INTELLECTUAL PROPERTYINTELLECTUAL PROPERTY

byby

Robert M. (Bob) Hunter, Ph.D.Robert M. (Bob) Hunter, Ph.D.

Registered Patent AgentRegistered Patent Agent

WebPatent.comWebPatent.com

What is Intellectual What is Intellectual Property?Property?• An intangible product of the intellectAn intangible product of the intellect

• Free for anyone to use unless Free for anyone to use unless protectedprotected

• Must be placed in a “vessel”Must be placed in a “vessel”

• Can be sold, rented, licensed, etc.Can be sold, rented, licensed, etc.

• Some rights allocated by regulationSome rights allocated by regulation– technical datatechnical data– subject inventionssubject inventions

WHY SHOULD YOU CARE?WHY SHOULD YOU CARE?

INTELLECTUAL PROPERTY RIGHTSINTELLECTUAL PROPERTY RIGHTS

MAY BE THE ONLY ASSET REMAINING MAY BE THE ONLY ASSET REMAINING AFTER THE PROJECT ENDSAFTER THE PROJECT ENDS

Types of Intellectual Types of Intellectual PropertyProperty• PatentsPatents

– Utility (technology), design and plantUtility (technology), design and plant

• Plant varietyPlant variety

• Trade secretTrade secret

• CopyrightCopyright

• Semiconductor mask workSemiconductor mask work

• Trademark/service markTrademark/service mark

• Trade dressTrade dress

CopyrightCopyright

• Literary works, including computer programsLiterary works, including computer programs• Musical works, including any accompanying Musical works, including any accompanying

words words • Dramatic works, including any Dramatic works, including any

accompanying music accompanying music • Pantomimes and choreographic works Pantomimes and choreographic works • Pictorial, graphic, and sculptural works Pictorial, graphic, and sculptural works • Motion pictures and other audiovisual works Motion pictures and other audiovisual works • Sound recordings Sound recordings • Architectural works Architectural works

Cannot CopyrightCannot Copyright

• Titles, names, short phrases, and slogans; Titles, names, short phrases, and slogans; familiar symbols or designs; mere listings familiar symbols or designs; mere listings of ingredients or contentsof ingredients or contents

• Ideas, procedures, methods, systems, Ideas, procedures, methods, systems, processes, concepts, principles, processes, concepts, principles, discoveries, or devicesdiscoveries, or devices

• Standard calendars, height and weight Standard calendars, height and weight charts, tape measures and rulers, and lists charts, tape measures and rulers, and lists or tables taken from public documents or tables taken from public documents

Copyright Owner Can Copyright Owner Can PreventPrevent

• Reproduction of a workReproduction of a work

• Preparation of derivative worksPreparation of derivative works

• Distribution of copiesDistribution of copies

• Performance of the work publiclyPerformance of the work publicly

• Display of the work publiclyDisplay of the work publicly

• Digital audio transmission (including Digital audio transmission (including webcasting) of sound recordingswebcasting) of sound recordings

Securing a CopyrightSecuring a Copyright

• Secured Secured automaticallyautomatically when the work is when the work is fixed in tangible form for the first timefixed in tangible form for the first time

• Deposit with the Library of Congress Deposit with the Library of Congress mandatorymandatory for works published in U.S. for works published in U.S.

• Use of copyright notice precludes innocent Use of copyright notice precludes innocent infringement defense, e.g., © 2000 John infringement defense, e.g., © 2000 John Doe Doe

• Benefits of timely copyright registration Benefits of timely copyright registration ($30 filing fee) include right to enforce and ($30 filing fee) include right to enforce and availability of statutory damagesavailability of statutory damages

Design PatentDesign Patent

• Shape or surface ornamentation of an Shape or surface ornamentation of an article of manufacturearticle of manufacture

• Protects the way the article looksProtects the way the article looks• Application includes a drawing of the Application includes a drawing of the

article and a single claim in a specific formarticle and a single claim in a specific form• Must be ornamental, novel, nonobviousMust be ornamental, novel, nonobvious• Examples: full user interface or individual Examples: full user interface or individual

icon embodied in a computer screen; icon embodied in a computer screen; shape of a new vehicle or instrumentshape of a new vehicle or instrument

• Term: 14 years from date of grantTerm: 14 years from date of grant

Computer Icon for Display Computer Icon for Display PanelPanelU.S. Patent No. D439,912U.S. Patent No. D439,912

Plant PatentPlant Patent

• Plants propagated asexually, e.g., by Plants propagated asexually, e.g., by rooting, layering, budding, grafting, etc.rooting, layering, budding, grafting, etc.

