INTELLECTUAL PROPERTY Intangible property Patents Copyrights Trade secrets
INTELLECTUAL PROPERTY Intangible property Patents Copyrights Trade secrets and know-how Trademarks TM ©
UNITED STATES CONSTITUTION The Congress shall have power … 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. Basis for patents and copyrights.
UNIVERSITY POLICY “While Inventions and copyrightable works are not the primary objectives of University Research, when they occur the University has the responsibility of insuring that such Inventions and Works are used and controlled in a manner that benefits the public, the Inventor or Author and the University to the fullest extent possible. ” Board Policy 210. 1
UA BOARD POLICY Inventor-employees receive 50% of the first $200, 000 in net licensing net revenues. 35% of any net revenues above $200, 000. Board does not exercise rights over non-employee inventions. May accept intellectual property from third parties UA Board Policy 210. 1 (rev’d 2001)
TECHNOLOGY LICENSING OFFICE Mission: To commercialize world-class research to build a sustainable knowledgebased economy to benefit Arkansas and the world. http: //www. uark. edu/ua/tlo/
PATENTS Right to exclude others Limited time (usually 20 years from filing) Scope determined by claims (found at end of patent)
PATENT REQUIREMENTS Novel, non-obvious and useful Ornamental, novel and non-obvious Design Asexually reproduced, distinct and new plants Utility (includes plants) Plant patent Novel, sexually reproduced plants Plant variety protection
LOSING PATENT PROTECTION Premature disclosure! (Losing novelty) Publishing or presenting your work Absolute bar in most countries Starts one year clock ticking in US Even mere predictions can start the clock Electronic publication counts Offering for sale
WEARABLE PET VEST Claim Example 1. A pet display vest for a person, having an elongate, enclosed, pet receiving, passageway extending there across with at least one closable pet admitting entry, at least part of the passageway being transparent so that, when the vest is worn, a pet moving along the passageway across a wearer's body can be viewed by a spectator.
PATENT SEARCHING http: //www. uspto. gov/patft/index. html
PATENT SEARCHING (CONTINUED) http: //www. uspto. gov/patft/index. html Boolean Cited/citing patents Assignee information
PATENT SEARCHING 82 patents in US Class 5/486
SEARCHING (CONTINUED) More sophisticated searches by class and subclass. Tutorial suggests 30 hours for a good search. http: //www. lib. utexas. edu/engin/patenttutorial/pattut. html
VIEWING PATENTS ONLINE To see the document as published at the USPTO website, one page at a time. Alterna. TIFF To quickly download the whole patent or published application. www. freepatentsonline. com Download file history via PAIR. http: //portal. uspto. gov/external/portal/pair
WORLD INTELLECTUAL PROPERTY OFFICE http: //www. wipo. int/pct/en/
EUROPEAN PATENT OFFICE Similar search strategies Broader coverage than just EPO Also Links USPTO and JPO to full version of patent (or application) English abstracts generally available http: //ep. espacenet. com/
BUSINESS CONSIDERATIONS FOR PATENTS Shelf life of technology Competition Freedom to operate Value of the barrier to entry Ease of design around? Cost to enforce
COPYRIGHTS Tangible form of expression Protect works of authorship Reproduction Derivative works Distribution Publication
NOT COPYRIGHTABLE No tangible form of expression Unrecorded, improvised speeches (conversations) Titles, short phrases Ideas, procedures, discoveries, or devices Consider patenting No original authorship Standard calendars, lists or tables taken from public documents, white pages telephone listings
AUTHORSHIP Work for hire? prepared by an employee within the scope of employment; or specially ordered and on a specific statutory list of items (e. g. , contribution to a collective work, instructional text, test or answers for a test); or express written agreement.
© COPYRIGHT PROTECTION Copyrighted as soon as in “tangible form” No absolute need to register Don’t even have to have “c in a circle” Legal reasons to register Very long term of protection
TRADE SECRETS AND KNOW-HOW The “secret recipe” Special techniques Customer lists Other secrets
PROTECTING TRADE SECRETS? Keep them secret!
™ TRADEMARKS Words Designs Product configurations Infinite in duration so long as mark is still used Mark must be associated with source of goods or services
TRADEMARKS: KEY TO YOUR BUSINESS’ IDENTITY Get it right the first time. Trademark search by a professional. Avoiding a redesign will pay for the search. Audit your marks from time to time. Your marks change over time with your business.
TRADEMARKS: SEARCHING
INFRINGEMENT Copyright owner must prove Access to copied material and Copying. Patent owner must prove Infringer is making, using or selling something that is covered by the patent’s claims. Access unnecessary. Trademark Likelihood owner must prove of confusion.
ELECTRONIC MEDIA The rules are the same. Still need to pay attention to copyright Can’t just lift someone’s words or pictures and claim them as your own Publishing electronically is still publication for patenting
WHAT VALUE DO PATENT ATTORNEYS BRING? Nilssen v. Osram Sylvania, Inc. (Fed. Cir. 2007)
QUESTIONS? Lisa C. Childs, Ph. D. Associate Vice Provost for Research Patent Attorney for the Division of Agriculture My job? Managing all aspects of the portfolio of intellectual property belonging to UAF and Division.
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