What is intellectual property?

Intellectual Property, or IP, is a term that broadly refers to products of the intellect that may have commercial value. IP may encompass the expression of ideas, business images, manufacturing products, processes and machines, goodwill, business methods, computer programs, and much more.

What are the types of intellectual property?

There are generally four basic types of intellectual property. These include trademarks, copyrights, trade secrets, and patents.

• A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that is used in trade to identify and indicate the source of goods, and to distinguish those goods from the goods of others.Trademark rights confer a form of protection to the owner that may be used to prevent others from using a confusingly similar mark. Trademark rights do not, however, prevent others from making the same goods under a clearly different mark.
• A copyright is a form of protection provided to the authors of “original works of authorship.” The term “original works of authorship” includes literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of the copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. A copyright only protects the expression of the ideas, though, and not the idea itself.
• A trade secret is protection that may be given to a formula, process, device, or other business information that is kept confidential to maintain an advantage over competitors.A trade secret is only protected by disclosing it with a confidential disclosure agreement in place.
• A patent is the grant of a property right to an inventor that is issued by the United States Patent and Trademark Office (USPTO) and international equivalents. The right conferred by a patent is the right to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States. It should be noted that a patent does not grant the right to make, use, offer for sale, sell, or import the invention, but only grants the right to exclude others from making, using, offering for sale, selling, or importing the invention. Generally, the term of a patent is 20 years from the date on which the application for the patent was filed in the United States or, in certain cases, the date an earlier related application was filed.

What is the source of United States patent law?

Article I, Section 8, Clause 8 of the United States Constitution grants Congress the power “to promote the Progress of Science and useful Arts, by securing for limited Times to…Inventors the exclusive Right to their…Discoveries.” Pursuant to this grant of authority, Congress enacted the first patent statute in 1790. Since then, the patent laws have grown into an extensive body of statutes, rules, and regulations. The majority of these laws are currently found in Title 35 of the United States Code and Title 37 of the Code of Federal Regulations.

Who is an inventor?

An inventor is the person, or group of people, who first conceive of an invention, in detail, and with enough specificity that a person skilled in the relevant field could construct and practice the invention. Those who simply translate the concept into practice, e.g. laboratory technicians, are generally not considered co-inventors unless they add to the original concept of the invention.

What are the types of patents?

The three basic types of patents are design patents, utility patents, and plant patents. Design patents protect new, original and ornamental designs for articles of manufacture. Utility patents may be obtained to protect any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Plant patents may be granted to persons who invent or discover and asexually reproduce any distinct and new variety of plant.

What is patentable subject matter in a utility patent application?

Patentable subject matter for utility applications includes 4 classes of subject matter. The exact class an invention falls into is not important, but the invention must fall into at least one of the four classes specified in 35 U.S.C. 101. These classes include processes, machines, manufactures, or compositions of matter. The term “process” has been defined as a process, act or method, and primarily includes industrial or technical processes such as manufacturing or synthesis procedures and new uses for known compounds. “Machines” are simply devices that can be used to produce a useful function. The term “manufacture” refers to man-made articles. Today, the definition of “manufacture” has been expanded substantially, and now includes “anything under the sun made by man.” Finally, the term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.

What is not patentable subject matter?

Non-patentable subject matter includes abstract ideas (e.g. a mathematical algorithm), scientific facts (e.g. E=MC2), physical phenomena (e.g. the law of gravity), and products of nature. Moreover, a patent cannot be obtained upon a mere idea or suggestion.

What are the types of patent applications?

The types of patent applications generally include provisional, non-provisional, and continuation applications. Continuation applications are types of non-provisional applications and may be further subdivided into regular continuation applications, divisional applications, and continuation-in-part applications.

• Provisional applications are often used to secure a filing date / priority date for the information contained therein. A provisional application has fewer requirements relative to a non-provisional application and, thus, is generally less expensive. A provisional application will not mature to a patent and a non-provisional utility application must be filed and claim priority to the provisional application within one year of the filing date of the provisional in order to preserve the priority date.
• A non-provisional application is the application that will mature into a patent. These applications are substantively examined by the USPTO and are comprised of a written document that includes a specification that contains a written description of the invention and claims, and drawings if necessary. An initial non-provisional patent application that is related to a particular invention or family of inventions is generally referred to as a “parent” application.
• A continuation application is a subsequent non-provisional application that receives the priority date or effective filing date of its parent application for the information that is disclosed by the parent application. A regular continuation application contains the same disclosure as the parent application and also contains claims that are directed towards the same invention as those in the parent application.
• A divisional application contains the same disclosure as the parent application; however, the claims in a divisional application are distinct from those of the parent. A continuation-in-part application contains a disclosure in which some portions are the same as the parent application but other portions of the disclosure differ from the parent application. The claims of continuation-in-part applications may be directed towards the same invention as the parent or towards the new subject matter.

What are the requirements for obtaining a patent?

To obtain a patent, an invention must fall within one of the enumerated statutory classes of subject matter but it must also meet the statutory requirements for patentability. There are three basic statutory requirements for patentability; (1) utility, (2) novelty, and, (3) nonobviousness.