• Includes cultivated sports, mutants, Includes cultivated sports, mutants, hybrids, and newly found seedlingshybrids, and newly found seedlings

• Excludes tuber propagated plants or plants Excludes tuber propagated plants or plants found in an uncultivated statefound in an uncultivated state

• Inventor(s) must have asexually reproduced Inventor(s) must have asexually reproduced the plant to establish reproducibilitythe plant to establish reproducibility

• Claimed invention must be a distinct and Claimed invention must be a distinct and new variety of plant, not just a flower or a new variety of plant, not just a flower or a fruitfruit

Plant Patent ApplicationPlant Patent Application

• Characteristics that distinguish the plant Characteristics that distinguish the plant from related known varieties, including from related known varieties, including colors of plant structures, if distinctivecolors of plant structures, if distinctive

• Where and in what manner the plant was Where and in what manner the plant was asexually reproducedasexually reproduced

• Location and character of area in which a Location and character of area in which a newly found plant was foundnewly found plant was found

• A single claim in a specific formA single claim in a specific form• Two copies of color drawings or Two copies of color drawings or

photographsphotographs

Grape Plant “Sugareighteen”Grape Plant “Sugareighteen”U.S. Patent No. PP11,820U.S. Patent No. PP11,820

Plant VarietyPlant Variety

• Sexually reproduced (by seed) and tuber Sexually reproduced (by seed) and tuber propagated plant varietiespropagated plant varieties

• Variety must be new, distinct, uniform and Variety must be new, distinct, uniform and stablestable

• Variety may be represented by seed, Variety may be represented by seed, transplants, plants, tubers, tissue culture transplants, plants, tubers, tissue culture plantlets or other matter plantlets or other matter

• Term: 20 years from date of issue of Term: 20 years from date of issue of certificate, 25 years for a tree or vine certificate, 25 years for a tree or vine

Variety Owner Can PreventVariety Owner Can Prevent

• Selling or marketing of the protected Selling or marketing of the protected varietyvariety

• Importation of the variety into, or Importation of the variety into, or exportation from, the U.S.exportation from, the U.S.

• Sexual multiplication or propagation of the Sexual multiplication or propagation of the variety as a step in marketingvariety as a step in marketing

• Use of the variety in producing (as Use of the variety in producing (as distinguished from developing) a hybrid or distinguished from developing) a hybrid or different varietydifferent variety

Variety Protection CriteriaVariety Protection Criteria

• Has not been sold in U.S. by breeder within Has not been sold in U.S. by breeder within 1 year of filing date or outside U.S. within 4 1 year of filing date or outside U.S. within 4 years of filing date (6 years for vines and years of filing date (6 years for vines and trees)trees)

• Clearly distinguishable from any known Clearly distinguishable from any known varietyvariety

• Variations are describable, predictable, and Variations are describable, predictable, and commercially acceptablecommercially acceptable

• When reproduced, remains reasonably When reproduced, remains reasonably unchanged in essential characteristicsunchanged in essential characteristics

Variety Protection Variety Protection ApplicationApplication• Name of variety (or temporary Name of variety (or temporary

designation)designation)

• Description of the variety and genealogy Description of the variety and genealogy and breeding procedure, when known and breeding procedure, when known

• Basis of the claim that variety is newBasis of the claim that variety is new

• Declaration that a viable sample of basic Declaration that a viable sample of basic seed will be deposited and replenished seed will be deposited and replenished periodically in a public repositoryperiodically in a public repository

• Basis of applicant's ownership Basis of applicant's ownership

Trade SecretTrade Secret

• Any formula, pattern, device or Any formula, pattern, device or information used in one's business that information used in one's business that has commercial value or that provides its has commercial value or that provides its owner with a competitive advantageowner with a competitive advantage

• Sufficiently secret that use of improper Sufficiently secret that use of improper means is necessary to acquire itmeans is necessary to acquire it

• A competitor may use legal means (e.g., A competitor may use legal means (e.g., reverse engineering) to independently reverse engineering) to independently discover the secret discover the secret

• Term: until the subject matter enters the Term: until the subject matter enters the public domainpublic domain

Technical DataTechnical Data• Any recorded technical information Any recorded technical information

developed in performance of awarddeveloped in performance of award– reports, invention disclosuresreports, invention disclosures– software documentationsoftware documentation

• Rights retained by small business for four Rights retained by small business for four years after each phase of projectyears after each phase of project

• After those periods, Government may After those periods, Government may use, release or disclose to others, or use, release or disclose to others, or permit others to use!!permit others to use!!

Game Rule No. 1Game Rule No. 1

Do not rely on trade secretDo not rely on trade secret

protection of intellectual propertyprotection of intellectual property

developed duringdeveloped during

SBIR or STTR projectsSBIR or STTR projects

Subject InventionsSubject Inventions

• What is included?What is included?– patentable technology, design or plantpatentable technology, design or plant– protectable plant varietyprotectable plant variety

• How does a discovery qualify?How does a discovery qualify?– invention conceived or first actually invention conceived or first actually

reduced to practice in performance of workreduced to practice in performance of work– date of determination of plant variety date of determination of plant variety

within period of performancewithin period of performance

Game Rule No. 2Game Rule No. 2

Make sure the members Make sure the members

of your project team of your project team

can identify a subject inventioncan identify a subject invention

when they see onewhen they see one

and understand their obligationand understand their obligation

to document it and disclose it to youto document it and disclose it to you

Examples ofExamples ofPatentable TechnologiesPatentable Technologies• Mechanical, electrical, optical devicesMechanical, electrical, optical devices

