Basic Intellectual Property Concepts

8/3/2019 Basic Intellectual Property Concepts

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Basic Intellectual PropertyBasic Intellectual Property

Jonathan L. TolstedtLicensing Associate/Patent Agent

(NDSU/TTO)


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Purpose of Presentation

general

Basic patent law

Invention rocess

Explain how NDSU handles IP

, ,


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My Background Jonathan Tolstedt

Masters in Computer Science

and software design

Written several patents

Have two endin atents of m own

Adjunct Lecturer for ECE department


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Basic Types of Intellectual Property

Trade SecretsPatents


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Form of protection provided to original works of authorship, bothpublished and unpublished

us e expresse wr en or o er ang e orm

Copyright is automatic, but can be registered

Life of author plus 70 years

Examples:

Documents, Books, Songs

User Manuals, Software Source Code

Web Pages, Sculptures, Paintings

Note about copyrighting source code


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Protect words, names, symbols, sounds, or colors (and smells!) thatdistinguish goods and services from those manufactured or sold by

Can be renewed forever as long as they are being used in commerce


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Sounds, Colors, Shapes, and Smells???

SMELLSSOUNDS

COLORSSHAPES


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Information that companies keep secret to give them an advantage overtheir competitors

Must make an effort to keep secret, must not be disclosed

Protection lasts only as long as secrets are kept

Trade Secret Examples: ecret ormu a or oca o a

Merchandise 7X is the "secret ingredient

Executives who know formula cant fly on the same plane or be left alone

The Colonels Secret Blend of 11 Herbs and Spices

three more locked doors

Samples of the 11 herbs and spices kept, also


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A granted property right that allows inventor to exclude others frommaking, using, offering for sale, or selling the invention throughout theUnited States or im ortin the invention into the United States

Does NOT grant you the right to practice the invention

FULL, enabling disclosure (opposite of trade secret)

20 ears from first filin date


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Patent-like rights for plant breeders Gives breeders exclusive control over new, distinct, uniform, and stable

- -

20 years from issue date of certificate, 25 years for trees and vines

Should not be confused with plant patents which are limited to asexuallyre roduced lants not includin tuber ro a ated lants

However, plants eligible for Plant Variety Protection can also beprotected with a utility patent (not a plant patent)


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Patenting BasicsPatenting Basics


(NDSU/TTO)


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Basic Patent Law

the United States Code (35 USC)

An invention must be useful (35 USC 101)

An invention must be novel (35 USC 102) n nvent on must e non-o v ous

An invention must be fully disclosed (35 USC 112)


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An invention must be useful

Whoever invents or discovers any new and useful process,machine, manufacture, or composition of matter, or any new and

, ,to the conditions and requirements of this title.

Must be man-made anno pa en :

Newly discovered minerals or plants found in nature

Laws of nature or physical phenomena

Abstract ideas Very few patents are rejected as being non-useful


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For example:

Patent 6,293,874 entitled User-operated amusement apparatus forkicking the users buttocks.


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An invention must be novel

The invention must be new Different from anything known previously

known or used by others in US before date of invention

patented or published anywhere in the world before date of invention

in ublic use or on sale in the US more than 1 ear before atent filin date

patented or published by the inventor (or others) anywhere before filing date

not invented by you


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An invention must be non-obvious

The invention must not be obvious Cant be obvious to a person skilled in the art

previously known inventions

There are a lot of novel inventions in the world, but not that many non-obvious ones

Be careful of these assumptions: Ive never seen anything like this before

Patent examiners have access to databases that you dont

No one has anything exactly like this

That invention uses Method X, but we use Method Y (Doctrine of Equivalents)


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An invention must be fully disclosed

35 USC 112 You get 20 years of patent protection is exchange for disclosing

A patent application must have a full, enabling disclosure

Enabling means that a person in the same field of expertise (oneskilled in the arts could make the invention based solel on our atentapplication

You must also disclose the best mode of your invention (the preferredembodiment) cant hold something back from the public


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Anatomy of a Patent

Specification Written descri tion thorou hl describin our invention

and what it takes to implement your invention

Claims (legal language) Define the boundaries of your actual invention

Describe which parts of the specification are new andinventive

Claims are interpreted based on the specification

Claims must be supported by specification


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Types of Patents

Utility Patent- -

Continuation

Design Patent

PCT Applications and Foreign Patents


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Provisional Patent

Not reall a atent more of a laceholder

Established a filing date for the invention Lasts for 12 months

Requires full, enabling specification

Claims are not re uired but a ood idea

Provisional patent is not read by USPTO unless autility patent is filed referencing provisional

