Intangible property Patents Copyrights Trade secrets and know-how Trademarks © TM.

Intangible property Patents Copyrights Trade secrets and know-how Trademarks

©TM

United States Constitution

The Congress shall have power … to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.

Basis for patents and copyrights.

“While Inventions and copyrightable works are not the primary objectives of University Research, when they occur the University has the responsibility of insuring that such Inventions and Works are used and controlled in a manner that benefits the public, the Inventor or Author and the University to the fullest extent possible.” Board Policy 210.1

Inventor-employees receive 50% of the first $200,000 in net licensing net revenues.

35% of any net revenues above $200,000.

Board does not exercise rights over non-employee inventions.

May accept intellectual property from third parties

UA Board Policy 210.1 (rev’d 2001)

Mission: To commercialize world-class research to build a sustainable knowledge-based economy to benefit Arkansas and the world.

http://www.uark.edu/ua/tlo/

Right to exclude others

Limited time (usually 20 years from filing)

Scope determined by claims (found at end of patent)

Novel, non-obvious and useful Utility (includes plants)

Ornamental, novel and non-obvious Design

Asexually reproduced, distinct and new plants Plant patent

Novel, sexually reproduced plants Plant variety protection

Premature disclosure! (Losing novelty) Publishing or presenting your work

Absolute bar in most countries Starts one year clock ticking in US

Even mere predictions can start the clock Electronic publication counts Offering for sale

Claim Example1. A pet display vest for a

person, having an elongate,

enclosed, pet receiving, passageway extending there across with

at least one closable pet admitting entry,

at least part of the passageway being transparent

so that, when the vest is worn, a pet moving along the passageway across a wearer's body can be viewed by a spectator.

Patent Searching

http://www.uspto.gov/patft/index.html

Patent Searching (continued)

http://www.uspto.gov/patft/index.html Boolean Cited/citing patents Assignee information

82 patents in US Class 5/486

Patent Searching

More sophisticated searches by class and subclass.

Tutorial suggests 30 hours for a good search.

http://www.lib.utexas.edu/engin/patent-tutorial/tutorial/pattut.html

Viewing patents online

To see the document as published at the USPTO website, one page at a time. AlternaTIFF

To quickly download the whole patent or published application. www.freepatentsonline.com

Download file history via PAIR. http://portal.uspto.gov/external/portal/pair

World Intellectual Property Office http://www.wipo.int/pct/en/

European Patent Office

Similar search strategies Broader coverage than just EPO

Also USPTO and JPO Links to full version of patent (or

application) English abstracts generally available http://ep.espacenet.com/

Business Considerations for Patents

Shelf life of technology Competition Freedom to operate Value of the barrier to entry

Ease of design around? Cost to enforce

Tangible form of expression

Protect works of authorship Reproduction Derivative works Distribution Publication

No tangible form of expression Unrecorded, improvised

speeches (conversations) Titles, short phrases Ideas, procedures,

discoveries, or devices Consider patenting

No original authorship Standard calendars, lists

or tables taken from public documents, white pages telephone listings

Work for hire? prepared by an

employee within the scope of employment; or

specially ordered and on a specific statutory list of items (e.g., contribution to a collective work, instructional text, test or answers for a test); or

express written agreement.

Copyrighted as soon as in “tangible form”

No absolute need to register Don’t even have to have “c in a circle” Legal reasons to register Very long term of protection

©

The “secret recipe” Special techniques Customer lists Other secrets

Keep them secret!

Words Designs Product

configurations Infinite in duration

so long as mark is still used

Mark must be associated with source of goods or services

™™

Trademarks: Key to Your Business’ Identity

Get it right the first time. Trademark search by a professional. Avoiding a redesign will pay for the search.

Audit your marks from time to time. Your marks change over time with your

business.

Trademarks: Searching

Copyright owner must prove Access to copied material and Copying.

Patent owner must prove Infringer is making, using or selling

something that is covered by the patent’s claims.

Access unnecessary. Trademark owner must prove

Likelihood of confusion.

The rules are the same. Still need to pay attention to

copyright Can’t just lift someone’s words

or pictures and claim them as your own

Publishing electronically is still publication for patenting

What value do patent attorneys bring?

Nilssen v. Osram Sylvania, Inc. (Fed. Cir. 2007)

Questions?

Lisa C. Childs, Ph.D. Associate Vice Provost for Research Patent Attorney for the Division of

Agriculture My job? Managing all aspects of the

portfolio of intellectual property belonging to UAF and Division.