• Isolated microbial cultures, DNA, RNAIsolated microbial cultures, DNA, RNA

• Plants and seedsPlants and seeds

• Genetically-engineered non-humansGenetically-engineered non-humans

• Ways of making or operating thingsWays of making or operating things

• Business methodsBusiness methods

• Software systems, processes, interfacesSoftware systems, processes, interfaces

Cheese Filtered CigaretteCheese Filtered CigaretteU.S. Patent No. 3,234,948U.S. Patent No. 3,234,948

Method of Concealing BaldnessMethod of Concealing BaldnessU.S. Patent No. 4,022,227U.S. Patent No. 4,022,227

Decoy and Hunter ShieldDecoy and Hunter ShieldU.S. Patent No. 5,572,823U.S. Patent No. 5,572,823

Types of Utility Patent Types of Utility Patent ApplicationsApplications

• Provisional U.S. patent applicationProvisional U.S. patent application– Asserts priority of invention internationallyAsserts priority of invention internationally

• Regular U.S. patent applicationRegular U.S. patent application– Contains claims; is examined; can issueContains claims; is examined; can issue

• International (PCT) patent applicationInternational (PCT) patent application– Does not issue as a patentDoes not issue as a patent

• Regional patent application (e.g., EPO)Regional patent application (e.g., EPO)• Non-U.S. patent applicationNon-U.S. patent application

Patentability CriteriaPatentability Criteria

• Legal-required to report? can patent?Legal-required to report? can patent?– appropriate subject matterappropriate subject matter– useful, novel, non-obvioususeful, novel, non-obvious

• Practical-business reason to patent?Practical-business reason to patent?– valuablevaluable– long economic lifelong economic life– enforceableenforceable– FUD-Fear, Uncertainty and DoubtFUD-Fear, Uncertainty and Doubt

Business Method DefinedBusiness Method Defined

• Administering, managing, or Administering, managing, or otherwise operating an enterprise or otherwise operating an enterprise or organizationorganization

• Processing financial dataProcessing financial data

• Any technique used in athletics, Any technique used in athletics, instruction, or personal skillsinstruction, or personal skills

Business Method RulesBusiness Method Rules

• Publication of application requiredPublication of application required

• Disclosure of search results requiredDisclosure of search results required

• Nonobviousness of a computer Nonobviousness of a computer implemented business method definedimplemented business method defined

• Grounds for post-grant opposition Grounds for post-grant opposition widenedwidened

• Prior use defense createdPrior use defense created

Allocation of RightsAllocation of Rights

• Small business (or subcontractor) may Small business (or subcontractor) may retain title to a subject inventionretain title to a subject invention– depends on who thought it up or built and depends on who thought it up or built and

tested ittested it– cannot require subcontractors to give up cannot require subcontractors to give up

rights as a condition of hiring themrights as a condition of hiring them

• Government receives a non-exclusive, Government receives a non-exclusive, nontransferable, irrevocable, paid-up, nontransferable, irrevocable, paid-up, worldwide license for Government useworldwide license for Government use

Game Rule No. 3Game Rule No. 3

It is often a good idea for the “inventing”It is often a good idea for the “inventing”

portion of an SBIR or STTR project toportion of an SBIR or STTR project to

be performed by employees of thebe performed by employees of the

small business recipient of the award small business recipient of the award who have signed employment who have signed employment

agreementsagreements

assigning inventions to the businessassigning inventions to the business

Your ResponsibilitiesYour Responsibilities

• Report invention to Government within Report invention to Government within two months of disclosure by inventor(s)two months of disclosure by inventor(s)

• Elect to retain title within two years of Elect to retain title within two years of initial reportinitial report

• File a non-provisional U.S. patent File a non-provisional U.S. patent application within one year of electionapplication within one year of election

• File non-U.S. patent applications within File non-U.S. patent applications within ten months of U.S. filingten months of U.S. filing

Commercializing Your Commercializing Your RightsRights• Licensing or sale (assignment) of rightsLicensing or sale (assignment) of rights

– Herculean marketing effort requiredHerculean marketing effort required– Less investment, less riskLess investment, less risk– Much smaller potential returnMuch smaller potential return– Less or no controlLess or no control– Like dancing with an elephantLike dancing with an elephant

• New venture formationNew venture formation– Larger skill set requiredLarger skill set required– Like riding a tigerLike riding a tiger

ConclusionsConclusions

• SBIR and STTR programs are SBIR and STTR programs are excellent wealth-building techniquesexcellent wealth-building techniques

• But only if you commercialize your But only if you commercialize your intellectual property rightsintellectual property rights

• Preserve and protect those rights Preserve and protect those rights and then sell, sell, sell them either and then sell, sell, sell them either embodied in products or outright!embodied in products or outright!

IP MANAGEMENT IP MANAGEMENT WEBSITESWEBSITES• Patent searching-expect surprisesPatent searching-expect surprises

– www.uspto.govwww.uspto.gov– www.delphion.comwww.delphion.com– www.surfip.gov.sgwww.surfip.gov.sg

• Invention reporting-an allowable costInvention reporting-an allowable cost– www.iedison.govwww.iedison.gov

• Protecting and licensing inventionsProtecting and licensing inventions– www.webpatent.comwww.webpatent.com