Intellectual Property

Inherently research involves the creation of new ideas, processes, and/or designs. Often these literary, artistic or scientific inventions may have significant commercial value if developed and are generally viewed as intellectual property. In view of their economic value, their inventor has the right to limit access to and use of these materials. Copyrights, patents, trademarks, and trade secrets are examples of different legal mechanisms for protecting intellectual property. Today colleges and universities as well as corporations are increasingly concerned about intellectual property and intellectual properties issues such as patents, licensing, and nondisclosure agreements.

This section is intended to provide a primer on this subject focused on primarily on patents, copyrights, and issues related to these forms of intellectual property about which you should be informed as you work on your undergraduate research project. Note that even if you don't believe you will invent anything as part of your undergraduate research project, it is a good idea to become familiar with your college, university or employer's policies regarding intellectual property at the outset of your working relationship.

Articles on Intellectual Property

Copyright Basics

A copyright is a form of legal protection provided by the U.S. Government to anyone who creates an original artistic, dramatic, literary, or musical work in a "fixed" medium. Examples of materials that you can copyright include articles, books, webpages and webpage graphics, software, e-mail, photographs, dramatic presentations, lyrics, and movies. Copyright grants the creator the right to reproduce the work, prepare derivatives of it, and to lend, rent, lease, or sell copies of the work to others. If the work was created on or after January 1, 1978, the rights of copyright automatic at the time the work is created. The work doesn't have to be published in order for it to be protected. Copyrights do have a finite lifetime and are normally valid seventy years beyond the life of the author.

Copyright doesn't protect the ideas, the intellectual content of a copyrighted work. That protection is afforded by patents. It doesn't protect names, familiar symbols, "works for hire," or anything that is viewed as common property. Works for hire are materials created by employees as part of the normal scope of their employment. If you create something as a work for hire then normally your employer becomes the "author" of the work created. The life of a copyright from a work for hire is different from that of the normal copyright and last 95 years from publication/presentation of the work or 120 years from its creation, whichever period is shorter.

It is useful to know that you can't always identify copyrighted materials as no notice is currently required by U.S. law. So don't assume that you can freely copy something simply because it doesn't contain a copyright notice. Only materials copyrighted on or before March 1, 1989 must be marked with a copyright notice. The format is easy to recognize. It begins with the copyright symbol "©," the word "Copyright" or the abbreviation "Copr.," followed by the year of first publication and the name of the copyright holder. For example: "© 2005 Ay Dot Student"

Although not required by law, it may be useful to register your copyright with the Library of Congress' Copyright Office. Registration is particularly important if you feel it is likely that someone may attempt to infringe on your copyright. Registration serves as a public record of your copyright and is required if you wish to file an infringement suit in a U.S. court. The website for the U.S. Copyright Office provides more detailed information regarding registration, its benefits, and the registration process.

If you want to use copyrighted materials, it is important to obtain written permission from the copyright holder first. If you do obtain permission, the copyright holder has the right to charge you a fee. In addition, if you make use of copyrighted written materials, you will also be required to credit the source. For example, if you obtain permission from the American Chemical Society (ACS) to make copies of an ACS technical article for distribution in a classroom, you will be asked to mark each copy with the statement "Reprinted with permission from ... Copyright [Year] American Chemical Society." Permission is also usually granted to make the requisite number of photocopies for a finite period of time that you must specify at the time that you originally contact the copyright holder with your request.

If you wish to make use of very limited pieces of a copyrighted work such as quotes, you may be able to use these under the doctrine of so-called "fair use." Under the concept of "fair use" you are permitted to make one photocopy of any article for your private, scholarly use. Unfortunately there aren't any hard and fast rules regarding how much of a copyrighted work one can use under "fair use" before the action becomes one of copyright infringement. Therefore, it is always best to err on the side of caution and seek permission first from the copyright holder before you make use of someone else's copyrighted work.

