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Research AdministrationFor Scientists
COMP 290-083
(Lecture 9)
Tim Quigg
Associate Chair for Administration and Finance
Department of Computer Science
UNC-Chapel Hill
Introduction to
Intellectual Property
COMP 290-083
COMP 290-083
What is Intellectual Property?
Any product of the human mind:• Idea• Invention• Expression• Unique Name• Business Method• Industrial Process• Chemical Formula
that has value in the marketplace and can be reduced to a tangible form.
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Intellectual Property Law -
Legal Principles that determine:• Who owns IP
In short, IP law determines when and how a person can capitalize on a creation!
• When and how owners can exclude others from exploiting IP
• Degree of recognition courts are willing to afford IP
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United States ConstitutionArticle 1, Section 8
“The Congress shall have power:
… to promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries …”
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There are 4 categories of IP law that address different types of IP:
• Patent Law
Important: Understand all 4 before seeking coverage for your creation.
• Trademark Law• Copyright Law• Trade Secret Law
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Patent Law
What is a patent?A right granted by the government to a person or legal entity
What “right” does a patent grant?The right to exclude others from making, using, or selling the patented invention for a fixed period of time
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Patent Law
How long can you exclude others from making, using, selling?
• 20 years from date of filing• You must pay maintenance fees
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Patent Law
How do you stop someone from making, using, selling?
• File a patent infringement lawsuit in federal court• Infringement – battle between a product/process
and a patent• Interference – battle between two patents (may
occur up to twelve months after patent issues) filed with PTO
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Patent Law
Who can apply for a patent?• Any true inventor regardless of
• Age
• Nationality
• Mental Competency
• Incarceration
• Even deceased persons (through their personal representatives)
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Patent Law
What form of property is a patent?• Personal property• Comparison with land
Land• Sold• Leased• Willed• Boundaries Defined by Deed• Exclusionary Rights• Yours Till You Dispose of It
Patent• Sold• Leased (Licensed)• Willed• Boundaries Defined by Claims• Exclusionary Rights• Limited Life
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Patent Law
What is the scope of a U.S. patent?
• U.S. patent rights extend throughout the U.S., its territories and possessions
• But not to foreign countries
• Must file country by country
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Patent Law
U.S. vrs. rest of the world (after GATT and WTO)
• U.S. = first to invent
• Rest of the world = first to file
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Patent Law
35 USC 101 Inventions Patentable
“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement there of, may obtain a patent therefore, subject to the conditions and requirements of this title.”
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Patent Law
Role of PTO Examiner:
• Advocate of the public
• Tries to prevent you from getting a patent (first opponent)• If he finds patentable material and you have difficulty writing a
proper claim, the law requires the examiner to write one.
• Adversarial process usually strengthens patent
• Definition of a strong patent
One that can be defended in the courts when infringed.
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Patent Law
In order for an invention to be patentable, what requirements must it satisfy?
• Novelty – different from what is known, any difference, even slight, will suffice (35 USC 102)
• Non-obvious – at the time of invention, it was non-obvious to a person skilled in the art (35 USC 103)
• Useful – has value, works as described in patent (as perceived by patent examiner)
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35 USC 102 Novelty
A person shall be entitled to a patent unless:• Invention was known/used by others in U.S. or
patented/published in U.S. or foreign country before invention by applicant, or
• Invention was patented/published in U.S. or foreign country or in use or on sale in U.S., more than one year prior to date of patent application, or
• Inventor has abandoned invention, or
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35 USC 102 Novelty
A person shall be entitled to a patent unless:
• Invention was patented/filed in foreign country by applicant more than 12 months before filing in US, or
• Before the date of applicant’s invention, the same invention was made in this country by another who had not abandoned, suppressed, or concealed it.
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35 USC 102 Novelty
“In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was the first to conceive and last to reduce to practice, from a time prior to conception by the other.”
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• Diligence
• Actual Reduction to Practice
• Constructive Reduction to Practice
• Document Disclosure Program (DDP)
• Provisional Patent Application (PPA)
Definitions
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Diligence – (or reasonable effort) applies only to the time between conception and reduction to practice (prototype development), not between reduction to practice and filing!
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Actual Reduction to Practice – building and testing the “hardware” or prototype of the invention.
Constructive Reduction to Practice – under the law, the act of filing a patent application.
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• PTO date stamps and returns one copy to inventor
• Small fee
Document Disclosure Program (DDP)
• File with PTO two copies of “Proof of Conception” documents
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• One year to file full application
• No claims included (articles and papers)
• Not examined
• Disadvantage – nothing new can be added
Provisional Patent Application (PPA)
• Locks in filing date
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• Withdraw and re-file or• File a “Continuation in Part” (CIP) – a
second patent application that relies heavily on the first
• Danger – double patenting!
Provisional Patent Application (PPA)
• Options if either new material is to be added or some claims are not supported by attached material.
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35 USC 103: Non-obvious Subject Matter
“A patent may not be obtained…if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention as made to a person having ordinary skill in the art to which said subject matter pertains.”
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Patent Law
Are there different types of patents?• Utility Patents (most common) – cover inventions
that function in a unique manner to produce a utilitarian result. Examples:
• New Drugs• Electronic Circuits• Software• Manufacturing Processes• New Bacteria, Animals, Plants• Machines• Manufactured Products
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Patent Law
• Design Patents (ornamentation) – cover the unique, ornamental or visible shape or design of an object.
