institute of technology, entrepreneurship and innovationbemidji state university institute of...

Institute of Technology, Entrepreneurship and Innovation

Bemidji State UniversityBemidji State University Institute of Technology, Entrepreneurship and Innovation

Intellectual Property Protection

Karen White



What is Intellectual Property?Intangible property that is the result

of creativityA term referring to a number of

distinct types of legal monopolies over creations of the mind

Intangible asset that consists of human knowledge and ideas

Creations of the mind



What is Intellectual Property Protection?Laws that establish and maintain ownership

rights to intellectual propertyLegal entitlements to be the only one to gain

from the intellectual property-- the right to exclude others from gaining from the idea



Types of Intellectual Property ProtectionPatentsTrademarksCopyrightTrade Secret



Why is Intellectual Property protection important?Protects important assets from theft,

exploitation or abuseIdentifies contributions by the Company or

inventor to the fieldSecures monetary compensationSometimes all a company has to leverage is

its IP


Bemidji State University

Company A Company B

•Employee, Customer and Supplier Goodwill•Common Law Trademarks and Trade Secrets

•Building, Equipment, Inventory

• Registered– Trademarks, Copyrights• Patents– Business Method, Utility, Design• IP assignments and noncompetes- employees and contractors•Formal Trade Secret Protection•Form contracts– employees, suppliers and customers

Assets Assets



Trade SecretAny information that derives independent

economic value from not being generally known or readily gained

Formula, pattern, compilation, program, device, method, technique , or process

Compare with patent

The Coca-Cola formula was developed in 1886. Had the formula been patented it would have been public at the time the patent was granted.

The patent term would have expired by 1910. Once the patent term expired anyone could have produced Coca-Cola and made money from the formula.



Uniform Trade Secrets Act (USTA)Protects trade secrets if disclosed or is gained by

improper meansFactors

Is the information known outside the business?Extent to which it is known to those inside the

business?Precautions taken to guard the secrecy of the

informationHow to protect/identify?

“Confidential Property of Company X” stamped on all material

Company policies and procedures to keep secret



CopyrightCopyright law protects the expression of an

idea. Not the idea itself.Protect literacy, dramatic, musical, artistic,

and computer worksMust be fixed in a tangible mediumComputer software can be copyrighted

Prevent others from displaying, reproducing, adapting, performing, or publishing copyrighted works



DurationIndividual

Life of author + 70 yearsCorporation

95 to 120 yearsIdentification

Notice should be placed on the work with the date being the date of first publication “Copyright © 2010 Company X. All rights

reserved.”For computer programs the copyright notice

should appear on the first screen



RegistrationCopyright registration is not required for

protectionIt is required to sue for infringement



TrademarksA word, name, symbol or deviceUsed to identify the source of a good or

service

® used to identify federally registered trademarks

™ used to identify unregistered trademarks



PatentsThe right to exclude others from making,

selling, offering to sell or importing the invention in the U.S.

Not the right to practice your own inventionIn exchange for full disclosure of your idea

(in other words you put your idea into the public domain) you receive a monopoly for the term of the patent



Types of PatentsUtility

ProcessManufactureMachineComposition of Matter

DesignPlantAnything under the sun created by man

You cannot patent something found in nature



Invention patentable ifUnique (novel)Useful (utility, needs only 1)Non-obviousDisclosedDescribed so others can make it

(enablement)



Bars to noveltyPatented, published, known or used by others

before your invention was madeIn public use, on sale, or published more than

1 year before your filing dateDescribed in a patent by another with a filing

date earlier than your invention dateInvented by anotherAbandoned by inventor, or invented but

failure to show diligence from conception to filing



NonobviousnessObviousness means that the invention is

different from the prior art but the differences are so trivial as to be “obvious to one of ordinary skill in the art”

Requirement for obviousnessTeaching of each element in the prior artMotivation to modify the prior art to arrive at

the inventionLikelihood of success in making and using the

invention



Parts of a patent applicationSpecification

Written description Enablement

Must teach how to make and use the claimed invention

Best mode Disclose the “best mode” for making and using the

claimed invention

ClaimsDrawingsOath or declarationFiling, search and examination fees



Patent ApplicationsProvisionalNon-Provisional

Continuation Same specification, different claims

Continuation-in-part Contains some new material and prior application is

prior art to the new matterDivisional

If the first application really contained two distinct inventions



Provisional PatentNot examinedA place holderBecomes abandoned after 1 year

Two ways to become a non-provisional application File a non-provisional application claiming the benefit

of the provisional application Convert the provisional application to a non-

provisional application

No claimsNo oath or declaration



ClaimsClaims define the boundaries of the invention

Pointing out and distinctly claiming the subject matter

Define the scope of the protection afforded by the patent

The claims are what the judges look at regarding infringement cases

Sample claimsA compound of formula XA pharmaceutical formulation for a compound of the

formula X.A method of using compounds of the formula X to

treat diseases 1,2, … 10.