References

United States Copyright Office. Avail. URL: http://www.copyright.gov/
The U.S. Copyright Office has a nice article that introduce the fundamental issues surrounding copyrights:
"Copyright Basics" (U.S. Copyright Office) Avail. URL: http://www.copyright.gov/circs/circ1.pdf

The American Chemical Society has produced several excellent resources on copyrights which are available at URL: http://pubs.acs.org/copyright/index.html
These include html materials suitable for classroom use on copyrights:

Several Universities have created and manage excellent websites to assist their faculty and students involved in scholarly publishing. These include:
"University of Michigan Copyright Website." Avail. URL: http://www.copyright.umich.edu/index.html

Fair Use

The Indiana University Purdue University Indiannapolis has created a printable checklist entitled "Checklist for Fair Use" that is useful in determining whether or not a specific situation represents an example of fair use or not available at URL: http://www.copyright.iupui.edu/checklist.htm

Copyright Issues and the Internet

NC State University has created an excellent resource focused on copyright issues as they pertain to the internet and the 2002 Technology, Education, and Copyright Harmonization Act (TEACH Act). "The TEACH Toolkit: An Online Resource for Understanding Copyright and Distance Education." Avail. URL: http://www.lib.ncsu.edu/scc/legislative/teachkit/overview.html

Patents

Here are three kinds of patents that can be filed in the United States:

  • Utility
  • Design, and
  • Plant

Utility patents describe inventions for new processes, new instruments and machines that carry out processes, and new types of materials including bio-materials. Design patents cover the ornamental appearance of manufactured materials such as cell phone covers. Plant patents are not very common and describe new varieties of asexually reproduced plants like strawberries.

What Can and Cannot Be Patented?

An invention must be novel, non-obvious, and useful in order to qualify for consideration of grant of a patent. The invention is considered novel as long as it has not been previously patented by you or anyone else anywhere in the world and as long as it has not been published in any written format prior to the claimed date of invention anywhere in the world. An invention is considered to be non-obvious if it would not have been obvious to another person working in the field of the invention. The last criterion for patentability is utility. To be patented the invention must perform some function that is useful to mankind. Utility might seem to be a silly criterion but consider the fact that without it, every new chemical compound synthesized somewhere in the world could potentially be viewed as a possible candidate for a utility patent simply because it was a new type of material!

Patent Rights

It is important to understand what rights patents do and don't grant the inventor(s). Patents are a constitutionally protected entitlement (U.S. Constitution article 1 section 8) granting the inventor the right to exclude others from making, using, selling or importing the invention. Patents do not grant the inventor affirmative rights.

Your Laboratory Notebook - Evidence of Inventorship and Reduction to Practice

The best evidence in support of a patent application is a witnessed, permanently bound, consecutively numbered laboratory notebook. This is one example of why it is important to keep a laboratory notebook and to develop good record keeping skills. The one idea that may be new and unfamiliar to you here is that of "witnessing" a notebook record. Witnessing means that someone else has read and signed your lab notebook confirming that you wrote what you wrote in the notebook on the date indicated in the notebook. Note that the witness doesn't have to be a technical expert in the type of work described in your lab notebook. Another important point about witnessing is that this doesn't have to be done every day but it is important that your witness do this regularly as dates can become very important when interference occurs.

Inventorship

The first person or group of people to conceive of the idea and who can provide evidence of this fact (dates are very important) are identified as the inventors. Performing physical labor on the project for which the patent application is filed doesn't qualify an individual for inventorship. It is also important to understand that inventorship is not the same concept as authorship on a technical paper. Therefore, authorship on a paper doesn't qualify an individual as an inventor on a patent application nor does a supervisory position of any kind entitle an individual to inventorship.

Invention Disclosure Form

As soon as possible after you have come up with an idea for an invention, it is a wise idea to contact the office in your workplace that handles intellectual property and complete an invention disclosure form. If you are working in a college or university, you should contact the technology transfer office. If you are working at a company, you should contact the in-house patent attorney. This form will typically request information on the invention including a description of the invention, its purpose, advantages, and possible applications, names of the inventors, and information on any information you may have provided anyone in the course of your work regarding the invention including names and dates.

Interference

Sometimes when a patent is filed another individual or group of individuals may come forward to contest the patent. This can be done at any time before or after patent filed and the practice is referred to as interference. The key to successfully defending a patent is evidence of the dates of conception and reduction to practice. The individual or individuals who can successfully demonstrate that they in fact came up with the invention first will ultimately be viewed by the law as the rightful owners of the patent.

