for a given period, i.e., 3-5 years.

All confidential info should be labeled and conversations documented.

Serious legal matter, so do not take lightly!

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Licensing Process to Outside Organizations

• IP office will:Evaluate technical aspect of the invention

disclosureInvestigate former artContact appropriate companiesDraft licensing agreementRework licensing agreement until mutually

acceptable.

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Licensing Agreement

• Legal terms of the contract

• Up-front fees

• Royalties

• Sublicensing

• Time to market/royalties

• Business plan

• Termination clauses

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Summary

• Evaluate your invention for usefulness/markets.• Fill out an invention disclosure form.• Work with your IP office and patent attorney,

providing them with details and prior art info.• Realize the cost:

U.S.A. patent is $5k-$10k PCT is $3k-$5kForeign filings are $500-$15k eachTotal maintenance fees are approx. equal to the

original patent cost.

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Conclusions

• Consider IP issues along with the invention/technology aspects, not as an after thought.

• Keep good lab and notebook records.

• Treat your organization’s IP rights and those of other organizations with caution and respect.

• www.uspto.gov (see appendix for others).

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INTELLECTUAL PROPERTY Web site 

US Patent and Trademark Office http://www.uspto.gov/

US Copyright Office http://www.loc.gov/copyright/

OSU Patent and Trademark Library http://www.library.okstate.edu/patents/index.htm

IBM Patent Server http://www.almaden.ibm.com/cs/ibm_pat_srvr/homepage.html

European Patent Office http://www.european-patent-office.org/

Japanese Patent Office http://www.jpo.go.jp/homee.htm

The Provisional Application http://TENonline.org/art/9603.html

Index to Manual of Classification of Patents http://www.ibiblio.org/patents/index.html

Intellectual Property Information Page http://www.geocities.com/ResearchTriangle/2568

Intellectual Property Mall http://www.ipmall.fplc.edu/web_resources/pb_5.htm/

IP at The National Academy of Sciences http://ip.nationalacademies.org/

Massachusetts Institute of Technology http://web.mit.edu/tlo/www/index.html

Stanford University http://otl.stanford.edu; http://stvp.stanford.edu/

University of Wisconsin http://www.warf.ws/index.jsp

Carnegie Mellon University http://www.cmu.edu/innovationtransfer/

University of Michigan http://www.techtransfer.umich.edu/index.html

University of Chicago http://www.lib.uchicago.edu/~llou/intlip.html

Franklin Pierce http://www.fplc.edu/tfield/ipbasics.htm#pra

Community of Science http://www.cos.com/

Council on Government Relations http://www.cogr.edu/

Appendix