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The U.S. government and governments worldwide offer several different types of protection for what is known as "intellectual property" -- the fruit of the ideas of inventors, authors, artists, plant breeders and others. Depending on the nature of the property, protection may take the form of a patent, copyright, trademark, or one of several forms of plant variety protection.
In most cases, WiSys protects intellectual property with patents, plant variety registration and copyrights, because much of the intellectual property brought to WiSys by UW System inventors is best protected in these ways. Intellectual property also includes trademarks, trade secrets, biological materials and know-how.
Please note that significant changes were made in U.S. patent law in 1995 and again in 1999. These changes were made in part to better harmonize U.S. patent law with that of most other countries.
U.S. Patents
A patent is a right to prevent others from making, using, or selling an invention covered by the patent. Patents are granted by governments or, as is true of the European Patent Office, by regional patent offices established by treaty. Generally patents may be enforced only in the jurisdiction that has granted them. Unless other countries are expressly referred to, the following discussion covers U.S. patents only. Although some variation exists from country to country, foreign patents generally have the same requirements as U.S. patents; however, foreign patents are often much more easily barred (For more information on barring events see below.)
The following is a brief summary of patent requirements, which are defined in great detail in the law. Please call one of WiSys' intellectual property managers if you have specific questions. You may also review additional information on the U.S. Patent and Trademark Office Web site.
Please also note that this discussion does not take into account the requirements for certain types of patents, most notably design patents that protect the ornamental appearance of useful objects. Plant patents are also somewhat different from other patents and are discussed separately in the section on Plant Variety Protection.
Basic Requirements and Terminology
The following requirements must be met for a patent to issue:
Inventorship: To obtain a patent, you must be the sole or a joint inventor. In other words, it is not enough to be an employer, major professor, directed lab technician, or co-author on a paper. The sort of contribution that makes a person an inventor is set by law. Deliberately excluding an inventor or including an extra inventor can make a patent invalid. WiSys refers any questions about proper recognition of inventorship to the patent attorney handling the case.
Patentable Subject Matter: To be patented, an invention must be the right sort of discovery or technical advance. For the standard type of patent, called a utility patent, an invention must be either a machine, composition of matter, process, or article of manufacture (i.e. an artificial, man-made thing rather than an unprocessed, natural object or material). An improved version of previous technology may be patentable, as well as a new use for an existing technology.
You may have heard of other sorts of patents, but most can be reduced to the basic categories just listed. For example, "uses" or "methods" are processes; "systems" tend to be processes, machines, or articles of manufacture; "software patents" usually cover processes or machines; "compositions of matter" or "articles of manufacture" may cover bacterial cultures, cloned DNA, and other biological materials. "Improvement patents" can be almost anything.
Utility: The patent statute specifies that an invention, must be useful, that is, it must be good for some applied purpose.
Novelty: The invention must be new - the exact same thing must not have existed or been done before.
Non-Obviousness: Even if novel, the invention must also be different enough from past technology that the average worker in the field would not have come up with the new invention from what was already known. If the invention does not meet this test, it is rejected as obvious. Remember that the average worker in many scientific fields may be a Ph.D. researcher.
In order to meet this requirement, inventors need to be aware of prior art, barring events, and bar dates.
Prior Art: Relevant past technology that may be considered by the Patent Office in evaluating novelty and non-obviousness is called the prior art, i.e. the knowledge of prior artisans or people skilled in the relevant fields. If a patent application is filed in the U.S., anything that has been published, used in public, offered for sale, or sold by anyone before the inventor(s) made the invention, or more than one year before the application is filed, becomes a part of the prior art for that application.
The inventor's own publications made within a year prior to the filing of the patent application do not prevent the inventor from obtaining a U.S. patent. However, such publications do prevent foreign patents from being obtained, because of their requirement for absolute novelty.
Barring Events: In the U.S., the publication, public use, offer for sale, or sale of an invention anywhere in the world is known as a barring event, because if a year passes between one of these events and the date when a patent application is filed on the invention, the inventor is barred from patenting the invention.