Assignees

Inventions are viewed by the law as personal property and as such can be sold or mortgaged to other individuals or companies. When an inventor transfers his/her legal rights to another individual or group of individuals, the recipient is referred to as the assignee. As student working on a research project in someone else's laboratory, you may be under an obligation to assign ownership of an invention to your employer, likely either a college or university or a corporation.

Licensing

The whole idea behind obtaining a patent is to realize profit from the commercialization of the invention. Inventors will typically sell their inventions to companies which are able to commercialize their inventions. This practice is referred to as licensing. Once the technology from a patent is licensed and commercialized, the patent's inventors may receive a share of the licensing royalties if the invention is profitable. At colleges and universities, patents and patent royalties benefit not only the inventors but their academic departments or units, support the institution's educational, research, and public service missions, and enhance the institution's reputation.

The United States Patent and Trademark Office

In the United States, patent applications must be filed with the U.S. Patent and Trademark Office (USPTO). The USPTO maintains a full-text, keyword searchable database of all U.S. patent applications and granted patents that may be accessed by the public at no cost on-line.

Types of Patents

There are several types of patents. We will consider three here. Provisional patents are the easiest to obtain and are generally good for 1 year from the date of filing. These patents require little more than a basic description of the invention, the identity of the inventors and the claims do not need to be specified. Provisional applications are often filed by inventors to obtain the necessary time with which to reduce to practice their inventions in support of U.S. utility or a Patent Cooperation Treaty (PCT) applications. U.S. utility patents provide patent protection within the United States while PCT applications provide international protection in over 100 countries.

Patent Classification

The USPTO breaks patent applications and patents into three main categories: Mechanical, electrical, and chemical. Each of these three classifications is broken down into hundreds of classes and subclasses. This information is useful whenever performing patent literature searches. For more information, see the USPTO website.

The General Format of a Patent

The major sections of a patent are as follows:

  • Field of invention
  • Background of invention
  • Summary of invention
  • Figures, if any, of invention
  • Detailed description of invention
  • Claims of invention

We will discuss each of these briefly below.

Field of Invention

The field of invention usually consists of a sentence or two that provide information useful in classifying the patent.

Background of invention

The background section of a patent is very similar to the introduction section of a technical paper. This section provides background on the invention, specifically, information concerning what had been done previously that prompted the inventor to pursue their invention. As such this section will provide references to other relevant patents, technical journal articles, conference proceedings, etc. which can provide readers with invaluable information concerning successful inventors in this area, the names of companies that have licensed similar technologies, etc.

Summary

This section defines what the invention is, what its applications are, and what its advantages are over existing technologies.

Figures

Figures are not a required element of patent applications. However, sketches and drawings are often found in patent applications as they provide an extremely effective visual aid that can help readers appreciate the unique features and/or advantages of an invention.

Detailed Description

This section of the patent describes the theory behind the invention, how the invention works, as well as specific details regarding how the invention can be used. These statements are referred to as "preferred embodiments."

Claims

Claims are statements that define the scope of the invention - what the invention is and what it is not.

Standard Format of a Patent Abstract

The following is the standard format of a patent abstract:

Volume Number: Abstract # Title of Patent. List of Names of All Inventors of Patent (Affiliation or Assignees) U.S. Patent #,###,### (Patent Classification) Date of Publication for Patent, Application #, Date of Application for Patent; # of pages. Text of the patent abstract.

FAQ

Q: Can students be inventors?

A: Of course! Anyone can be an inventor. There is no age limit. You don't need to have a college degree in order to be an inventor. You simply need to have a good idea, to be able to present the appropriate evidence supporting the fact you are the inventor and that the invention works to the U.S. Patent and Trademark Office.

References

  • M. H. Jester (2004) Patents and Trademarks Plain & Simple. Franklin Lakes, Career Press.
  • United States Patent and Trademark Office. Definitive resource on patents and trademarks. Site provides free search engine and free accesss to tiff files of patents. Avail. URL:http://www.uspto.gov
  • Patent Cooperation Treaty System (World Intellectual Property Organization). Avail. URL:http://www.wipo.int/pct/en/
  • Free Patents Online. Free internet search engine (registration required) providing free access to pdf files of patents. Avail. URL:http://www.freepatentsonline.com

Trademarks

Trademark is a distinctive logo, phrase, or design such as "Dunkin' Donuts®" or "Microsoft®" that uniquely identifies a particular commercial product or series of products with a specific commercial supplier. The symbols ™ or ® are often used to alert the public to the trademark. Anyone claiming ownership of a trademark can use ™ to alert others to their ownership of a trademark. The ® symbol on the other hand indicates that the trademark has been officially registered with the United States Patent and Trademark Office. Federal registration of a trademark is useful in preventing foreign infringement on the trademark and in obtaining registration rights to the trademark outside the United States.