Cant introduce new material over provisional


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Utility Patent (Non-Provisional)

function of an invention

improvement thereon

years from first filing date


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Children of a Utility

- - Largely the same as the parent application, but adds in improvements

since the original patent was filed (new matter can be added)

on nua on Same patent specification, but claims can be changed

Used to keep prosecution on an invention open, since you cant makechanges to an issued patent

Divisional

covers more than one distinct invention, they may require you to splitone or more of the inventions off into a divisional application


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Design Patent

Covers the ornamental

design of an inventiononly

oes not care a outfunction, only the looks of

The design of chesspieces, for example

17 years from date ofpatent issue


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Plant Patents

including tuber propagated plants)'

from asexually reproducing, selling, or using

20 years from the date of filing the application


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PCT and Foreign Patents

Must file a atent in each countr se aratel

Most countries do not have a one-year grace periodlike the US

Must file at least a provisional patent before pubicdisclosure to preserve rights in ROW (rest of world)

A single generic application accepted by most countries inthe world

Placeholder that buys more time Still have to file in individual countries


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Patent Timing I was

Potentiall ears of research

once

File a provisional application File a utility application within

12 months

Get first Office Action after 2 to

Respond to Office Action

Get second Office Action

Respond

Final rejection or allowance


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Things to Know During theThings to Know During the


(NDSU/TTO)


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Document Everything

Best bet is an invention notebook

Pre-printed page numbers

Document the entire process in the notebook How conceived? Where conceived? What circumstances?

Dumb ideas

Description should be enabling

Get the notebook pages witnessed andsi ned At least two witnesses, sign and date that they have read and

understood

A notary public is even better (for key ideas)


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Know the Prior Art

Any existing information that may affect theatentabilit of our invention

Patent applications and publications

Magazine articles and websites Masters and Doctoral Theses

Technical papers and abstracts

Student presentations and design competitions


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Patent Searching

than most, ,

and after research

Can help define your research/invention

Look at patents, web pages, periodicals, etc.


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Patent Searching Tools (for free)

www.uspto.gov

Easy PDF versions of any published application or issued patent

www.wipo.org World Intellectual Pro ert Or anization PCT patents (Patent Cooperation Treaty)

www.epo.org European Patent Office

www.jpo.go.jp Japan Patent Office

www. at2 df.or If you know the patent number, fetches patent and converts to PDF format

www.google.com (non-patent searching)


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Beware of Public Disclosures

Talkin to someone about our invention without aconfidentiality agreement in place might be a publicdisclosure

protection is in place, you may immediately lose

foreign patent rights The United States currently has a one-year grace

period after a disclosure

presenting, publishing, or sharing information withparticipants in a meeting


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Examples of Public Disclosures

your thesis or dissertation Discussin it with otential customers without a

confidentiality agreement in place

Technical a er resentation or abstractpublication

Student design competition or student

presentation An offer for sale or license of an invention


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An Enabling Disclosure

someone skilled in the arts could reproducethe invention from the disclosure alonewithout undue experimentation.

public, enabling disclosure

warp the fabric of time-space, is likely anenablin disclosure


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Inventorship vs. Ownership

contributed to even one claim on a patent

Which inventors listed on a patent could change

Inventorship determined on a claim-by-claim basis

Ownership CAN change Patents are property, just like real estate

Inventions made with NDSU resources must be assigned to NDSU(according to state law)


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Inventorship vs. Authorship

authorship, not inventorship,

Writing a paper on an invention does not

Publishing is very important

ee o e aware o ow a ec s r g s


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Who is an inventor?

Contributed to at least one claim Can be a co-inventor

All co-inventors have the same rights, regardless of amount ofcontribution

an ma e a ega agreemen o c ange r g s

Person who suggests a result (but not the means) is

not an inventor Person working under direction and control of

another is not an inventor Your boss or someone resent in the room are not

automatically inventors Legal issue determined by patent attorney/agent


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The Technology TransferThe Technology Transfer


(NDSU/TTO)


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NDSU Policies on IP

NDSU Policy Section 190 (http://www.ndsu.nodak.edu/policy/190.htm)

Policy and practices set by North Dakota StateBoard of Higher EducationThe Institution shall have the right of first refusal to the title of all

patentable discoveries derived with the use of facilities, gifts, grants, or

contract funds through the university

m ar o e po c es o mos compan es nindustry you are the inventor, but they are theowner.

Actually BETTER than most corporate policies:you get 30% of any net revenue.