Bar Date: This is the date where one or more barring events prevent a patent application from being filed or further prosecuted.
Patents are Easily Barred
It is very easy to do something that constitutes publication or public use without realizing it. While the patent statute refers to "printed publication" as the barring event, this term is interpreted very broadly. It includes any printed, photocopied, typed, microfilmed or otherwise fixed communication. Not only conventional academic publications but also abstracts, master's theses, Ph.D. dissertations, presentation overheads, poster sessions and even tape recordings of speeches are all considered printed publications once they are delivered to subscribers, distributed at a meeting, shelved and cataloged in a library, etc.
While the U.S. provides a one-year grace period after publication, public use, sale, or offer for sale, most foreign countries have no such grace period. Furthermore, even oral disclosures can have the same effect in foreign countries as publications.
Once again, this discussion of prior art and barring events is only a summary overview. The law includes various exceptions, and a seemingly common term, such as "printed publication", may have a special meaning. Thus, it is vital to tell the attorney drafting your application about any possibly barring event or prior art for two reasons:
- Only if fully informed can the attorney make the best possible case for your patent. Good patent claims can sometimes still be made even though the disclosed material is prior art.
- Deliberate failure to notify the Patent Office of prior art relevant to an application can make the patent invalid.
The U.S. Patent Application Process
To initiate the patenting process, the patent attorney describes the invention in a patent application. The description must be complete enough to enable a person skilled in the field to practice the invention. This enabling disclosure must also reveal the best mode of practicing the invention. In other words, the version that the inventor considers to be the best at the time of filing must be described in the patent. If the disclosure is not enabling, the application will be denied. And if the best mode is not revealed and the patent is challenged in a lawsuit, a court may find the patent to be invalid.
A patent application ends with a numbered series of statements called claims, each of which sums up the invention in a single sentence. Each claim looks at the essence of the invention in a slightly different way. The claims determine what the patent covers.
After a patent application is filed in the United States Patent and Trademark Office, the following events generally take place:
Application Review: A patent examiner reviews the application for utility, novelty, non-obviousness, and enabling disclosure.
Office Actions: The patent examiner corresponds with the patent attorney about the application, issuing formal comments and opinions called office actions. Commonly, the examiner's first office action rejects some or all of the claims.
Patent Prosecution: The attorney replies, and may adjust the claims, in order to convince the examiner to accept or allow them. These efforts are called patent prosecution. The patent prosecution process may take anywhere from a few months to several years, and, of course, is not always successful.
Patent Issuance: If the application is granted, the patent is issued, with the text of the application published as the patent document.
Terms of the Patent
Once a patent is granted, the owner has the right to limit who may practice the invention. The owner may practice the invention himself or herself, or may authorize another to do so by granting a license, generally in return for a negotiated fee. Under WiSys' inventor contract, the inventor assigns the patent to WiSys, which then becomes the patent owner. WiSys earns money for the inventors and UW System by licensing the invention to a company that commercializes the invention.
Occasionally, someone infringes a patent by practicing the invention without the permission of the inventor. All patent infringement negotiations and litigation are managed by WiSys.
As a result of a 1995 change in U.S. patent law, the life of a utility patent is now 20 years from the filing date of the application (for applications filed on or after June 8, 1995). This change harmonizes U.S. patent law with that of most of the rest of the world. Formerly, a U.S. patent had a life of 17 years from the date of issuance. WiSys patents and applications filed prior to June 8, 1995, have the advantage of having a life that is the longer of the two periods.
Provisional Patent Application
In 1995 the U.S. introduced a new type of patent application, called a provisional patent application. This provisional application is essentially the same as similar provisional filings offered by some foreign countries. These provisional filings have been very important overseas, since most other countries follow a first-to-file invention convention, instead of the first-to-invent convention used in the U.S. The provisional application allows an early filing date to be created before all the details are written in the final patent application.
