Cuyamaca College
Environmental Technology Program
Protecting Intellectual Property
Intellectual property usually refers to ideas or creative concepts that belong to the creator. Intellectual property rights can be bought and sold, leased or rented, or transferred between parties in the same way that rights to real estate or other personal property can be transferred.
The development and transfer of intellectual property are important components of the technology transfer process. The private sector is interested in commercializing technologies with sufficient intellectual property protection to justify its investments in the technologies. The inventor, the Federal laboratory, and private sector partners all gain through the protection and transfer of intellectual property.
In the United States, intellectual property is protected in a variety of ways. The four most common types of protection are patents, copyrights, trade secrets, and trademarks or service marks.
Patents
Patents can cover products and the processes for making those products, provided they are unique. Improvements to existing products or processes may also be patented. The patent has two basic purposes: to protect the inventor and to promote the advancement of technology. Patents fall into the following four classes:
(1) Process. Any method of achieving a physical or chemical change in the character or condition of an object.
(2) Machine. Any apparatus or mechanical device with parts that function in conjunction with one another.
(3) Manufacture. All articles that are manufactured or made.
(4) Composition of matter. Includes chemical compounds or mixtures of substances that have properties different from those of the individual ingredients.
To have value, an invention must be protected, the ownership of the invention must be established, and the product must be commercialized for wide usage. Establishing ownership is done through invention disclosures, followed by patent applications and patenting. Filing a patent application protects the invention.
In the United States, the inventor has a one-year grace period to file a patent application after the invention is described in a U.S. or foreign publication or is placed in public use or on sale in the United States. (In most foreign countries, any public disclosure prior to filing a patent application will prevent the inventor from obtaining a patent.) The transfer to the commercial marketplace is usually accomplished through the licensing of an invention to a commercial or private enterprise.
Licensing is the transfer of less-than-full rights in intellectual property to a third party, to permit the third party to use the intellectual property. From a business point of view, you can think of intellectual property as real property, like a piece of real estate or a car. You can buy or sell, lease or rent, or transfer it between parties. The rights to use and exploit intellectual property can move between business entities. Most often, intellectual property is transferred through licenses and contracts.
A license provides the licensee with the right to use the technology within negotiated fields of use and protection from infringement by other users if an exclusive license if granted. Licensing agreements are negotiated between parties and can be tailored to meet the needs of both parties. Licensing agreements may be exclusive or nonexclusive.
Nonexclusive licenses are offered so several parties can be granted the rights to use the same intellectual property. Most commercial software licenses, for example, are granted on a nonexclusive basis. Nonexclusive licenses are generally granted when the technology does not involve a great deal of further investment on the part of the licensee. The cost of a nonexclusive license is often lower than the cost of an exclusive license.
With an exclusive license, a party is given exclusive access to particular intellectual property. Generally, an exclusive license is granted where substantial investment is required on the part of the investor to bring the product to market. Exclusivity can be limited in a variety of ways, however. Often an exclusive license is granted for a particular field of use or geographical area, for a limited period of time, or for U.S. or foreign usage. This allows the licenser to provide needed exclusivity to multiple licensees.
The licensing strategy must be integrated into the commercialization plan. Developing a strategy prior to starting work ensures that the right industry, or the most advantageous party within a given industry, has been selected. If a rapid source of income is the most important strategic element, an industrial group that is willing to make an up-front investment should be approached. To obtain an up-front investment, it might be necessary to give away more rights than waiting to reap benefits in later years.
A patent is an agreement between the government and the inventor whereby, in exchange for the inventor's complete disclosure of the invention, the government gives the inventor the right to exclude others from making, using, or selling the invention for a period of 17 years. The recently enacted General Agreement on Tariffs and Trade will extend protection to 20 years as of June 1995.
One cannot patent the use of laws of nature, physical phenomena, abstract ideas, mathematical laws, or plants in the wild. Also, a U.S. patent will not be granted for a product or process that has been publicly disclosed for more than one year. Any public disclosure may preclude foreign patent application.
Often, software is protected through copyrights, which do not protect the idea, but the expression of the idea. Certain types of software can be patented, and it may be preferable in certain situations for software to receive both copyright and patent protection. For example, some expert systems have been patented. One can also patent software that controls hardware. However, one cannot patent an algorithm to perform mathematical functions or operations in software.