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The Bayh-Dole Act of 1980

Gave US universities small businesses and non-

profits intellectual property control of their inventionsand other intellectual property that resulted fromgovernment un ng.

Previously, the government automatically got title to

used. Now, universities can claim title.

Universities must share revenue with the inventors

and give preference to US industry and smallbusiness.


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The Invention Process at NDSU

. Form located at http://www.ndsu.nodak.edu/research/tech_transfer/forms.php

Dont hold back information. Disclosing to the TTO is not a public disclosure.

You will not lose an ri hts b disclosin to the TTO.

Report before a public disclosure to retain all of your rights.

Invention is evaluated by TTO (see nextslide)

Based on evaluation, invention can be: Protected by a patent or similar form of IP protection

Waived to the government (inventors can petition for title)

Returned to inventor if no government funding


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Evaluating Inventions

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Patentability Prior art search is done

Invention is evaluated to see if it is useful, novel, and non-obvious

Market Potential,

If market is very small, may not justify the expense of patent costs

If the invention does not meet one or both of

these criteria, that does NOT mean the ideais not good


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NDSU Research Foundation

Research Foundation (NDSU/RF)- -,

tasked with commercializing the technologies

does all of the marketing and licensing of


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Benefits of the NDSU TTO and RF

,

all patent costs (which are considerable) The office activel markets invention to industr

The goal of the office is to license the technology

to industr If a license is completed, 30% of net revenue

from license goes to inventors, and 40% goes

back to the inventors department (to encourageand support new research)


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What About Starting aWhat About Starting a


(NDSU/TTO)


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Be Informed and Prepared

Need to strive for a platform technology,

Need to obtain funding (probably more than

Need to understand the IP issues

ee o e very pers s en , very pa en , anvery open to criticism and set-backs

l


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Business Plan Tips

Detailed Financial Anal sis with lots of back u data isessential How much money required to invest?

How lon till investment is aid back?

What will the operating costs be?

What capital equipment is needed? Maintenance of equipment?

Detailed Market Anal sis Who will your customers be? Who are the primary competitors?

Why is your product better than the existing?

Will you be able to displace existing technologies? Even if your product is betterthan existing, there is still a cost for your customers to make the switch.

What percent of existing market can you capture? How will you capture it?

i Pl Ti


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Business Plan Tips

Detailed Product/Technical Analysis

Have prototypes been developed?

What are its pros and cons when compared to existing?

How much will it cost? Will there be licensin costs involved?

Detailed Operating Plan Who will manage the company?

Are there certifications or registrations involved?

What type of company will it be (c-corp, s-corp, LLC, sole proprietorship, etc.)?

convince someone else to invest in your company. You should do this to convince YOURSELF first.

D li i h NDSU/RF IP


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Dealing with NDSU/RF IP

NDSU/RF-owned invention.

NDSU/RF.

business plan in place.

license deal.


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Bison VenturesBison Ventures


(NDSU/TTO)

Bi V


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Bison Ventures

, ,

economic development process

Architecture

,the TTO and NDSU Research Foundation,

Incubator

Bi V G l


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Bison Ventures Goals

Focus engineering education on innovation and discovery

Develo en ineerin raduates skills in roduct develo mentproject management, soft-skills, business concepts, and

global perspectives for successful entry into a globalmarket lace

Improve our regions technological and economiccompetiveness in the global economy by leveraging

agreements and high-tech spin-off companies.

Provide funding and company ownership incentives to facultyan stu ents or nnovat on act v ty

Provide investors with information about new technologyinnovations

Bi V P


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Bison Ventures Process Innovations are conceptualized by faculty, students, and outside

sponsors

Commercial viability of innovation concepts are evaluated by BisonVentures Board of Directors (BVBD) and concepts with high commercial

Concepts are reduced to practice by innovation team and inventionreports are filed with the Tech Transfer Office

,the technology themselves and form a corporation (spin-off), orNDSU/RF can out-license the technology to an external company

Incor orated teams s in-off com anies ma resent to investors at an

Investment Conference Incorporated teams may elect to move into the NDSU Research Parks

Technology Incubator

Bi V t d IP


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Bison Ventures and IP

Both product and business plan should bedevelo ed in detail and in arallel Without a business plan, wont be able to convince investors or

IP-owners

,IP rights and/or not convince investors

Avoid public disclosures (seek confidentiality

agreements with non-team members beforedisclosing) unless IP is fully protected

Contact Information


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Contact Information

Jonathan Tolstedt

NDSU Technology Transfer Office

(701) 231-8173

[email protected]