A provisional patent application is a document filed with the U.S. Patent and Trademark Office that meets the statutory requirements for a patent, but need not contain claims. The provisional application must be followed by a regular patent application on the disclosed material before one year has elapsed. The provisional may be used to create an early filing date if a patent has a bar date due to a prior disclosure. A provisional application may also move the entire patent period into the future by as much as a year. This is an advantage when it is expected that the technology will have a stronger royalty stream later in its patent life, as is the case with many pharmaceuticals.
However, provisional patents have a downside, as well. Many foreign patent offices will not recognize that a U.S. provisional has established a prior filing date if the provisional does not meet all their criteria. It is also unclear how much detail should be included in a provisional application. WiSys files provisional applications in appropriate circumstances and continues to monitor developments on this form of protection.
Foreign Patents
Please note that foreign patent law in certain respects can be quite different from U.S. law. At the same time, most foreign countries tend to follow similar rules. This section discusses foreign patent law in general. There may be exceptions on a country-by-country basis.
If a U.S. patent application is made prior to public disclosure of the invention anywhere in the world, then in most cases patents can be filed in foreign countries. Please note that prior disclosure anywhere in the world before a U.S. patent application is filed normally bars foreign patentability. Also, some material that is patentable in the U.S. may not be patentable in all countries (e.g. medical procedures).
Foreign patents typically are very expensive; the cost of a portfolio of patents in ten key overseas countries is approximately $100,000. With many technologies, the U.S. market alone can be 30%-50% of the world market, making the selection of other markets even more important.
Copyrights
Copyright is a form of protection that is available for original "works of authorship." Under the Copyright Act of 1976, copyright is actually a bundle of rights giving the owner the exclusive rights to reproduce, distribute, publicly perform, or publicly display the copyrighted work, or to prepare derivative works based upon it.
Copyright Coverage
The Copyright Act recognizes eight categories of works of authorship that may be copyrighted: literary, musical, dramatic, choreographic, pictorial, audiovisual, sound recordings and architectural works. These categories are interpreted quite broadly; for example, a computer program can be copyrighted as a literary work, and a map can be registered under pictorial, graphic, and sculptural works.
The general criterion for a work of authorship is that it be "fixed in a tangible form of expression." That is, copyright law generally distinguishes between the concrete expression of an idea, which can be protected, and the abstract idea, concept or information behind the work, which cannot.
Copyright Creation, Notice and Registration
The author (or authors) who creates a work by fixing it in a tangible form of expression immediately acquires a copyright in the work. This copyright protection applies to all unpublished works.
Before March 1, 1989, work published in the United States had to bear a copyright notice to preserve copyright protection. Now, when a work is published, it should bear a notice of copyright. If the work does not carry a proper notice, the defendant in an infringement suit can claim "innocent infringement" and may gain a reduction of damages. For "visually perceptible copies" the notice of copyright consists of three elements:
- the symbol ©, or the word "Copyright" or the abbreviation "Copr."
- the year of first publication
- the name of the owner of copyright
For example, Copyright 1999 WiSys Technology Foundation, Inc.
It is often advisable, but not normally required, to register a copyright with the Copyright Office. Registration is required (for U.S. authors) to enforce the copyright in court. Registration may be done by the author, by the owner of any exclusive right in the work, or by the agent of the author or owner.
U.S. Copyright Office
For specific information on copyrights, contact the U.S. Copyright Office.
Trademarks
In contrast to both patents and copyrights, trademarks protect not the substance of an invention or other work, but rather the name or logo under which a good or service is marketed. That is, a trademark is any word, name, symbol, device or combination thereof adopted by a manufacturer (or merchant) to identify its goods and to distinguish these goods from those manufactured or sold by others.
Acquiring Trademark Rights
The strongest trademark is one that is fanciful or arbitrary with respect to the goods or services on which it is used. The scope of protection for this type of mark against potential infringers will be greatest, because an infringer cannot justify using a similar mark on the grounds that it was merely intended to describe or praise the goods.
Enforceable rights in a trademark can be acquired simply by using the trademark. These rights are generally limited to the geographic area of actual use.