Some Federal laboratories have additional incentives for inventors, such as cash awards for filing patent applications. The government retains a nonexclusive, royalty-free license to any invention generated with government funds or at government facilities to be used for government purposes.
The United States awards a patent based on who is first to invent, while nearly every other country awards a patent based on who is first to file an application. The U.S. system, while designed to protect the inventor who may lack the financial backing to file an application promptly, is not shared by other industrialized countries.
In the United States, the patent application must be filed within one year of public disclosure. However, it is advisable to file a patent application before the invention is publicized in any way, and to seek assistance as early as possible from the appropriate patent counsel if the research results may be patentable.
Patent applications are submitted to the U.S. Patent and Trademark Office for consideration. Patent applications are examined by the Patent and Trademark Office to determine whether the application meets the statutory requirements of adequate disclosure, the claims of the patent are fully supported, and the claimed invention is unique. The patent application process normally takes about two years between filing the application and the issuance of a patent.
Copyrights
Copyrights protect ideas or creative concepts that are produced in tangible forms: writing, music, sculpture, computer software, graphs, and drawings. For a work to be copyrightable, it must be an original documented in any tangible form including printouts, computer code, computer chips, and photographs.
Copyrights provide exclusive rights granted by the U.S. government to authors, composers, artists, or their assignees. A copyright is used to prevent others from reproducing, distributing, performing or displaying publicly, or preparing derivative works without permission of the author. Copyrights are granted for the life of the author or 50 years, whichever is greater.
A copyright exists when a work is created. While the law no longer requires the work to be marked with a copyright notice, it is still a good idea to do so. Registration of the copyright permits prosecution of infringers and provides certain mandatory Federal damages against those who infringe. Registration is recommended if the work is to be the subject of a license agreement.
By law, the government cannot obtain copyright protection for any works of the government. However, the government is not precluded from receiving and holding copyrights obtained by government employees. Federal laboratories and facilities have procedures to assist their employees in seeking copyright protection. Registration of a copyright with the U.S. Copyright Office is a relatively simple and inexpensive process.
Trade Secrets
A trade secret is a type of protection for intellectual property that gives the holder the right to control the intellectual property as long as information about it remains a secret. The formula for Coca-Cola is one of the most famous applications of this form of intellectual property protection. In contrast to a patent, whereby in exchange for full disclosure about the intellectual property, an inventor receives the right to exclude others from making, using, or selling the invention, trade secrets rely on NOT disclosing information about the intellectual property. Trade secret protection does not prevent someone from reverse-engineering the product to come up with a similar product. Commercial information, formulas, devices, patterns, or processes that are substantial or valuable may be protected as trade secrets.
Trademarks or Service Marks
A trademark is a word, name, symbol, or any combination of these elements, that is used to identify goods. A service mark is similar to a trademark, but is used to identify services rather than goods. They imply that the seller has exercised some standards of quality associated with the goods or services covered by the trademark or service mark. A mark provides some protection for its owner from those who would attempt to trade on the goodwill and recognition established by use of the same or a similar mark.
Rights to a trademark or service mark are established by using it in interstate commerce or by following the intention to use the provisions. Trademarks are registered with the U.S. Patent and Trademark Office.
Nondisclosure Agreements
Nondisclosure agreements are used to protect shared information such as trade secrets, or to ensure that future intellectual property protection can be obtained. Researchers who seek intellectual property protection for any aspect of their work should use nondisclosure agreements when discussing their work with others. Use of nondisclosure agreements protects the rights of ownership because parties sharing information agree in writing to protect its confidentiality.
Individuals who divulge proprietary information improperly may be subject to criminal prosecution. All participants should be requested to sign nondisclosure agreements, as well as a statement of the appropriate marking and identification of proprietary information that is to be protected.
One of the main reasons it is important for Federal laboratories and production facilities personnel to adequately protect intellectual property is that intellectual property has value to others and can be transferred to other parties for commercialization purposes. Generally, a private sector partner will not be interested in making the financial investment necessary to bring a product or service to market unless the intellectual property is adequately protected.
 |
 Last update 05/12/98 by Cuyamaca Web Team |