intellectual property basics
TRANSCRIPT
IP Basics
Tomas Isakowitz
Center for Technology Transfer
University of Pennsylvania
From inventor…
•Jay Sorensen
invented a coffee cup
sleeve
•Cardboard sleeve
around coffee cup
•Conceived of idea in
1991
•Began working on
idea and marketing
•Filed for a patent in
1993
To entrepreneur
•$15,000 in 1993 for product
development and a production
run of 100,000 units
•Aggressively marketed
•Filed for and defended
intellectual property
protection
•Sold over 1 billion units to
date
Trademarks
Copyright
And This
Next year, he'll make more
than twice as much as all
of our past presidents for
all of their terms combined.
And Jordan will only have
to have this income for 270
more years to have a net
worth equivalent to that of
Bill Gates.
PATENT
• Pateo: to lie
open, exposed,
accessible
• 'litterae
patentes',
meaning an
open letter.
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Guilds
• Early Middle Ages, Roman craft
organizations: stonecutters,
glassmakers
• Mid-13th century: paris has 100 guilds
• 14th century: 450
• farriers, knife-makers, locksmiths,
chain-forgers, nail-makers
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Guild Priviledges
• letters patent
• usually issued by the king or state and
overseen by local town business
authorities
• predecessors of the modern patent and
trademark system.
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A bit of History
English patent, granted in
1449 by King Henry VI.
• John of Utynam
• master glass-maker from
Flanders
• came to England to make the
windows for Eton College.
• a 20-year monopoly on the
making of stained glass.
• required to teach his process
to native Englishmen
Design Patens Letter
US Constitution:
Article I Section 8
• The Congress shall have Power To lay and collect Taxes, Duties, Imposts
and Excises, to pay the Debts and provide for the common Defense and
general Welfare of the United States; but all Duties, Imposts and Excises
shall be uniform throughout the United States;
• To borrow Money on the credit of the United States;
• …
• 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;
• To define and punish Piracies and Felonies committed on the high Seas,
and Offences against the Law of Nations;
Patents
The right to exclude others from
making, using, selling, offering to sell or importing the invention
for the active term of the patent
20 years from earliest filing date
The right is not automatic - you must actively assert your right by putting the infringer on notice that you own the invention and will sue them for infringement if they do not cease their activities
Criteria for Patentability:
The Invetion
Useful
There must be a demonstrated utility, or an
assertion of utility believable by one of skill in the
art
Novel
What is disclosed must be different from what
is already known
Non-obvious
• Others have tried and failed
• Unexpected results
Patent Rights
Are limited
geographically
A U.S. patent is limited to the U.S. and its
territories
A U.S. patent cannot be enforced outside
the U.S.
Time-wise: 20 years from earliest
filing data
Patentable Subject Matter
Compositions
Devices/Machines
Methods
of using: e.g. new uses of known compositions
of making: e.g., New methods of making known compositions
Not patentable
Laws of nature
physical phenomena
abstract ideas (formulas)
Issued Patent versus Patent
Application
Application
Filing
Review
Publication (within 18 months)
Prosecution
…
Issue
Patent applications do not confer the rights of an
issued patent even if published
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How to read a patent
A patent has several sections
Front Page
Drawings
Specification
Claims
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INID Codes
Issue dateUtility patent #
B2 =
previously
published
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USPTO has its Guide for
Preparation of Patent
Drawings
Specification
Title of the invention
Cross-reference to related applications
Statement regarding federally sponsored research or
development
Background of the invention
Brief summary of the invention
Brief description of the drawings
Detailed description of the invention
A claim or claims
Claims
Independent claim
stands alone
includes
preamble (A method of treating…)
transitional phrase (comprising, consisting of)
body (describes features defining the scope and
limits)
Dependent claim
includes all the features of the claim from which it
depends
adds at least one additional feature to the claim from
which it depends
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Determining “Novelty”
It is not known prior to this disclosure
• not published (journal, newspaper,
patent)
• Not presented orally, or in video, etc.
• Not in common use
Patent Search Tools
Tools
• Patent Lens
• Free Patents Online
• Google Patents
• WIPO
Novelty
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It is not known prior to this
disclosure
• not published
(journal, newspaper, pate
nt)
• Not presented orally, or in
video, etc.
• Not in common use
Tech Transfers and IP
• From the lab to the benefit of society
• Revenue producing
• IP has significant Value
• Think about protection
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