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Intellectual Property Basics and WARF’s Disclosure Process

Leah Haman Intellectual Property Associate

March 3, 2015

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Intellectual Property

• Intellectual property (IP) refers to creations of the mind

•  Inventions •  Designs •  Literary and artistic works •  Symbols, names and images

• IP is protected by law - owners are granted certain exclusive rights to these assets


Why is Intellectual Property Important?

• Competitive advantage • Exclusivity provides a justification for research and development spending and motivation to invest in the development of innovative ideas (risk/reward) •  Without protecting IP, competitors can use it and do not

have to recoup the R&D investment • Especially valuable for start-ups

•  Can be critical in attracting venture capital (VC) •  An important part of a company’s valuation •  Importance can vary by industry


Forms of IP Protection

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PatentsMachinesanddevices

CompoundsProcessesandmethodsImprovementsonanyof

theabove

TrademarksWordsandphrases

ColorsPicturesorlogos

Sound

CopyrightsLiteraryworksWebpages

So@wareprograms


Patents


What is a patent?

• A grant of a property right to the inventor • The patent gives the patent owner the right to exclude others from practicing the patented invention. •  Making •  Using •  Selling •  Offering to sell •  Importing


Patent Types

• Utility • Provisional

• Plant • Design

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Utility Patents

• What can be patented? • Machines and devices • Compounds • Processes and methods •  Improvements

• Parts of a patent application: • Specification • Drawings • Claims*

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Example Claim

What is Claimed is: 1. An electronic device, comprising: • a fingerprint sensor having conductive structures and having fingerprint sensor circuitry that is configured to gather fingerprint data with the conductive structures;

• And near field communications circuitry that is coupled to the conductive structures and that is configured to receive near field communications signals with the conductive structures.

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Drawing of Previous Claim

Title:ElectronicDevicewithSharedNearFieldCommunica?onsandSensorStructuresUSapplica?on#:13/409,615Assignee:AppleComputer,Inc.Inventors:BenjaminPope,DanielJarvis,NicholasMerz,ScoTMyersFilingDate:January3,2012


Patent Prosecution

• Process for obtaining a patent carried out between inventors or patent attorneys or patent agents and the United States Patent and Trademark Office (USPTO)

• Examiner at USPTO evaluates the patents • Can take years


Patent Examination

Application assigned to an

examiner

Examiner searches for prior

art

Examiner applies tests for novelty, non-obviousness

and utility

Initial rejections of some or all claims are common

Office action

spells out issues that need to be

addressed

Arguments to persuade the examiner that

the prior art was incorrectly

applied

Claims may be amended to

further distinguish the invention from

the prior art

Examiner reviews

arguments and/or amendments

If arguments are

persuasive, claims may be allowed or new rejections may

be made

Applicants can respond if only

minor amendments are

needed

Otherwise, a request for continued

examination or an appeal can be

filed

Congratulations!

Claims are allowable and the patent can

issue

Issue and publication fees

are paid


Statutory Requirements

• Utility/Novel/Non-obvious

• Claims are definite and appropriate written description

• Specification enables the practice of the invention and discloses best mode


Invention must be “New”

• Novelty: each element of the claim cannot be contained in a single, enabling, fully anticipatory reference

• Cannot be over one year since publically disclosed by the inventor (US only)


Invention must be “Non-Obvious”

• Different than novelty because it applies when an invention is not identically disclosed

• Invention is non-obvious when a Person Having Ordinary Skill In The Art would not find the invention obvious


Prior Art

• Evaluate prior art to determine if invention is novel and non-obvious

• Public “references” created before the filing date of the patent include

• Patents • Publications • Poster presentations • Open thesis defense • Thesis catalog • Abstracts for conferences • Grant applications posted online once funded


Leahy-Smith America Invents Act (AIA)

• U.S. is a “first inventor to file” system • Actions and prior art that bar patentability include public use, sales, publications, and other disclosures available to the public as of the filing date •  One year grace period for inventor •  Intervening art concerns

• Filing before a public disclosure can provide stronger patent protection

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Patents in the Rest of the World

• The Patent Cooperation Treaty • Special uniform application procedure to simplify

multinational patent acquisition

• File PCT application

• “Nationalize” the application by selecting countries to prosecute the application in


Copyrights


Copyrights

•  Copyrights protect an EXPRESSION of an idea •  Gives protection to authors of “original works of

authorship” •  Copyright encourages creative efforts by

securing the exclusive right to reproduce works and derive income from them


Copyrightable Subject Matter

• Literary works • Musical works • Dramatic works • Pictorial, graphic and sculptural works

• Web pages

• Software and computer programs

• Mask works and semiconductor chips

• Architectural works • Motion pictures and other audiovisual works

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Obtaining Copyright Protection

•  Copyright is created automatically once an original effort has begun and it has been fixed in a tangible medium

•  Registration is not required (but recommended) - Additional protection and notice to potential infringers - Simple and inexpensive - Symbol, year, author

•  Works created on or after January 1, 1978 •  Life of the author plus 70 years •  Work-for-Hire: earlier of 95 years from publication or

120 years from creation


Trademarks


Trademarks

• A word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods or services of one party from those of others

• Why have trademarks?


WARF’s Disclosure Process

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WARF Overview

• An independent, tax exempt, nonprofit, supporting organization for UW-Madison and Morgridge Institute for Research (MIR)

• WARF’s Mission: To support scientific research at UW-Madison and MIR by:

•  Moving inventions into the community •  Investing licensing proceeds to help fund further research

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ConceiveandstarttodevelopyourideaforanewtechnologyoranimprovementtoanexisWngtechnology.

Research and Discovery


MakeyourinvenWonknowntoWARF.q  SubmitanInvenWonDisclosureReport.

q MeetwithaWARFIntellectualPropertyManager.q  ExplainyourinvenWontoWARF.

Invention Disclosure


TheWARFDisclosureCommiTeeassessesyouridea.q  Isitprotectable?

q  Isthereamarketforit?q  Canwelicenseit?

WARF Decision


q Weeitheracceptordon’taccepttheinvenWonandnoWfytheinventor.q  Foralldisclosuresthere’saGraduateSchoolEquityReviewtodeterminefunding

sourcesandownershiprightstotheinvenWon.q  Ifweaccept,inventorssignaMemorandumAgreement.

Inventor Is Notified by WARF


q  YoumeetwithyourWARFIntellectualPropertyManagerandapatentaTorneyretainedbyWARF.

q  [email protected]  TheapplicaWonisfiledwiththeU.S.PatentandTrademarkOffice(USPTO)and

examined.q  ApatentissuesandtheinventorisnoWfied.

Patenting


WARFLicensingManageridenWfiescompaniesthatmaybeinterestedintheinvenWonandpro-acWvelymarketsthetechnologytothosecompanies.

q WARFLicensingManageridenWfiesthecommercialspaceforyourinvenWon.q  AsummaryofthetechnologyiswriTenandpostedontheWARFWebsite.

q  OthermarkeWngmaterialsmaybedeveloped.

Marketing


q  ApatentlicenseisnegoWatedwithapotenWallicensee.q  Apatentlicenseisacontractbetweenthepatentowner(WARF)andacommercial

partnerthatgivestheLicenseepermissiontomake,use,sellorimporttheinvenWon.

q  LicensingrevenueisreturnedtotheInventorandtheUniversity,whereitisusedtosupportfurtherresearch.

Licensing


QuesWons?

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