INTELLECTUAL PROPERTYINTELLECTUAL PROPERTYMANAGEMENTMANAGEMENT

FOR FOR SMALL TECHNOLOGY FIRMSSMALL TECHNOLOGY FIRMS

byby

Robert M. (Bob) Hunter, Ph.D.Robert M. (Bob) Hunter, Ph.D.

Registered Patent AgentRegistered Patent Agent

WebPatent.comWebPatent.com

What is Intellectual Property?What is Intellectual Property?

An intangible product of the intellectAn intangible product of the intellect Free for anyone to use unless protectedFree for anyone to use unless protected Must be placed in a “vessel”Must be placed in a “vessel” Can be sold, rented, licensed, etc.Can be sold, rented, licensed, etc. Some rights allocated by regulation in Some rights allocated by regulation in

SBIR/STTR/university grant projectsSBIR/STTR/university grant projects technical datatechnical data subject inventionssubject inventions

Types of Intellectual PropertyTypes of Intellectual Property

PatentsPatents Utility (technology), design and plantUtility (technology), design and plant

Plant varietyPlant variety Trade secretTrade secret CopyrightCopyright Semiconductor mask workSemiconductor mask work Trademark/service markTrademark/service mark Trade dressTrade dress

CopyrightCopyright

Can protect works of authorship: Can protect works of authorship: literary, musical, dramatic, literary, musical, dramatic, choreographic, sculptural, choreographic, sculptural, audio/visual, architecturalaudio/visual, architectural

Copyright owner can prevent Copyright owner can prevent reproduction, preparation of reproduction, preparation of derivative works, distribution, derivative works, distribution, performance, public display, digital performance, public display, digital audio transmissionaudio transmission

Cannot CopyrightCannot Copyright

Titles, names, short phrases, and slogans; Titles, names, short phrases, and slogans; familiar symbols or designs; mere listings familiar symbols or designs; mere listings of ingredients or contentsof ingredients or contents

Ideas, procedures, methods, systems, Ideas, procedures, methods, systems, processes, concepts, principles, processes, concepts, principles, discoveries, or devicesdiscoveries, or devices

Standard calendars, height and weight Standard calendars, height and weight charts, tape measures and rulers, and lists charts, tape measures and rulers, and lists or tables taken from public documents or tables taken from public documents

Securing a CopyrightSecuring a Copyright

Secured Secured automaticallyautomatically when the work is when the work is fixed in tangible form for the first timefixed in tangible form for the first time

Deposit with the Library of Congress Deposit with the Library of Congress mandatorymandatory for works published in U.S. for works published in U.S.

Use of copyright notice precludes innocent Use of copyright notice precludes innocent infringement defense, e.g., © 2000 John infringement defense, e.g., © 2000 John Doe Doe

Benefits of timely copyright registration Benefits of timely copyright registration ($30 filing fee) include right to enforce and ($30 filing fee) include right to enforce and availability of statutory damagesavailability of statutory damages

Design PatentDesign Patent Shape or surface ornamentation of an Shape or surface ornamentation of an

article of manufacturearticle of manufacture Protects the way the article looksProtects the way the article looks Application includes a drawing of the Application includes a drawing of the

article and a single claim in a specific formarticle and a single claim in a specific form Must be ornamental, novel, nonobviousMust be ornamental, novel, nonobvious Examples: full user interface or individual Examples: full user interface or individual

icon embodied in a computer screen; icon embodied in a computer screen; shape of a new vehicle or instrumentshape of a new vehicle or instrument

Term: 14 years from date of grantTerm: 14 years from date of grant

Computer Icon for Display PanelComputer Icon for Display PanelU.S. Patent No. D439,912U.S. Patent No. D439,912

Plant PatentPlant Patent Plants propagated asexually, e.g., by Plants propagated asexually, e.g., by

rooting, layering, budding, grafting, etc.rooting, layering, budding, grafting, etc. Includes cultivated sports, mutants, Includes cultivated sports, mutants,

hybrids, and newly found seedlingshybrids, and newly found seedlings Excludes tuber propagated plants or plants Excludes tuber propagated plants or plants

found in an uncultivated statefound in an uncultivated state Inventor(s) must have asexually Inventor(s) must have asexually

reproduced the plant to establish reproduced the plant to establish reproducibilityreproducibility

Claimed invention must be a distinct and Claimed invention must be a distinct and new variety of plant, not just a flower or a new variety of plant, not just a flower or a fruitfruit