Trademarks can also be registered with the U.S. Patent and Trademark Office. A federally registered trademark carries rights throughout the United States. To acquire a registered trademark, the owner must:
- apply to the Patent Office for trademark registration
- apply the trademark to the actual goods that are sold
The owner of a registered trademark acquires several rights, such as the right to bar importation of goods bearing an infringing trademark. Once a trademark has been registered, the owner is entitled to use the symbol "®" or the words "Registered in U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." The registration symbol may not be used before registration has issued. Furthermore, trademark registration cannot issue until actual use of the trademark has started.
U.S. Patent and Trademark Office
Additional information on trademarks is available from the U.S. Patent and Trademark Office.
Plant Variety Protection
In the U.S., new plant varieties can be protected in three different ways, depending on the specifics of the plant.
Plant Variety Certificates and Plant Patents
Plant variety certificates are issued by the U.S. Department of Agriculture (USDA) rather than the U.S. Patent and Trademark Office (USPTO). They protect sexually propagated plants, tubers (since 1994) and F1 hybrids (since 1994). Plant variety certificates have also been expanded to include new plant varieties where the "essential biological characteristics" of the original variety are retained.
Plant patents are issued by the USPTO. They protect asexually propagated plants, but tubers (potatoes, etc.) are specifically excluded.
Utility Patents
Utility patents are issued by the USPTO to protect sexually propagated plants, asexually propagated plants, tubers and F1 hybrids. In general, utility patents are considered superior to plant patents, because the claims in utility patents offer a broader coverage. Utility patents may also complement the protection offered by a plant variety certificate. Utility patents can be difficult to obtain, however, because of the Patent Office's tendency to reject new varieties for "obviousness."
Plant Variety Protection in Foreign Countries
With few exceptions, most countries overseas do not permit plant patents. Instead, they offer a protection system that is generally called "plant breeder's rights." Overall, this system is similar to the U.S. plant variety certificates, except that plant breeder's rights include almost all plant types, including sexually and asexually reproducing plants, tubers, and certain hybrids.
Plant breeder's rights are conferred by the international organization known by the French acronym UPOV. UPOV certificates are provided for in the Treaty of Rome regulations. Under the UPOV system, the actual rights and protections available in a particular country are determined by the national laws and regulations in this area.
Trade Secrets
A trade secret is knowledge that is possessed by an individual or institution and kept secret in order to prevent others from using the knowledge in a competitive manner (or for other reasons). Trade secrets can never be patented, since a patent must publicize the knowledge. A trade secret can exist in an unpublished work that is also protected by copyright.
Probably the most cited example of a trade secret is the recipe for Coca-Cola. If the formula for Coca-Cola had been patented, another manufacturer could have obtained a copy of the patent and modified the formula slightly, without a great deal of work. Moreover, the protection offered by a U.S. patent would have expired after 17 years from patent issuance (the patent life at the time). After the patent's expiration date, any competitor could have used the recipe and, by offering a lower price, could have cut into Coca-Cola's market share. While today the Coca-Cola "trade secret" may have greater value as a marketing concept than as a useful technology, other secret processes can offer great competitive advantage.
Industry makes use of trade secrets to protect manufacturing processes and other technology where the details are not evident from an examination and analysis of the final product. To maintain trade secret protection, the use of the trade secret is usually confined to a small, high-security area and to a few carefully screened individuals, each of whom may know only a part of the trade secret. These individuals must be contractually bound to preserve the trade secret.
Knowhow
Knowhow is specialized knowledge that is possessed by one person or a few people, and has commercial value. Knowhow often serves as a basis for consulting agreements where an hourly fee is typically set for the services rendered, or less frequently, a project fee is negotiated. Some types of knowhow may also qualify as trade secrets.
Knowhow is also involved in transfers of biological materials, engineering drawings, and other property. Fees often take into account the value of the cost and time that would have been otherwise expended in reverse engineering and other methods to accomplish the same objective.
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