Technology Commercialization

Patent & Copyrights Tutorial

What should a university researcher know about patent law?

Tutorial Content Sources
Content within this module describing or referring to elements of invention or copyright protection under U.S.USPTO logo intellectual property law has been derived primarily from web-based publications produced and maintained by the U.S. Patent & Trademark Office (USPTO).

NOTE: As a university-based researcher, your primary source of guidance regarding intellectual property management should be the policies and procedures established by your university’s technology transfer office.

Patent Basics
A patent, as defined by the U.S. Patent & Trademark Office (USPTO), is a property right granted by the United States government to you as an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States for a specified and limited time”. This is done in exchange for disclosing the invention to the public.

The level of the description of your patent must be such that, anyone with ordinary skills in the field of application of the invention should be able to reproduce it and make it work as intended. The invention can be a device, a method or a system for making things, a process for new materials, etc. Physically, a patent is a document stating the granted exclusion privileges for your invention.

The privilege granted by a patent is very specific:

A patent gives you the “right to exclude” others from exploiting the invention. Assuming that you have a clear path to exploit your invention, a patent gives you the exclusive rights to do so.

The duration of a patent grant is generally 20 years from the date on which the application for the patent was filed in the United States or, if the application has a specific reference to an earlier filed application, from the date of the earliest application filing. After that time has passed, anyone can exploit the expired patent’s invention without permission of the patentee.

Another point that must be clarified is that the office granting patents (the USPTO) does not enforce non-infringement of your patent. You will need to resolve any case of infringement in court.

A non-provisional, or “full” patent, application incorporates several sections: background, summary, drawings, claims, etc. The list of claims is the focal point of your application and defines the scope of the ideas that you are claiming as your own intellectual property. The claims need to be carefully drafted to ensure maximum coverage and protection. It should be worked with the aid of a patent attorney or agent.

The requirements for writing a patent application can be browsed in the USPTO General Information Section.

What steps are required to submit a patent application?

UC San Diego Office of Innovation & Commercialization will decide whether and when to file, and will hire a patent attorney to complete the process. You will need to supplyUCSD Tech Transfer the attorney with the basic facts about your invention and be available for any clarification he/she may need. At some point you will need to sign the Oath or Declaration. A patent application in the U.S. is subject to the payment of a basic fee and additional fees that include search, examination, and issue fees.

What follows the application for a patent?

After examination by the patent examiner at the USPTO, a written decision called an “Office Action” is sent to you or your patent attorney. If there are any objections or adverse actions to your application, they will be stated in this correspondence.stock-photo-687213-patent-pending

Useful tip: You can follow the status of your published application (actions, correspondence with the attorney, fees, etc.) with the USPTO via the Public Patent Application Information Retrieval (PAIR).

How do I know that my application has been granted?

If the examination of your patent application results in a granted patent, you or your agent will receive a “Notice of Allowance and Fees Due”

What is the meaning and value of ”provisional” patent applications?

Provisional Application for Patent (PAP)
As a university researcher, there may be instances where it is difficult to avoid disclosing your invention prior to filing for a full patent.  You may have an opportunity for a rapid publication, or want to disclose your work at a conference. For this case, the USPTO makes available the “provisional” patent filing mechanism.

A "Provisional" filing preserves the opportunity to establish an early effective filing date...

The PAP process also preserves the ability to gain both foreign and U.S. patent rights through an application that contains only a limited number of essential parts.

Within the university environment, a provisional application typically costs $1,500 – $3,000 and gives you a year to decide whether to pursue that next step. You can also use the term “Patent Pending” with a provisional application.

In a PAP, neither the claims nor an Oath or Declaration are required, but the application needs to include, in addition to the description of your invention, a description of the problem being solved, along with the weaknesses you believe exist with current solutions. Drawings may be included at this stage to clarify the invention. The applicant then has up to 12 months to file a non-provisional application.