Trade SecretTrade Secret Any formula, pattern, device or Any formula, pattern, device or

information used in one's business that information used in one's business that has commercial value or that provides its has commercial value or that provides its owner with a competitive advantageowner with a competitive advantage

Sufficiently secret that use of improper Sufficiently secret that use of improper means is necessary to acquire itmeans is necessary to acquire it

A competitor may use legal means (e.g., A competitor may use legal means (e.g., reverse engineering) to independently reverse engineering) to independently discover the secret discover the secret

Term: until the subject matter enters the Term: until the subject matter enters the public domainpublic domain

Technical Data in SBIR/STTRTechnical Data in SBIR/STTR

Any recorded technical information Any recorded technical information developed in performance of awarddeveloped in performance of award reports, invention disclosuresreports, invention disclosures software documentationsoftware documentation

Rights retained by small business for four Rights retained by small business for four years after each phase of projectyears after each phase of project

After those periods, Government may After those periods, Government may use, release or disclose to others, or use, release or disclose to others, or permit others to use!!permit others to use!!

Rule No. 1Rule No. 1

Do not rely on trade secretDo not rely on trade secret

protection of intellectual propertyprotection of intellectual property

developed duringdeveloped during

SBIR/STTR projectsSBIR/STTR projects

(or grant-funded university projects)(or grant-funded university projects)

Subject Inventions in SBIR/STTRSubject Inventions in SBIR/STTR

What is included?What is included? patentable technology, design or plantpatentable technology, design or plant protectable plant varietyprotectable plant variety

How does a discovery qualify?How does a discovery qualify? invention conceived or first actually invention conceived or first actually

reduced to practice in performance of reduced to practice in performance of workwork

date of determination of plant variety date of determination of plant variety within period of performancewithin period of performance

Rule No. 2Rule No. 2

Make sure the members Make sure the members

of your project team of your project team

can identify a subject inventioncan identify a subject invention

when they see onewhen they see one

and understand their obligationand understand their obligation

to document it and disclose it to youto document it and disclose it to you

Examples ofExamples ofPatentable TechnologiesPatentable Technologies

Mechanical, electrical, optical devicesMechanical, electrical, optical devices Isolated microbial cultures, DNA, RNAIsolated microbial cultures, DNA, RNA Plants, plant parts and seedsPlants, plant parts and seeds Genetically-engineered non-humansGenetically-engineered non-humans Ways of making or operating thingsWays of making or operating things Business methods, including any technique Business methods, including any technique

used in athletics, instruction, or personal used in athletics, instruction, or personal skillsskills

Software systems, processes, user Software systems, processes, user interfacesinterfaces

Cheese Filtered CigaretteCheese Filtered CigaretteU.S. Patent No. 3,234,948U.S. Patent No. 3,234,948

Method of Concealing BaldnessMethod of Concealing BaldnessU.S. Patent No. 4,022,227U.S. Patent No. 4,022,227

Types of Utility Patent ApplicationsTypes of Utility Patent Applications

Provisional U.S. patent applicationProvisional U.S. patent application Asserts priority of invention internationallyAsserts priority of invention internationally

Regular U.S. patent applicationRegular U.S. patent application Contains claims; is examined; can issueContains claims; is examined; can issue

International (PCT) patent applicationInternational (PCT) patent application Does not issue as a patentDoes not issue as a patent Must be filed within 12 monthsMust be filed within 12 months

Regional patent application (e.g., EPO)Regional patent application (e.g., EPO) Non-U.S. patent applicationNon-U.S. patent application

Patent Application ContentPatent Application Content

Specification (organized text)Specification (organized text) Written description (product? process?)Written description (product? process?) Enablement (“how to make” & “how to Enablement (“how to make” & “how to

use”)use”) Best mode (best way to practice invention)Best mode (best way to practice invention)

Drawing(s)Drawing(s) AbstractAbstract Claims (legal definitions of property Claims (legal definitions of property

right)right)

Typical Software ClaimsTypical Software Claims

1. A signal processing system comprising: 1. A signal processing system comprising: element A, element B and element C. element A, element B and element C.

2. The system of claim 1 further 2. The system of claim 1 further comprising: element D.comprising: element D.

3. A process for processing financial data 3. A process for processing financial data comprising: step A, step B and step C.comprising: step A, step B and step C.

4. The process of claim 3 wherein step A 4. The process of claim 3 wherein step A comprises step A1 and step A2.comprises step A1 and step A2.

