this presentation from WARF on IP basics
Transcript of this presentation from WARF on IP basics
Investing in research, making a difference.
Intellectual Property Basics and WARF’s Disclosure Process
Leah Haman Intellectual Property Associate
March 3, 2015
1
Investing in research, making a difference.
Intellectual Property
• Intellectual property (IP) refers to creations of the mind
• Inventions • Designs • Literary and artistic works • Symbols, names and images
• IP is protected by law - owners are granted certain exclusive rights to these assets
Investing in research, making a difference.
Why is Intellectual Property Important?
• Competitive advantage • Exclusivity provides a justification for research and development spending and motivation to invest in the development of innovative ideas (risk/reward) • Without protecting IP, competitors can use it and do not
have to recoup the R&D investment • Especially valuable for start-ups
• Can be critical in attracting venture capital (VC) • An important part of a company’s valuation • Importance can vary by industry
Investing in research, making a difference.
Forms of IP Protection
4
PatentsMachinesanddevices
CompoundsProcessesandmethodsImprovementsonanyof
theabove
TrademarksWordsandphrases
ColorsPicturesorlogos
Sound
CopyrightsLiteraryworksWebpages
So@wareprograms
Investing in research, making a difference.
Patents
Investing in research, making a difference.
What is a patent?
• A grant of a property right to the inventor • The patent gives the patent owner the right to exclude others from practicing the patented invention. • Making • Using • Selling • Offering to sell • Importing
Investing in research, making a difference.
Patent Types
• Utility • Provisional
• Plant • Design
7
Investing in research, making a difference.
Utility Patents
• What can be patented? • Machines and devices • Compounds • Processes and methods • Improvements
• Parts of a patent application: • Specification • Drawings • Claims*
8
Investing in research, making a difference.
Example Claim
What is Claimed is: 1. An electronic device, comprising: • a fingerprint sensor having conductive structures and having fingerprint sensor circuitry that is configured to gather fingerprint data with the conductive structures;
• And near field communications circuitry that is coupled to the conductive structures and that is configured to receive near field communications signals with the conductive structures.
9
Investing in research, making a difference.
Drawing of Previous Claim
Title:ElectronicDevicewithSharedNearFieldCommunica?onsandSensorStructuresUSapplica?on#:13/409,615Assignee:AppleComputer,Inc.Inventors:BenjaminPope,DanielJarvis,NicholasMerz,ScoTMyersFilingDate:January3,2012
Investing in research, making a difference.
Patent Prosecution
• Process for obtaining a patent carried out between inventors or patent attorneys or patent agents and the United States Patent and Trademark Office (USPTO)
• Examiner at USPTO evaluates the patents • Can take years
Investing in research, making a difference.
Patent Examination
Application assigned to an
examiner
Examiner searches for prior
art
Examiner applies tests for novelty, non-obviousness
and utility
Initial rejections of some or all claims are common
Office action
spells out issues that need to be
addressed
Arguments to persuade the examiner that
the prior art was incorrectly
applied
Claims may be amended to
further distinguish the invention from
the prior art
Examiner reviews
arguments and/or amendments
If arguments are
persuasive, claims may be allowed or new rejections may
be made
Applicants can respond if only
minor amendments are
needed
Otherwise, a request for continued
examination or an appeal can be
filed
Congratulations!
Claims are allowable and the patent can
issue
Issue and publication fees
are paid
Investing in research, making a difference.
Statutory Requirements
• Utility/Novel/Non-obvious
• Claims are definite and appropriate written description
• Specification enables the practice of the invention and discloses best mode
Investing in research, making a difference.
Invention must be “New”
• Novelty: each element of the claim cannot be contained in a single, enabling, fully anticipatory reference
• Cannot be over one year since publically disclosed by the inventor (US only)
Investing in research, making a difference.
Invention must be “Non-Obvious”
• Different than novelty because it applies when an invention is not identically disclosed
• Invention is non-obvious when a Person Having Ordinary Skill In The Art would not find the invention obvious
Investing in research, making a difference.
Prior Art
• Evaluate prior art to determine if invention is novel and non-obvious
• Public “references” created before the filing date of the patent include
• Patents • Publications • Poster presentations • Open thesis defense • Thesis catalog • Abstracts for conferences • Grant applications posted online once funded
Investing in research, making a difference.
