IP Protection For DOE SBIR Awardees • 3.2. Intellectual Property Landscape [around your innovation ] – Describe intellectual property landscape – i.e. other key patents of competitors – Describe the due diligence taken to confirm that company has “ freedom to operate ” relative to the technology/innovation – Company Strategy (historical and going forward) Legal counsel used – Frequency of interaction with counsel Brief discussion of corporate IP history (patents , copyrights , trademarks ) – Description of corporate strategy to protect IP going forward with rationale and timeline provided – As appropriate, indicate the other IP you may need to acquire in order to address the market opportunity •Dawnbreaker Webinar •1
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IP Protection For DOE SBIR Awardees
• 3.2. Intellectual Property Landscape [around your innovation]
– Describe intellectual property landscape – i.e. other key patents of
competitors
– Describe the due diligence taken to confirm that company has “freedom
to operate” relative to the technology/innovation
– Company Strategy (historical and going forward) Legal counsel used
– Frequency of interaction with counsel Brief discussion of corporate IP
history (patents, copyrights, trademarks)
– Description of corporate strategy to protect IP going forward with
rationale and timeline provided
– As appropriate, indicate the other IP you may need to acquire in order to
address the market opportunity
•Dawnbreaker Webinar •1
IP Protection For DOE SBIR Awardees
Intellectual Property [IP] Considerations
•This webinar will
• (i) help you better address IP aspects of your project, and
• (ii) help you work confidently and at less cost with your IP Lawyer
•Specifically it will cover
•(i) recent Changes in the US Patent System - AIA Provisions;
•(ii) Helpful USPTO Resources available to you;
•(iii) Your Invention – find what’s new in it;
•(iv) Patent Searching Demonstration; and
•(v) Key IP Law Concepts [Patent, Trade Secret, Copyright , and
Trademark, concepts]Dawnbreaker Webinar 2
What is IP and Why Protect it?
What is Intellectual Property [IP]?
• (a) R&D Results Sense [IP sense 1]
• (b) In the Legal Sense [IP sense 2]
IP [sense 1 = property (such as an idea, invention, or process) that is derived from the work of
the mind or the intellect; also [sense 2 = an application, a registration, patent, copy right,
trademark, legal right on IP sense 1].
Why protect IP?
• 1. Boundary around your innovation/IP sense 1:
• 2. Limited Monopoly for Recovery of R&D Costs:
• 3. Good Investor Requirement:
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“The America Invents Act,” [AIA] [signed into law in 2011, includes major
changes to the US Patent System].
Key provisions include:
1.First-inventor-to-file:
[(i) most significant provision. (ii) changed the US patent system from a first-to-
invent system into a first-inventor-to-file system.
US Patent System Changes
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Some Implications of First-to-Invent System
2. Prior Art provision What is prior art has changed significantly – so talk
to your Patent Lawyer, but in general know this:
- The scope of prior has become broader and global [now includes oral
disclosures; use and sale no longer limited to this country; and publications
no longer have to be in English].
Most common pieces of advice being given about this:
-- Be careful about publishing or disclosing your invention before filing on it;
-- Use fully written Provisional Patent applications more regularly;
-- publications by others on or about your invention will be a problem;
-- Keep good inventor notebooks
– Talk to your Patent Lawyer.
US Patent System Changes
• 3. 12 months fast track option for patent processing: under this
provision, instead of the average wait time of 36 months, applicants will
have an opportunity [for a fee] to have their patent applications examined
within 12 months.
• 4. reduced backlog: [provided more money for more examiners and
better infrastructure].
• for more information on the AIA, search:
• (i) “USPTO Basics for Entrepreneurs”;
• (ii) www.uspto.gov/aia_implementation/9-29-11_maulsby-speech.pdf;]]
and year; then register and deposit a copy with Copyright Office).
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Types of IP Protection Laws
Trade Secret Law – for protecting [type (a) IP Inventions, plus others:
Trade Secret law is State Law. In NYS, a trade secret is any information used
in a business:
– that gives business actual or potential commercial advantage over
competitors; and
– that is kept secret; is otherwise not
– publicly available;
– and competitors do not commonly know or use.
Is something a trade secret - factors to consider:
– value to the business and its competitors
– effort or money expended in developing it;
– ease or difficulty of others to properly duplicate it;
– extent it is known outside of the business;
– extent it is known in the business (number of persons); and
– extent of steps or measures taken to guard its secrecy.28
Types of IP Protection Laws
(Trade Secret Law cont’d)
Measures required to maintain trade secrets:
- employ Physical and Notice measures;
- have a written IP Secrecy policy & communicate it.
- keep trade secret information under lock and key;
- track physical custody and movement of trade secrets.
- use confidential disclosure agreements, CDA’s;
- use signs to warn would-be and actual accessors.