• First, to be patentable, an invention must be useful. For most inventions, utility will be presumed and the USPTO will have the burden of showing that a particular invention lacks utility. However, with some inventions, such as pharmaceuticals and genetic material, some showing of utility by the inventor is necessary. With these inventions, a real world value may often be difficult to gauge or substantiate so the inventor will have the burden of establishing utility.
• Second, an invention must also be novel, or new, to be patentable. Generally, for an invention to be considered new, as defined in patent law, the invention cannot have been “known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or “patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States…”
• Third, to be patentable, an invention must not be obvious or, in other words, the invention must be nonobvious. Nonobviousness measures the degree to which an invention differs from previous knowledge or the prior art. An invention will not be patentable if, considering the prior art that existed at the time of the invention, the invention would have been obvious to a person of ordinary skill in the art.

In addition to the three basic requirements listed above, the specification of a patent application must contain a written description of the invention. This written description must be clear and concise and must describe the invention in enough detail so that it enables a person skilled in the relevant art to make and use the invention. Furthermore, the specification must set forth the best mode (i.e. the best way), as contemplated by the inventor, for carrying out the invention. These additional requirements are more commonly known as the written description, enablement, and best mode requirements.

Are there any time limits or restrictions on obtaining a patent?

In the United States, there are several statutory bars that will preclude an inventor from obtaining a patent for their invention. These statutory bars generally pertain to certain events that occur more than 1 year prior to filing a patent application and result in the inventor possibly being precluded from obtaining patent protection. The events that create a statutory bar to patent protection include public use, public sale, publication, or abandonment of the right to a patent. An invention that is in public use, on sale or described in a printed publication more than one year prior to the filing date of the patent application is barred from obtaining patent protection. Public use occurs when a patentable article is disclosed to at least one person. Confidential disclosure and experimental use of a patentable article do not trigger the public use bar. Public sale occurs when a patentable article is the subject of a commercial offer for sale. Publication occurs when the patentable article is described in any patent or publication in any country. An abandonment of the right to patent occurs when the inventor expressly states an intent to donate the invention to the public. Most foreign countries do not have the 1-year grace period enjoyed under U.S. law. As such, should foreign protection be desired, a patent application should be filed before any public use, sale, publication, or abandonment occurs.

What are the important dates to consider when filing a patent application?

There are several important dates to note when filing a patent application. These dates are also important for determining whether an event creating a bar to patent protection has occurred. The first of these dates is the date of invention. Invention occurs when a patentable article is reduced to practice or where the inventor is capable of giving instructions specific enough to enable a person of ordinary skill in the art to reduce the invention to practice. The “critical date” is the date exactly one year prior to the application date. The “priority date” is another date to consider when filing a patent application, but the term “priority date” can have several different meanings. For many patent applications, the priority date is the date on which the patent application was filed with the USPTO and is the date that controls what prior art will affect the patentability of the invention. Often the priority date will be the same date as the “filing date” or “application date.” In some circumstances, though, a patent application will enjoy a priority date that is earlier than its own filing date. For example, a continuation or divisional application will enjoy the filing date of the application of which it is a continuation or a divisional.

Why are laboratory notebooks important for obtaining a patent?

Laboratory notebooks are important because in the United States patents are currently awarded to the first person who invents a particular invention and not to the person who is the first to file a patent application for that invention. Thus, if two applicants are seeking a patent on the same invention, establishing who has priority of invention will often depend on whether documentation, such as laboratory notebooks, is available. An inventor who fails to keep a laboratory notebook that has been properly witnessed runs the risk of being unable to conclusively establish their date of invention and may thus lose a priority contest to another inventor.

Investigators are encouraged to contact the DTM with questions regarding proper laboratory notebook documentation.

What is the Patent Cooperation Treaty (PCT) and what are its benefits?

The Patent Cooperation Treaty, or PCT, is an effort by many countries around the world to provide some streamlining of patent applications across several countries at once. The PCT permits an inventor to file what is called a PCT application that is administered by the World Intellectual Property Organization (WIPO). A PCT application may enable an applicant who is interested in filing in countries other that the United States a way to postpone having to make decisions about which foreign countries to file in. The timely filing of an international application affords applicants an international filing date in each country which is designated in the international application and provides (1) a search of the invention and (2) a later time period within which the national applications for patent must be filed.

What is the general procedure for obtaining a patent?

Before filing a full patent application, it is often recommended that a patentability search be conducted. This search is designed to uncover any prior art that would render the invention unpatentable. If this prior art / patentability search uncovers prior art references that may render the invention unpatentable, then the inventor may be advised to cease the patenting process and avoid further patent expenses. However, if the search results are positive the inventor may be encouraged to go forward and file a full patent application. Once a full application is filed with the USPTO, it is then reviewed by an Examiner for patentability. After reviewing the patent application and the prior art, the Examiner will issue an “Office Action” that details his or her position with respect to patentability. It should be noted though that the time between when the application is filed and when the first office action is issued can range anywhere from one to three years, depending on the type of technology that is involved. Moreover, the first office action will usually be a rejection of the application for a variety of reasons. If this happens, as it often does, the applicant is then allowed to respond to the Examiner’s assessment of the application by arguing against the rejection and/or amending the claims to avoid the prior art cited by the Examiner. After reviewing the applicant’s response the Examiner will then issue a second office action in which the application is either allowed or rejected. If the patent application is again rejected then there are a variety of avenues to follow in further attempts to convince the Examiner that the application should be allowed. However, if the application is allowed, the USPTO will then require the payment of an issue fee. Once the issue fee has been paid, the patent will issue in approximately four months. All in all this process, known as the prosecution of an application, may take anywhere from one to four years, or longer, from the filing of an application.