Patentability CriteriaPatentability Criteria

Legal-required to report? can patent?Legal-required to report? can patent? appropriate subject matterappropriate subject matter useful, novel, non-obvioususeful, novel, non-obvious

Practical-business reason to patent?Practical-business reason to patent? valuablevaluable long economic lifelong economic life enforceableenforceable FUD-Fear, Uncertainty and DoubtFUD-Fear, Uncertainty and Doubt

Bars to Patentability in U.S.Bars to Patentability in U.S.

More than one year before U.S. filing More than one year before U.S. filing datedate Offered for sale in the U.S.Offered for sale in the U.S. Used in public in the U.S.Used in public in the U.S. Enabled in a publication or patent anywhereEnabled in a publication or patent anywhere

Before date of inventionBefore date of invention Publicly known in U.S.Publicly known in U.S. Enabled in a publication or patent anywhereEnabled in a publication or patent anywhere Enabled in a U.S. patent application by Enabled in a U.S. patent application by

anotheranother

Inventorship CriteriaInventorship Criteria

An inventor must contribute to the An inventor must contribute to the conception (“thinking up”) of a claimed conception (“thinking up”) of a claimed inventioninvention

Joint inventors must be actual inventorsJoint inventors must be actual inventors Inventor(s) must be diligent in reducing Inventor(s) must be diligent in reducing

the invention to practice—by building the invention to practice—by building and testing one or filing a patent and testing one or filing a patent applicationapplication

Inventorship can be lost by Inventorship can be lost by abandonment or concealmentabandonment or concealment

Rule No. 3Rule No. 3

Be sure to have your written recordBe sure to have your written record

of conception and of conception and

diligence in reduction to practice diligence in reduction to practice

witnessed contemporaneouslywitnessed contemporaneously

Allocation of Rights in SBIR/STTRAllocation of Rights in SBIR/STTR

Small business (or subcontractor) may Small business (or subcontractor) may retain title to a subject inventionretain title to a subject invention depends on who thought it up or built and depends on who thought it up or built and

tested ittested it cannot require subcontractors to give up cannot require subcontractors to give up

rights as a condition of hiring themrights as a condition of hiring them Government receives a non-exclusive, Government receives a non-exclusive,

nontransferable, irrevocable, paid-up, nontransferable, irrevocable, paid-up, worldwide license for Government useworldwide license for Government use

Rule No. 4Rule No. 4

It is often a good idea for the It is often a good idea for the “inventing”“inventing”

portion of an SBIR or STTR project toportion of an SBIR or STTR project to

be performed by employees of thebe performed by employees of the

small business recipient of the award small business recipient of the award who have signed employment who have signed employment

agreementsagreements

assigning inventions to the businessassigning inventions to the business

SBIR/STTR ResponsibilitiesSBIR/STTR Responsibilities

Report invention to Government within Report invention to Government within two months of disclosure by inventor(s)two months of disclosure by inventor(s)

Elect to retain title within two years of Elect to retain title within two years of initial reportinitial report

File a non-provisional U.S. patent File a non-provisional U.S. patent application within one year of electionapplication within one year of election

File non-U.S. patent applications within File non-U.S. patent applications within ten months of U.S. filingten months of U.S. filing

Commercializing Your RightsCommercializing Your Rights

Licensing or sale (assignment) of rightsLicensing or sale (assignment) of rights Herculean marketing effort requiredHerculean marketing effort required Less investment, less riskLess investment, less risk Much smaller potential returnMuch smaller potential return Less or no controlLess or no control Like dancing with an elephantLike dancing with an elephant

New venture formationNew venture formation Larger skill set requiredLarger skill set required Like riding a tigerLike riding a tiger

ConclusionsConclusions

Creation of intellectual property is an Creation of intellectual property is an excellent wealth-building techniqueexcellent wealth-building technique

But only if you establish and But only if you establish and commercialize your intellectual commercialize your intellectual property rightsproperty rights

Preserve and protect those rights Preserve and protect those rights and then sell, sell, sell them either and then sell, sell, sell them either embodied in products or outright!embodied in products or outright!

IP MANAGEMENT IP MANAGEMENT WEBSITESWEBSITES

Patent searching-expect surprisesPatent searching-expect surprises www.uspto.govwww.uspto.gov www.delphion.comwww.delphion.com

Invention reporting-an allowable costInvention reporting-an allowable cost www.iedison.govwww.iedison.gov

Protecting and licensing inventionsProtecting and licensing inventions www.webpatent.com/sbirwww.webpatent.com/sbir