CAUTION:  In the new era (for the U.S.) of “first to file” patent laws, the PAP option can be quite valuable.  However, inventors must be aware of the limitations. For example, the PAP cannot secure your priority date iiStock_000054442116_Mediumf it is subsequently determined not to have been adequately “enabling”. In other words, the priority date that is being preserved is relative only to what is actually disclosed in the PAP (and which, of course, is also novel and non-obvious — i.e., claimable). If you later discover that something in your PAP was incorrect, or additional information should be provided, notify your Licensing Officer.  You may be advised to file a second PAP. Your subsequent full patent application can reference as many provisional applications as you’ve filed for that invention, but still must be filed within 12 months of the PAP whose priority date you intend to use.

In the university scenario, invention disclosures are often submitted to tech transfer offices with very little time allowed for preparation of the PAP prior to a planned public disclosure...

Inventors should take the PAP process seriously, beginning with the timing of the invention disclosure to the tech transfer office.  Furthermore, you should not rely upon others involved in the process to assure that the PAP adequately describes the invention and supports “claims” intended for subsequent full patent applications.

What are the rules and criteria for patent establishment?

The essential element for establishing a patent is an invention. Simply put, an invention is a new process or method for making things, a new idea for a device, a novel manufacturing process, a design, a new material or chemical compound, or any useful improvements of the above.

When applying for protection of your invention via a patent:

Keep in mind that your invention must be “…novel, non-obvious, and adequately described or enabled for one of ordinary skill in the art to make and use the invention”.

A significant effort in writing your patent application is therefore devoted to describing the novel aspects of your invention and establishing its non-obviousness. Furthermore, through a patent’s description you are, in effect, teaching others how to build and make good use of it to solve a problem.

The idea in an invention must have the full potential of being reduced to practice. In fact, it is a requirement to specify in a patent application the preferable or “best mode” of reducing the invention to practice, as evidence that the applicant has thought carefully about how to utilize the invention.

The definition that the USPTO uses for “inventor” is specific, and you must be able to distinguish between individuals that (notwithstanding the importance of their efforts in developing a new product) are truly the inventors, and those that are not. Failure to list the proper inventors in an application can delay a positive outcome and even invalidate it later on.

According to the USPTO, an inventor is a person who contributed to the origin or conception of an invention, but he/she is not required to reduce the idea to practice.

NOTE: Universities typically will not file an application for a patent if the invention has not been adequately “enabled” through some level of prototyping and potential “claims” development, and may only consider co-inventors as those who have contributed to at least one potential claim in the application.

Areas of Potential Confusion Regarding Inventorship

Confusion around inventorship commonly occurs in a laboratory setting where non-inventors, under direction of inventors, subsequently contribute to the development of an invention through their prototyping involvement...

As valuable as this contribution is toward demonstration of feasibility, it does not qualify those individuals to be listed as inventors.

NOTE: On the other hand, it is not uncommon for individuals involved in prototype development to generate new ideas that significantly improve upon the original invention. If such improvement(s) result in new or enhanced patent claims, such individuals may qualify as inventors.

This latter concept should be considered before collaborations are initiated between companies and universities. For example if during the development of a technology, a university member adds new claims to the original invention, thus becoming an inventor in the application (joint inventor), the university may automatically assert claim to the invention. The solution is to anticipate and formally agree beforehand on what terms will be applied for assigning ownership of the IP generated during a planned collaboration. The various forms of ownership of a patent are discussed later in this section.

Similarly, an individual who only facilitated materials or facilities for work that resulted in an invention, or who only provided financial aid for the same purpose, is not an inventor. Ultimately, a person should have contributed to at least one claim in the patent application in order to be listed as an inventor.

As to the nature of who can apply for a patent, any person who invents something within the above-mentioned criteria may obtain a patent. A patent application by an individual is a common scenario for startups based on inventions from one or more of its founders. When the invention is conceived by individuals working for a company, a public institution (university or federal laboratory) or other entity, the application is submitted by the institution on behalf of the inventors listed.

Who owns a patent?

Patent Assignment
While the list of inventors includes only the individuals that contributed to the conception of an invention, the ownership of patent rights depends on any agreements that the inventor(s) may have with other parties in relation to the invention. One common example is where employees are required to “assign” the rights for inventions to the employer, as part of their employment agreement. [Such is the case with all inventions of employees within the University of California.]