References

"Trademarks." Avail. URL: http://www.patent.gov.uk/tm/ (Accessed June 14, 2005)>

Technology Transfer

Technology Transfer

Technology transfer is the process of taking intellectual property (IP) including inventions, trade secrets, and copyrighted materials, from the research laboratory to the commercial marketplace.

As soon as you realize that your idea(s) might be valuable it is important to contact the Office of Technology Transfer as their staff are trained experts in intellectual property who can assist you in the technology transfer process. Steps in the technology transfer process typically include filing of an invention disclosure form, value assessment of the invention, legal protection of the intellectual property usually by copyright or patent, marketing, licensing or creation of a start-up in order to commercialize the IP.

The Office of Technology Transfer

Today most colleges and universities have an office that helps students, faculty, and staff take their intellectual property (IP) and realize commercialization of it. These offices provide a wide range of support services relevant to intellectual property issues including: help identify promising technologies worthy of patenting, provide the financial resources needed to patent and even market inventions, license university-owned IP to interested companies, and assist students and faculty in forming start-up companies based on patented inventions or copyrighted materials.

References

Florida State University Office of Research. Avail. URL: http://www.techtransfer.fsu.edu/
(Note: This site features several stories on the successful commercialization of university developed intellectual property including the anticancer drug taxol).

Techtransfer (U. Michigan). Avail. URL: http://www.techtransfer.umich.edu/index.html

Trade Secrets

Trade secrets are economically valuable, non-obvious information about a process, method, or design that enjoy legal protection by virtue of the fact that their inventor makes a concerted effort to keep the information confidential. The best known example of a trade secret is the formula for Coca Cola®. The Coca Cola company keeps the formula a closely guarded secret by limiting access to the formula, requiring those who have this information to sign confidentiality agreements (see below) and by selling the flavor as a syrup to independent bottlers.

Copyright doesn't protect the ideas, the intellectual content of a copyrighted work. That protection is afforded by patents. It doesn't protect names, familiar symbols, "works for hire," or anything that is viewed as common property. Works for hire are materials created by employees as part of the normal scope of their employment. If you create something as a work for hire then normally your employer becomes the "author" of the work created. The life of a copyright from a work for hire is different from that of the normal copyright and last 95 years from publication/presentation of the work or 120 years from its creation, whichever period is shorter.

Confidentiality or Non-Disclosure Agreements (NDA's)

The key to maintaining a trade secret rests with the inventor's ability to keep the trade secret confidential. This is typically done by requiring employees and others with whom the inventor has business dealings to sign confidentiality or non-disclosure agreements (NDA's). These are legally binding agreements in which the recipient, either an individual or a business, of the confidential information obtains permission to use the information for the agreed upon purposes which are outlined upfront for a set time period without disclosing the information to anyone outside of the arrangement. These agreements are usually carefully crafted to protect the inventor from unintentionally forfeiting his/her patent rights as a result of the disclosure of any valuable propriety information.

Trade secrets are attractive because they can have an indefinite lifetime unlike patents which provide protection for a finite period of time but this is at the same time their downside - there is no minimum period of legal protection enjoyed by trade secrets and it is much more challenging to protect these by virtue of the fact that it is their very secrecy that safeguards them.

What can you do with IP?

A lot! For example:

  • Sell it to interested individuals and/or companies (this is referred to as assignment)
  • License the technology to an interested company; or
  • Form a start-up company based on the invention or copyrighted material

If you believe that you have invented something useful, you are strongly encouraged to contact the Technology Transfer Office or entrepreneurial business center at your college or university to learn more about the business opportunities available in support of your IP and its commercialization.

References

Florida State University Office of Research. Avail. URL: http://www.techtransfer.fsu.edu/
(Note: This site features several stories on the successful commercialization of university developed intellectual property including the anticancer drug taxol).

Techtransfer (U. Michigan). Avail. URL: http://www.techtransfer.umich.edu/index.php