Intellectual PropertyIntellectual Property

What is intellectual property?What is intellectual property?US IP protection- US IP protection- Patent application processPatent application processWhat does a patent look like?What does a patent look like?Patents in Oregon- how are we doing?Patents in Oregon- how are we doing?Tacit Knowledge, the Inventor, and Tacit Knowledge, the Inventor, and

implications for Tech Commercializationimplications for Tech CommercializationCDA for this classCDA for this class

Physical vs Intellectual Physical vs Intellectual PropertyProperty

FactorFactor Physical Physical PropertyProperty

Intellectual Intellectual PropertyProperty

Multi-UseMulti-Use Use by one firm Use by one firm precludes precludes simultaneous simultaneous use by anotheruse by another

Use by one firm Use by one firm does not prevent does not prevent use by anotheruse by another

Physical Physical depreciationdepreciation

Depreciates, Depreciates, wears outwears out

Does not wear Does not wear outout

Protection and Protection and enforcement enforcement from from encroachmentencroachment

Generally can Generally can enforce and enforce and protect protect ownershipownership

May be difficult May be difficult or expensive to or expensive to enforce and enforce and protect protect ownershipownership

Categories of IPCategories of IP

PatentPatentTrademarkTrademarkCopyrightCopyrightTrade secretsTrade secretsOthers…. Others….

Inventors right to IP Protection: Inventors right to IP Protection: The U. S. Constitution !!The U. S. Constitution !!

Article 1, Section 8:Article 1, Section 8: ““The Congress shall have power…”The Congress shall have power…” ““To promote the progress of science and To promote the progress of science and

useful arts, by securing for limited times to useful arts, by securing for limited times to authors and inventors the exclusive right authors and inventors the exclusive right to their respective writings and to their respective writings and discoveries”discoveries”

Patentable subject matterPatentable subject matter

The patent claims define what is patentedThe patent claims define what is patented

““Anything under the sun Anything under the sun made by man”made by man”

““Limited time” is 20 years from first filingLimited time” is 20 years from first filing

Broad categories of utility patents:Broad categories of utility patents:

Different types of patentsDifferent types of patents

Utility - this is 98% of all patentsUtility - this is 98% of all patentsDesign- for new original, ornamental and Design- for new original, ornamental and

non-obvious designs for articles of non-obvious designs for articles of manufacturemanufacture

Plant patents- e.g. genetically modifiedPlant patents- e.g. genetically modifiedBusiness method patents- “one click” Business method patents- “one click”

buying method is patented by Amazonbuying method is patented by Amazon

Categories of claimsCategories of claimso Method Method (process)(process)

-Common for nanoscale inventions, semiconductor -Common for nanoscale inventions, semiconductor manufacturing, etcmanufacturing, etc

o ApparatusApparatus- Machine, compound, materials- Machine, compound, materials

o ProductProduct made by process made by process- Pharmaceutical drugs, semiconductor devices, etc- Pharmaceutical drugs, semiconductor devices, etc (Lilienfeld, patent #1741745- issued 1928)(Lilienfeld, patent #1741745- issued 1928)

Any patent can mix or match claims from these three Any patent can mix or match claims from these three categoriescategories

Benefit to the PublicBenefit to the Public

Publication- for all to learn and build uponPublication- for all to learn and build uponMust be enablingMust be enablingMust disclose “best mode”Must disclose “best mode”Must file promptly or waive rightsMust file promptly or waive rightsCannot abandon, suppress, or concealCannot abandon, suppress, or conceal

Patent Fast Facts: Valuable Patent Fast Facts: Valuable Prizes to the WinnersPrizes to the Winners

o Average Number of US Patents Issued per day (within a Average Number of US Patents Issued per day (within a factor of 2) factor of 2)

About 500!!!About 500!!!

o Typical cost for preparing and filing a patent (within the Typical cost for preparing and filing a patent (within the range specified)range specified)

$10,000-$50,000$10,000-$50,000

o Corvallis National Rank in “Patents per capita” (within 2 Corvallis National Rank in “Patents per capita” (within 2 places)places)

44thth (Source- USA Today, 2002) (Source- USA Today, 2002)

Patent Fast Facts: Valuable Patent Fast Facts: Valuable Prizes to the WinnersPrizes to the Winners

o Date and invention of first US patent (within 20 years) Date and invention of first US patent (within 20 years)

July 31, 1790- “July 31, 1790- “Making Pot ash and Pearl Ash by a New Making Pot ash and Pearl Ash by a New Apparatus and Process”, Sam Hopkins, inventorApparatus and Process”, Sam Hopkins, inventor

o Number of US patents issued as of today?Number of US patents issued as of today? (within 100,000) (within 100,000)