Patent TermTerm of utility patent

Start of term– when patent has been grantedEnd of term– 20 years from patent filing date

Effective only in the U.S.Foreign patent applications must be filed

separately



Duty of CandorApplicants must disclose all material/relevant

information to patent officeInformation Disclosure Statement (IDS)Ongoing duty that continues until issuanceIf new art is discovered after issuance, the

patantee or others may ask for reexam



Patent OwnershipInventors

Inventors must be individuals, not companies or corporations

Not listing the actual inventor/s makes the patent invalid

To be an inventor the individual must have contributed to at least 1 claim

Correction can be made at any time so long as there was not prior deceptive intent



Patent OwnershipAssignees

Can be an individual or a companyCan be listed at the time of the application

or added at any time during the patent term

This is how companies own the intellectual property

Can exclude the inventor from future patent procedures



What is a license?A contractLicensor grants the right to practice the

technology claimed in the patent to the licensee

Licensor agrees to not sue licensee for infringing on licensor’s patent

No transfer of ownership



Who can file a patent application?InventorsRegistered Patent Attorney

Must have a bachelor degree in engineering or science field

Must have law degreeMust have passed USPTO Patent Bar ExamCan work on all aspects of patent law



Who can file a patent application?Registered Patent Agent

Must have a bachelor degree in engineering or science field

Must have passed USPTO Patent Bar ExamCannot litigate or other services

considered practicing law (contracts)Your buddy with 5 issued patents and

experience with the application process cannot represent you to the USPTO



InventionTwo elements to any inventionConception

Idea that is complete enough that the invention can be made by others

Reduction to practiceHas the invention in fact been made/practiced?Does not need to be in final form

Inventors must account for time lapses between conception and reduction to practice– otherwise abandonmentTesting/experimenting, researching, fine tuning



Why keep recordsU.S. operates on a “first to invent”Need evidence of conception, reduction to

practice and diligence – all threeNeed corroboration by non-inventorsAids in writing the patentEstablish a date of invention



Best PracticesKeep a lab/research notebookSeparate notebook for each inventionSigned regularly by someone knowledgeable

in the field but NOT a co-inventorhttp://www.snco.com/graph.htmUsually never needed but when it is needed it

is desperately needed (like insurance or smoke detectors)



Patent Application ProcessPreparing the applicationFiling the application and formal documentsOffice actionsResponses AppealAllowanceIssuanceMaintenance



Patent Searchhttp://patft.uspto.gov/http://www.google.com/patentshttp://www.google.com/

advanced_patent_searchhttp://www.freepatentsonline.com/



How much does it cost to file a patent?Patent filing fees

http://www.uspto.gov/web/offices/ac/qs/ope/fee2009september15.htm

Patent Attorney/Patent Agent feeshttp://www.webpatent.com/costs.htm



How much does it cost to file a patent?USPTO fees

Basic filing fee $82.00 Independent claims in excess $110.00 Claims in excess of 20 $26.00 Multiple dependent claim $195.00 Utility search fee $270.00 Utility examination fee $110.00 Utility issue fee $755.00 ($1,548) Maintenance fees (3 separate fees) $3,785.00 Total $5,333.00 Provisional Patent $110.00

Patent Agent fees Patent search $1,000 Patent application $8,000

Total $9,000 ($14,000)



Patent JustificationShort summary of the inventionWhat are the potential markets?Who might be interested in licensing this

inventionSummarize the closest prior art and how this

invention can be distinguishedSummarize any dominant patents that might

make it difficult to commercialize the invention



Publications of Patent ApplicationsPatents applications are published unless

You request in writing that the application not be published

The application cannot ever be involved in a foreign patent application requiring publication

Patents are published



Patent Marking Required to mark the articles with the word

“Patent” and the number of the patentPenalty for failure to mark

Patentee may not recover damages from an infringer

Unless the infringer was duly notified of the infringement and continued to infringe after the notice

Marking something as patented when it is not is against the law



Patent PendingHas no legal effectOnly give information that an application for

patent has been filedProtection afforded by a patent does not start

until the actual grant of the patent



Best practicesKeep good records

Inventors notebookDated photosReceipts

Build prototypesDo not talk about the invention except to

persons who have signed a confidentiality agreement

Search to determine what is possibly patentableContinually work on “who is going to pay me?”Find a good attorney and keep asking “What

can I do to help keep my costs down?”


Bemidji State University

Compare and ContrastIntellectual Property TermPatents protect the

knowledge behind how to make an invention

Copyrights protect the work

Trademarks protect the name or image

Trade secrets protect anything secret

Patents expire within 20 years

Copyright expires within 70 years

Trademarks never expireTrade secrets last until

they become public



Questions?

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