Notice measures: (these are measures that put persons who come acrossinformation on notice that the information is to remain secret).
Physical security measures: (these prevent persons with no need-to-know fromever coming in contact with the information).
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Types of IP Protection Laws
(A word about Invention Secrecy – common to Patent Law and Trade Secret Law)
Other Steps for Keeping Inventions Secret:
(A). Use CDA (Confidential Disclosure Agreement) or NDA (Non-DisclosureAgreement),
CDA / NDA is:
– A legal contract or agreement between a company and a third party (a)that allows the company to share its intellectual property (IP) with thethird party whose input the company needs, and (b) that binds the thirdparty to keep and use the IP confidentially and not to disclose such IP toanyone else without written permission of the company.
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Types of IP Protection Laws
(Invention Secrecy – common to Patent Law and Trade Secret Law cont’d)
Other Steps for Keeping Invention Secret:
(B). Use Employment Agreement Clause:e.g. “During his/her employment, the undersigned shall disclose and assign
to the Company all inventions, discoveries, concepts, developments and
innovations, conceived in whole or in part by the undersigned or through
assistance of the undersigned, directly or indirectly; whether conceived or
developed during working hours or not, which:
(a)Result from company work or any work performed on behalf of Company;
or which
(b)Relate in any manner to the existing or contemplated business of the
Company, or which
(c)Result from the use of the Company's time, material, employees, or
facilities.”
31
Types of IP Protection Laws
(Let’s now take a closer look at Patents and Patent Law – focus of SBIR IP Issues)
Patent Law – for protecting [type (a) IP Inventions :
A patent is a grant for a set period of time made by a government to an
inventor of a claimed aspect of a technology that confers upon that
inventor the right to EXCLUDE all others from making, having made,
using, or selling technology/product with that aspect.
A patent as such is an IP right that can be transferred from one person
or company to another; bought and sold;
assigned; or licensed - exclusively
or non-exclusively.
32
Types of IP Protection Laws
(Patents and Patent Law cont’d)
A patent document is:
(a) physical evidence of a patent grant;
(b) it contains a lot of useful information in different parts and fields [title;
(c) it is stored in and can be searched from searchable databases
[USPTO.gov; Google.com/patents; etc.]33
Types of IP Protection Laws
US Patent Process
(For getting a patent on an invention):1. inventor develops invention;
2. keeps invention confidential/secret – i. e. no public disclosure;
3. files [at USPTO] a Regular Patent Application or first files a ProvisionalPatent application followed by filing Regular application within 12 months;
4. Foreign counter part to be filed? then it must be filed within 12 months;
5. Regular application is published at 18 months, unless PTO is paid not to;
6. Patent Examiner at Patent Office searches for “prior art” or referencesagainst claims, and examines claims of Regular application;
7. if claims are allowed, then a Patent is granted [can be maintained for 20years if periodic maintenance fees are paid], and
8. a patent document is issued on the invention.
The USPTO charges different fees for filing, publication, search,examination, issuance and maintenance. [see USPTO.gov, patent fees].
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Types of IP Protection Laws
(Patents and Patent Law cont’d)
Regular Patent Application:
(a) is a strictly formalized and formatted document that is intended
to graphically and descriptively disclose and claim in its claims
what an inventor regards as his/her invention;
(b) it is filed with the Patent Office;
(c) the same is filed with foreign Patent Offices;
(d) it is examined;
(e) its claims can be amended to arrive at allowable forms thereof;
(f) its contents in the end are the contents of the patent document if
and when a patent is granted on the final examined form of its
claims.
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Types of IP Protection Laws
(Patents and Patent Law cont’d)
Provisional Applications: [US, Utility only]
– Established in 1995 by the US, a provisional patent application islow-cost ($260/$130 = total) vs. ($2,560/$1,280/$640) = filing,searching, examination, issue fees); has a12 month-life; an inventorcan choose to file it first on his/her invention before having to file aregular patent application on the same invention 12 months later.
– The provisional patent application gives the inventor one additionalyear of protection or grace period – which may be enough time totest market his invention before investing in the cost of a regularpatent application.
– Provisional Applications are automatically abandoned one year afterfiling, and the regular utility application filed on any number of themshould claim benefit of their filing dates.
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Types of IP Protection Laws
(Patents and Patent Law cont’d)
Maintenance Fees:
Although the life of patent can be as long as 20 years,
maintenance fees must be paid periodically (3.5, 7.5 and
11.5 years) in order to keep the patent alive or else it
goes abandoned, and therefore unenforceable.
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US Patent Laws – Patent Document
(Patents and Patent Law cont’d)
Parts of a patent document (as we saw earlier, include) :
(1) Front page [Title; Patent Number; Inventor Name; Inventor
(6) Claims [for legal meaning of claims, rely on Patent Attorney and courts].
