What is?
Intellectual Property
Any product of the human intellect. It is comprised of four categories – trade secrets, copyrights, trademarks, and patents. Generally, the ownership of intellectual property creates a limited monopoly for the protected property.
Trade Secrets
Private information that is important to a business, as it provides a competitive advantage in its marketplace. Thus, if a trade secret is acquired by a competitor, it could harm the original holder.
Patents
Used to protect inventions (or discoveries) that are new, non-obvious, and useful. When a property owner holds a patent, others are prevented, from offering for sale, making, or using the product.
Utility Patent
Most common type of patent. This type covers processes, compositions of matter, machines, and manufactures that are new and useful. A utility patent offers 20 years of protection. Once the patent is expired, the technology can be used anyone.
Design Patent
Defined as the “surface ornamentation” of an object. This can include the shape or configuration of an object. However, the design must be inseparable from the object to get a design. To protect the functional or structural features of an object, a person must also file for a utility patent. A design patent offers 14 years of protection. Once the patent is expired, anyone can use the design.
Plant Patent
Allows for protection of new and distinctive plants. The plant cannot be a tuber propagated plant, it is not found in an uncultivated state, and the plant can be asexually reproduced. Plant patents require asexual reproduction because it’s proof that the patent applicant can reproduce the plant. A plant patent offers 20 years of protection. Once the patent is expired, anyone can produce the plant.
Provisional Patent Application
Placeholder patent application that allows your invention to get “in line”. It gives you 1 year from the filing date of the provisional patent application to figure out the specifics of the invention or discovery while preventing patenting by another party. At the end of the year, a non-provisional application must be filed or the technology will be abandoned. Once the technology has been abandoned, patent protection will no longer be possible.
Copyrights
Protects original works of authorship, which might include literary works, music, art, computer software, and architecture. This protection is automatic and once you create something, it is yours. However, if your rights under copyright protections are infringed and you wish to file a lawsuit, then registration of your copyright will be necessary.
Trademarks
Refer to phrases, words, or symbols that distinguish the source of a product or services of one party from another. trademark rights come from the use of the trademark, and therefore can be held indefinitely. Like a copyright, registration of a trademark is not needed, but registering can offer more advantages.
Patent Cooperation Treaty (PCT)
Allows someone to seek patent protection in several countries by filing a single “international” patent application. The PCT is an international treaty with more than 150 Contracting States. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.
National Phase
Occurs after the end of the PCT timeline, usually at 30 months from the earliest filing date of your initial application from which you claim priority. You would pursue the grant of your patents directly at the national (or regional) patent offices of the countries you desire.
Licensing Agreement
Also called an intellectual property license. Agreement in which you keep ownership of your intellectual property but allow another party to use some or all of said intellectual property rights for a specific amount of time for a fee or royalty. These agreements come with specific termination dates and procedures.
Royalty
An amount paid by a third party to an owner of intellectual property for the use of that intellectual property. The terms of royalty payments are laid out in a license agreement.
Office Action
A document written by a patent examiner in response to a patent application after the examiner has examined the patent application. The Office action cites prior art and gives reasons why the examiner has allowed the applicant’s claims and/or rejected the claims. An Office action may be “final” or “non-final”. In a non-final Office action, the applicant is entitled to reply and request reconsideration or further examination, with or without making an amendment. In a final Office action, the applicant has two options for reply.
Invention Disclosure
Often the first step in the intellectual property protection process. This is an institution specific form in which the inventor(s) provide a comprehensive description of the invention. The inventor(s) will also list any funding sources, upcoming presentations/publications, and any other information that may be relevant in determining if the invention is novel and useful.
Public Disclosure
Any, non-confidential communication of an idea or invention. It may include the following: conventional academic printed and online publications, abstracts, master’s theses, Ph.D. dissertations, open thesis defenses, presentations, poster sessions, department and campus seminars, information posted online and publicly available abstracts of funded grant proposals. Therefore, to prevent public disclosure, grant proposal abstracts should be high-level and not describe the invention. Additionally, grant applications typically are not made public, although grant final reports can be available to the public and would be considered a public disclosure.