A patent assignment provides legal protection for the assignee regarding attempts by others to use, manufacture or sell a product consisting of intellectual property covered by the patent. The assignee may, however, allow someone else to use the patent rights through a licensing agreement.

If you are a university or federal lab researcher...

Your inventions in your area of research will likely be assigned to your institution.  In rare cases, inventions may be waived or released based upon such factors as facilities usage, scope of employment, or state labor laws.

Stipulations of this nature are likely included in the employment agreement you signed when you joined the institution. The same may apply if you are a student, visiting scholar, etc. using the university’s resources for your work. However, policies regarding ownership are not uniform across institutions, and you should seek clarification from your office handling intellectual property matters.

Intellectual property may also be assigned to an entity financing or sponsoring the development that results in an invention. One example is “work-for-hire”, where the hiring entity may own the intellectual property created by an engineer as part of their contract assignment. With regard to sponsored research collaborations, some universities agree to define in advance when ownership of the intellectual property generated during the research work may be assigned to the sponsor. [Such agreements are typically not offered by the University of California.]

How do agreements affect ownership of IP?

When an invention arises from work carried out at a single institution or company, the assignment of patent rights is usually straightforward, where the employer retains the right to the intellectual property of the employee inventor(s).

For the specific case of universities doing company-sponsored research, the property may be assigned completely to the university, to the sponsor, or Patent license agreementsome joint ownership scheme, depending on how much of the university’s resources were used during the sponsored work, and how much the sponsoring party invested in it. The precise nature of the assignment is negotiated beforehand. A sponsor can still benefit from the collaboration with a university by obtaining a licensing grant, a licensing option, or right of first refusal. For the specific rules of UC San Diego in this respect, consult the Office of Innovation & Commercialization.

Why is it important to establish “prior art”?

As of March 16, 2013, the USPTO joined the rest of the world in defining prior art as that existing when a patent was filed. The term refers to all technology relevant to an invention that was already publicly available (through a publication, or offered for sale) at the time a patent application was filed. This is discussed in more detail later in this section under Recent Changes in U.S. Patent Law.

It is advisable that you, the inventor, conduct a preliminary prior art search for yourself...

Before engaging a patent attorney, expose yourself to all the existing ideas in the field being addressed, in order to learn whether someone else has already come up with something similar to your idea. Later, as your concepts for an invention mature, it would be prudent to seek the assistance of a patent attorney.

How is a prior art search conducted?

UCSD GeiselPrior art is identified by performing a search through sources such as patent databases, published patent applications, non-patent literature (journals, books, academic publications, product literature, products for sale or in public use, and internet documents). The search should also include expired and abandoned patents, as well as international patents. It should be conducted in a systematic manner.

When searching a database, such as the USPTO or Google Patent Search, yougoogle image have the option to search either by keyword or by U.S. Patent Classification. Rather than using only one approach, it is advantageous to use a combination of both in iterations, until a set of patents that best match your invention’s features is found. At that stage, each patent must be examined carefully in its drawings and claims, to assess the originality of your own invention.

It is recommended that you work through a tutorial on conducting a preliminary patent search, such as that available at this USPTO website.

For a hands-on, interactive patent search tutorial with concrete examples, visit the University of Texas’ McKinney Engineering Library’s website.

More information on conducting a prior art search is found here.

What is “freedom to operate” ─ why is it relevant?

In addition to patentability, your invention must also have “Freedom to Operate” (FTO), in order to have a clear path towards commercialization. FTO means that the invention does not have features covered in other patents still in force.

For example:

A device may have a new feature that is patentable, but could be limited in its use because it has other features protected by other patents still in force. In this case, you would need to negotiate a license from such patent owners in order to fully exploit your own invention.

Even in the case where consideration is being made to license intellectual property from an outside party (e.g., a university or federal lab), it is standard practice to conduct a thorough investigation to ensure that the patent is not limited in its use, or potentially infringing on some other patent.

What types of patents are issued by the USPTO?

Utility Patents
Utility patents are the predominant type of patent applicable to most technologies. Utility patents are granted to anyone who invents or discovers “any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof “. The expiration term for utility patents is 20 years from their application filing.