7,174,5707,174,570

o Average length of time from application to granting of patent Average length of time from application to granting of patent (within 12 months)(within 12 months)

28 months, but biotech patents average 45 months28 months, but biotech patents average 45 months

Benefit to the PublicBenefit to the Public

Right to exclude for a limited timeRight to exclude for a limited time20 years from first filing date20 years from first filing dateCannot be extendedCannot be extended

A monopoly deprives the public of A monopoly deprives the public of something they had a right to dosomething they had a right to do

A patent contributes something new that A patent contributes something new that no one had beforeno one had before

““New, useful, and non-New, useful, and non-obvious”obvious”

““Novelty” means new; not done before Novelty” means new; not done before anywhere (publicly accessible)anywhere (publicly accessible)

““Prior art” is publicly accessible by Prior art” is publicly accessible by definitiondefinition

““Publication” need not be printed on Publication” need not be printed on paper…can be electronic, any languagepaper…can be electronic, any language

““Useful” means….?Useful” means….? ““Non-obvious”Non-obvious”

From Invention to Protection From Invention to Protection (Before the USPTO)(Before the USPTO)

The idea!

Document, date and witness it..

File an invention disclosure

Review by IP

committee

To file or not to file???

From Invention to Protection From Invention to Protection (Filing with the USPTO)(Filing with the USPTO)

Provisional Application

(optional)

Full Application.

USPTO Office actions, rejections, etc

Patent is awarded!!

If patent is awarded, 20 year clock starts from date of first filing

OR

Parts of a PatentParts of a Patent

Title/Number/Date of Filing/Date of Issue Title/Number/Date of Filing/Date of Issue AbstractAbstractFiguresFiguresBackgroundBackgroundSummary of InventionSummary of InventionDescription of Preferred EmbodimentDescription of Preferred EmbodimentTHE CLAIMSTHE CLAIMS

Oregon PatentsOregon Patents

Oregon Patents by Assignee and AreaOregon Patents by Assignee and Area

Trade SecretsTrade Secrets Another alternative to filing a patent is to maintain an Another alternative to filing a patent is to maintain an

invention as a “trade secret”, intentionally kept from the invention as a “trade secret”, intentionally kept from the publicpublic

The Coca Cola recipe has been a trade secret for more The Coca Cola recipe has been a trade secret for more than 100 years- supposedly known only by two than 100 years- supposedly known only by two employeesemployees

Under what conditions would a company want to Under what conditions would a company want to maintain IP as a trade secret?maintain IP as a trade secret?

What are the risks in doing so?What are the risks in doing so?

The Reality- “Tacit Knowledge“The Reality- “Tacit Knowledge“

For any technical idea, all the information For any technical idea, all the information relevant to an invention is rarely codified.relevant to an invention is rarely codified.

Even to one “skilled in the art”, an invention can Even to one “skilled in the art”, an invention can often not be reconstructed due to background often not be reconstructed due to background information and knowledge known but not information and knowledge known but not documented by the inventordocumented by the inventor

This background knowledge is referred to as This background knowledge is referred to as “tacit knowledge” and is one of the greatest “tacit knowledge” and is one of the greatest challenges to technology transferchallenges to technology transfer

Remember this!!Remember this!!

The amount of tacit knowledge in an The amount of tacit knowledge in an invention is an important factor in deciding invention is an important factor in deciding whether to form a spin off company or whether to form a spin off company or license it to an established firmlicense it to an established firm

Why?Why?

Small Group ActivitySmall Group ActivityYou are on the IP review committee of a small company. Assuming You are on the IP review committee of a small company. Assuming

there was no prior art, what would you do with the following there was no prior art, what would you do with the following submitted IP?submitted IP?

• Method for measuring thickness of films very precisely. This is Method for measuring thickness of films very precisely. This is important in making a new nanostructure which is one of your important in making a new nanostructure which is one of your highest revenue productshighest revenue products

• A new packaging method which preserves product quality at a lower A new packaging method which preserves product quality at a lower costcost

• A cow magnet which the inventor claims will radically improve A cow magnet which the inventor claims will radically improve automobile gas mileageautomobile gas mileage

• A method of embossing your company logo on the product that A method of embossing your company logo on the product that looks holographiclooks holographic

• A new computer algorithm which allows internet customers to bid A new computer algorithm which allows internet customers to bid on-line (like e-bay but better)on-line (like e-bay but better)