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US Patent Laws – Patent Document
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US patent Law – Patent Searching
Patent Searching Process:
1. Select a patent document database [USPTO.gov; Google Patents];
2. Search new C, E, X terms from Technology Tree analysis of your invention;
3. Search key inventor/patent/assignee information from your due diligence;
4. In USPTO.gov use QuickSearch and appropriate patent document fields;
5. Identify patent numbers and obtain pdf documents with drawings;
6. Read and study results for applicable relevance.
IP Landscape: When you do due diligence literature and patent searches, you
will find various versions of your product/service that have different Cs, Es
and Xs [per the technology tree analysis]. These various versions form the
technical landscape for your Product/service. Patents covering such various
versions form the IP landscape. Study patents, - terms each patent claims (i. e.
what it excludes others from doing), when it issued, and who owns it. 40
IP Protection – Getting Started (IP Review)
(Given what you now know – what’s next, where do you begin in addressing your IP issues )
(I suggest)
You start with the technical aspects of your innovative product/service;
--- do a “Technology Tree analysis”; develop technical terms for what is “new” in
your product/service;
--- conduct a patent search of such terms, of inventors and of competitors.
– From the patent searching results, answer the following questions: what
were the closest patents found, and what do they tell you; is there already
an existing patent on your product/service?
• If not, have you filed, will you file, a patent application for it?
• If yes, who currently owns that patent [inventor, assignee]?
• if your company does not own it, do you have a license from the
current assignee/owner, - e.g. University ?41
IP Protection – IP Review Cont’d
(So given what you now know – IP wise, where should you be now )
Where should you be?:
Well, you should be :
– You should be at the point where you have done due diligence (literature and
patent) searches on the novelty and innovation of your product .
– You should be at the point where you know the technology landscape and
the IP landscape around your product;
– You should be at the point where you have identified any IP rights on the IP
landscape that you MUST have in order to be allowed to commercialize your
product; and
– You should be at the point where you have decided on a strategy and a plan
for protecting the IP in your product; and
– You should be at the point where you are working with a Patent Lawyer.42
Understanding the Patent Landscape
(Some closing comments)
Blocking Patents; licensing strategy:
1. Your position on the IP landscape MAY force you to adopt a Licensing strategy.
2. For example, if you have invented a run-flat cord arrangement improvement to
radial tires, and have received a patent [B2] on the radial tire improvement, but this
is at a time when Goodyear still has active patents [B1] on radial tires in general,
you should know that you cannot go ahead and start making your B2 patented
improved radial tires without a license on patent B1 from Goodyear.
3. However, also know that Goodyear cannot start
making your improved radial tires without
a license on your patent [B2].
4. The solution to you
and Goodyear is to pursue a Licensing strategy.43
Understanding the Patent Landscape
(Some closing comments cont’d)
“Publish vs. Patent” Tension:
- When it comes to commercialization of University developed inventions,
please recognize that there is a cultural “publish vs. patent” tension between
Academia and the business world.
– Know once an invention is published, you can no longer file a patent
application on it in most jurisdictions around the world, and in the US you only
have a 12 month grace period before you can also no longer be ale to file.
– So please “file before you publish”.
– Also remember that University inventions that are patented and assigned to
the University [even if you are the inventor] must be licensed from the
University.44
Patent Protection Costs
(Some closing comments)
Your SBIR/STTR Project Budget & Patent Costs:
Patent protection costs may/are NOT allowed as an SBIR
project budget item (but patent protection is expected and is
necessary for enabling you to deal favorably with potential
partners/competitors/investors).
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This not Legal Advice
(Some closing comments)
Major Caveat:
This whole presentation is merely an awarenessintroduction to some SBIR/STTR relevant IP information.
It is not intended, and it is clearly not legal advice.
You are strongly advised to seek advice from appropriateIP counsel (trademark, copyright, patent).
46
Conclusions
(In Conclusion)
In order to effectively work with your Patent Lawyer to protect the IP from
your SBIR/STTR project work, you need to:
– be familiar with IP Systems, laws and concepts;
– be familiar with USPTO Helpful IP resources & info for
inventors;
– Understand your invention and take some actions yourself.
The Patent Laws and Process slides in this presentation deliberately
include as well as integrate some of the key IP process terms and
concepts for you.
Patent searching is important and required - you should practice it.47
Bottom Line
IP Protection [is like a Property Boundary] and so it is very important – Obtain it!
No one expects you to become an IP law expert. However, they expect to
know:
– (a) that innovative names of companies and innovative names ofproducts can be protected with trademark law. Again:*(create mark;use & mark it ™; register it; if granted, then use & mark it with ®);
– (c ) that inventions can be protected with trade secret law and Patentlaw *(create; file patent application with USPTO; mark patent pending;mark patented w/No. after patent is granted).