Design Patents
Design patents are granted for the protection of the appearance or “look” of an article. They do not protect the underlying structures or functionality of the article. An example is the design and decorations on adhesive bandages, containers for over-the-counter consumer products, etc. The expiration term for a design patent is 14 years from the date of grant. In the USPTO classification, design patents are identified by the letter “D” preceding a class number. Note that a manufactured article typically has both working and ornamental characteristics.

For more information on the types of patents issued by the USPTO, go here.

For additional information on design patents, go here.

What significant changes occurred with America Invents Act?

America Invents Act – Summary of Changes:

The new law adopted a first-to-file system (now in harmony with the rest of the world), replacing the previous first-to-invent system.

New patent applications are now given an effective filing date, and patentability will be assessed based on whether any prior art was available before that date. The effective filing date is either the filing date of the earliest application to which the current application can claim a priority benefit, or the actual date of filing of the application.

The new law also introduced the implementation of a “post-grant review”, which is now available when there is a challenge, by third parties, to the patentability of at least one of the claims. The patent owner cannot file such a request.

On the patent owner’s side, a new Supplemental Examination Proceeding provides an additional means for a patent owner to reopen examination of a granted patent. Only the patent owner can request a supplemental examination of a granted patent.

For a summary of the main changes in the U.S. patent law that resulted from the America Invents Act, see here and here for examples.


What can be protected with a Copyright?

Copyright is a form of protection provided by U.S. law to the authors of "original works of authorship" fixed in any tangible medium of expression...

According to the USPTO, the manner and medium of fixing or recording the work can take any form.

Copyright Protection
Even though your main intellectual property may be in the form of patents, any software used to interface, operate, acquire data or analyze output from a device can be protected under copyright.

Any creative work as captured in words, numbers, notes, sounds, pictgold-copyright-symbolures, computer software, architectural blueprints, maps or any other graphic or symbolic media can be protected. Copyright protection is available to both published and unpublished works. Technically, copyright ownership occurs as it is created, but only the author (or those getting their rights through the author) can rightfully claim the ownership. Registration with the Copyright Office provides you with important advantages, such as making others aware of your ownership of the mark. It is also needed before filing an infringement suit in court.

What rights does a Copyright grant confer?

As a copyright owner you have the exclusive right to reproduce, modify, distribute, and publicly display your work. It also allows you to transfer, sell or license your right to others.

An important example relevant to the field of medical technology is software utilized to control, acquire, analyze and report results from a device: the software is typically licensed to the end user and delivered as part of a device (e.g., ultrasound diagnostic system, NMR imaging system, etc.). An example common in another area of high technology is that of patterns of microstructures fixed on a substrate, or the mask utilized to create such a pattern (as in photolithography, nano and microstructures for molecular analysis, nano-fluidics, etc.)

In contrast to other intellectual property, there are some limitations in copyright, referred to as the “fair use” doctrine: a judge may excuse unauthorized use when such use is for the purpose of criticism, comment, news reporting, teaching, scholarship, and research.

How is copyright claimed in the case of “work for hire”?

In the case of works made for hire, the employer, and not the employee, is considered to be the author. The Copyright Law defines a “work made for hire” as a work prepared by an employee as part of their employment, or a work specially ordered or commissioned.

How is software protected under copyright law?

Software code is protected under copyright law as an original work of authorship. Copyright protection arises automatically from the act of fixation of a work onto a tangible medium (magnetic, optical, solid state or any other media).

NOTE: Copyright protection cannot be used to prevent the use by others of the functional aspects of software.

That is, somebody else can have a copyright for software that accomplishes the same function as your software, as long as it was written independently and uses its own code.

Note that copyright is not the only means to protect software. You can also use patents to protect processes implemented in the software. The inventor of the process must apply for protection and go through an examination process, as previously described in the patents sections.

For more review of copyright law, visit USPTO Copyright Basics.

About The Proof of Concept Institute, Inc.

The Proof of Concept Institute, Inc. is a California 501(c) (3) non-profit corporation, whose mission is to develop educational materials and programs for research scientists, clinicians, and engineers that will facilitate more efficient transfer of public-funded (university and federal laboratory) technology and intellectual property to the private sector, where products and services can be developed for the common good and to support U.S. global competitiveness.


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