Intellectual Property

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John AyersFebruary 25, 2005

What is intellectual property?

Intellectual Property is something produced using human intellect which has commercial value.

How Intellectual Property Law Works

• Affirmative Rights, NOT Protection

• Allows owner to file a lawsuit against a transgressor

• Does not stop a transgressor

Types of IP Law

• Trade Secret Law

• Copyright Law

• Trademark law

• Patent Law

Trade Secret Law

• What is a trade secret?– It gives the owner a competitive advantage.– It is something the owner has tried to keep a secret by

reasonable precautions.

• Trade Secret Law allows the owner to file suit against parties who wrongfully obtain and use a trade secret.

• Trade Secret Law derives from State and Federal Law• International Protection stems from the GATT

(General Agreement on Tariffs and Trades)

Copyright Law

• Protects creative works– Books– Paintings– Software– Web sites

• It protects the exact expression, but not the underlying ideas.

• Originated in the U.S. Constitution• International protection by Berne Convention• Protection can exceed 100 years

Trademark Law

• Protects distinctive symbols– Names– Logos– Slogans

• Originates in state and federal statutes• International Protection by Paris

Convention• Protection can be indefinite

Patent Law

• Protects inventions

• Originated in the U.S. Constitution

• International Protection by Paris Convention and Patent Cooperation Treaty

Types of Patents

• Utility Patent– Most common– Expires 20 years after application

• Design Patent– Expires 14 years after application

• Plant Patent– Expires 17 years after application

Utility Patent

• Novel• Nonobvious• Invention must have some usefulness (even if humorous)• Invention must work, at least in theory• What is patentable?

– Processes– Machines– Manufactures– A composition of matter– A new use for one of the above

Design Patent

• Novel

• Nonobvious

• Purely aesthetic or ornamental in nature

• No utility

Plant Patent

• Novel

• Nonobvious

• This is not what you think

• Asexually or sexually reproduced flowers or other plants

• Least frequently used type of patent

How do I apply for a patent?

• An Application is filed with the U.S. Patent and Trademark Office (USPTO)

• The application must– Show how to make and use the invention

– Explain why the invention is novel

– Describe which aspects of the invention are patentable

• An application fee is required ($710, large entity; $355, small entity)

Large Entity: for-profit company with 500 or more employees

The Patent Application

• Application Transmittal Form (PTO/SB/05)• Fee Transmittal Form (PTO/SB/17)• Specification

– Title– Cross-Reference to Related Applications– Background– Detailed Description– Claims– Abstract

• Drawings (when necessary)• Oath or Declaration

Under what circumstances will my patent by approved?

• The PTO patent examiner will first determine if the invention is novel.

• If so, the patent examiner will determine if the invention is nonobvious.

• Typically, it will require much back-and-forth negotiation (years!)for the inventor to demonstrate that the invention is novel and nonobvious.

• If the inventor prevails, a patent will be issued upon payment of the issue fee ($1250 large entity; $625 small entity)

What if someone else applies for the same patent?

• This is called an interference.

• A hearing is held to resolve an interference.

• The key issues in an interference hearing are– Who first conceived the invention– Who first built the invention– Who first documented the invention

How can I prove I was first?

• Dated entries in laboratory notebook

• Preliminary Patent Application (PPA) – Requires only adequate description of invention– Requires patent application within one year

• Disclosure Document Program (DDP)– A disclosure is filed with the PTO– Requires patent application within one year

How do I use a patent?

• Develop and sell the invention

• License the invention to one manufacturer (exclusive license)

• License the invention to multiple manufacturers (non-exclusive license)

• Companies may trade licenses for mutual benefit (cross-licensing)

Who Applies for US Patents?

USA 149,825

Source: USPTO, 1999 statistics.

Japan 47,821

Germany 16,978

Taiwan 9,411

UK 6,948

France 6,216

Canada 6,149

S. Korea 5,033

Foreignors 120,362

Conclusion

• IP Law – Affirmative Rights, not protection• Types of IP Law: Trade Secrets, Copyrights,

Trademarks, Patents• Sources: US Constitution, State and Federal Law,

International Treaties• Intellectual Property Laws encourage individuals

and corporations to make intellectual contributions which benefit us all.

References

• US Patent and Trademark Office www.uspto.gov

• World Trade Organization: www.gatt.org

• Elias, Stephen, Patent, Copyright, and Trademark, 3rd Edition (Nolo.com, 1999).