Leahy-Smith America Invents Act (AIA)
• U.S. is a “first inventor to file” system • Actions and prior art that bar patentability include public use, sales, publications, and other disclosures available to the public as of the filing date • One year grace period for inventor • Intervening art concerns
• Filing before a public disclosure can provide stronger patent protection
17
Investing in research, making a difference.
Patents in the Rest of the World
• The Patent Cooperation Treaty • Special uniform application procedure to simplify
multinational patent acquisition
• File PCT application
• “Nationalize” the application by selecting countries to prosecute the application in
Investing in research, making a difference.
Copyrights
Investing in research, making a difference.
Copyrights
• Copyrights protect an EXPRESSION of an idea • Gives protection to authors of “original works of
authorship” • Copyright encourages creative efforts by
securing the exclusive right to reproduce works and derive income from them
Investing in research, making a difference.
Copyrightable Subject Matter
• Literary works • Musical works • Dramatic works • Pictorial, graphic and sculptural works
• Web pages
• Software and computer programs
• Mask works and semiconductor chips
• Architectural works • Motion pictures and other audiovisual works
21
Investing in research, making a difference.
Obtaining Copyright Protection
• Copyright is created automatically once an original effort has begun and it has been fixed in a tangible medium
• Registration is not required (but recommended) - Additional protection and notice to potential infringers - Simple and inexpensive - Symbol, year, author
• Works created on or after January 1, 1978 • Life of the author plus 70 years • Work-for-Hire: earlier of 95 years from publication or
120 years from creation
Investing in research, making a difference.
Trademarks
Investing in research, making a difference.
Trademarks
• A word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods or services of one party from those of others
• Why have trademarks?
Investing in research, making a difference.
WARF’s Disclosure Process
25
Investing in research, making a difference.
WARF Overview
• An independent, tax exempt, nonprofit, supporting organization for UW-Madison and Morgridge Institute for Research (MIR)
• WARF’s Mission: To support scientific research at UW-Madison and MIR by:
• Moving inventions into the community • Investing licensing proceeds to help fund further research
26
Investing in research, making a difference.
ConceiveandstarttodevelopyourideaforanewtechnologyoranimprovementtoanexisWngtechnology.
Research and Discovery
Investing in research, making a difference.
MakeyourinvenWonknowntoWARF.q SubmitanInvenWonDisclosureReport.
q MeetwithaWARFIntellectualPropertyManager.q ExplainyourinvenWontoWARF.
Invention Disclosure
Investing in research, making a difference.
TheWARFDisclosureCommiTeeassessesyouridea.q Isitprotectable?
q Isthereamarketforit?q Canwelicenseit?
WARF Decision
Investing in research, making a difference.
q Weeitheracceptordon’taccepttheinvenWonandnoWfytheinventor.q Foralldisclosuresthere’saGraduateSchoolEquityReviewtodeterminefunding
sourcesandownershiprightstotheinvenWon.q Ifweaccept,inventorssignaMemorandumAgreement.
Inventor Is Notified by WARF
Investing in research, making a difference.
q YoumeetwithyourWARFIntellectualPropertyManagerandapatentaTorneyretainedbyWARF.
q [email protected] TheapplicaWonisfiledwiththeU.S.PatentandTrademarkOffice(USPTO)and
examined.q ApatentissuesandtheinventorisnoWfied.
Patenting
Investing in research, making a difference.
WARFLicensingManageridenWfiescompaniesthatmaybeinterestedintheinvenWonandpro-acWvelymarketsthetechnologytothosecompanies.
q WARFLicensingManageridenWfiesthecommercialspaceforyourinvenWon.q AsummaryofthetechnologyiswriTenandpostedontheWARFWebsite.
q OthermarkeWngmaterialsmaybedeveloped.
Marketing
Investing in research, making a difference.
q ApatentlicenseisnegoWatedwithapotenWallicensee.q Apatentlicenseisacontractbetweenthepatentowner(WARF)andacommercial
partnerthatgivestheLicenseepermissiontomake,use,sellorimporttheinvenWon.
q LicensingrevenueisreturnedtotheInventorandtheUniversity,whereitisusedtosupportfurtherresearch.
Licensing
Investing in research, making a difference.
QuesWons?