• Uniqueness of shape must be purely for aesthetic reasons• If for functional reasons – utility patent applies
• Plant Patents – cover asexually reproducible plants through use of grafts and cuttings.
• Example:• Workshop wall clock in shape of saw blade – design
patent• Special shape for airplane to reduce turbulence – utility
patent
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Patent Law
What can’t be patented?
• Mental processes and abstract ideas (unless reduced to tangible form)
• Laws of nature
• Naturally occurring articles
• Literary/dramatic/musical/artistic works (copyrightable items)
The Life Of An Invention
Conceived but not documented Inventor has no rights!
Documented, but patent application not filedPotential rights exist if
“first to invent”
Patent pending, filed but not issued1-3 year process
kept secret by PTO
Patent issued: In-force
• Right to exclude• Patent infringement suits• Licensing• Public Record
Patent Expires•20 years after filed•No rights remain•Prior-art reference
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Patent Law
Can a patent right be lost?• Failure to pay maintenance fees• One or more prior-art references (earlier patents or
other publications) are uncovered that show that the invention wasn’t new
• Patent owner engages in illegal conduct, e.g., antitrust violations with patent
• Fraud on PTO by failing to disclose material information (e.g., prior art) while patent was pending
• Re-examination
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Re-examination
• Modest fee• Re-examination conditions
• Prior art that existed at the time patent application was filed has been discovered
• Results of re-examination may include: • Patent is fine• Some claims invalidated• Some claims narrowed • Patent invalidated
• Anyone can initiate
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Common Patent Misconceptions
1. Patent gives owner the right to practice an invention.Fact – if no person holds an exclusionary right (patent) you can practice your invention freely.
2. If a product is patented, it is bound to be superior.
Fact – a patent merely means that the invention is significantly different, not necessarily superior.
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Common Patent Misconceptions
3. Once you get a patent, you’ll make money.Fact – less than 5% of all patents produce enough revenue to pay for their prosecution costs.
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Trademark Law
What is a trademark?• Any word or symbol that is consistently attached to a
product to identify and distinguish it from others in the marketplace, e.g., a brand name
• Often used with patents for extra protection• Xerox has patents on photocopiers and the Xerox
trademark name• If patent expires, trademark still offers some
protection• Also used with products that are not patent protected
(Hula Hoop, Crock Pot)
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Trademark Law
Other protected words/symbols include:
• Service Marks (Blue Cross/Blue Shield Emblem)
• Certification Marks (Good Housekeeping Seal of Approval)
• Collective Marks (FDIC Symbol)
• Trade Name (Proctor & Gamble is trade name - Ivory is trademark)
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Trademark Law
Offensive rights for trademark protection:• Arbitrary (Apple Computers), fanciful (Double
Rainbow Ice Cream), or coined terms (Intel) are strongest terms
• Generic (“The Pill” for birth control pills) or descriptive (“Electric Fork”) are weak and yield little offensive rights
• Don’t select a mark already in use (or close enough to cause customer confusion, mistake or deception)
• Use the name or file an intent-to-use (ITU)• Register with PTO
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Copyright Law
What is a copyright?
A right that the government gives an author of any original work of expression to exclude others from copying or commercially using the work without approval.
• Literary/dramatic/musical/artistic works• Software
What does a copyright cover?
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Copyright Law
When does a copyright go into effect?
• Common – at moment of creation
• Registered – with U.S. Copyright Office (USCO)
• Helps to prove “first to create” in infringement suits (also can collect damages plus legal fees)
• Copyright Notice –
Copyright 2001 Timothy L. QuiggAll Rights Reserved
“[TITLE of SOFTWARE]”
Copyright © [DATE], The University of North Carolina at Chapel Hill All rights reserved. No part of this software may be sold or distributed in any form or by any means without the prior written permission of the Department of Computer Science, University of North Carolina at Chapel Hill. Distribution and use of this software is subject to the Software License Agreement [ incorporated in this software][set forth below]. By having, retaining or using a copy of this software, you agree to be subject to the terms of the Software License Agreement.
*******
Software License Agreement Permission is given to copy [“Name of Software”], and its files (“the Software”) and to use them locally, as long as foregoing Copyright Notice is not removed and the Software name is retained unaltered. By opening, possessing, retaining, using, or having a copy of the Software, you are deemed to have agreed to the terms of this Software License Agreement. The Software is provided strictly on an "as is" basis without warranty of any kind. Neither the University of North Carolina at Chapel Hill, its faculty, staff or students, nor anyone else who has been involved in the creation, production or delivery of the Software shall be liable for any direct, indirect, consequential or incidental damages arising out of the use or inability to use the Software even if such entities or persons may be advised of the possibility of such damages. No part of this software may be sold or distributed in any form or by any means without the prior written permission of the Department of Computer Science, University of North Carolina at Chapel Hill. Your use of the Software is limited to non-commercial, not-for-profit uses and activities. To secure permission to make any other use of the Software, you should contact the person named below. Contact person: ______________, University of North Carolina at Chapel Hill email: @cs.unc.edu
phone:fax:
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Copyright Law
How long does a copyright last?
Life of creator + 70 years
• Directly copying or commercially using the particular arrangement of words in a published work
• You can use the ideas/concepts if expressed in your own words
What constitutes a copyright infringement?
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Computer Software: Where Patents and Copyrights Overlap
Software as a creative work of expression - copyright
Software as a set of instructions that make a machine operate in a certain way - patent
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Computer Software
Advantages to patent protection:• 20 years, broad protection
Disadvantages to patent protection:• > 2 years to issue (may not be valuable)• Cost
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Computer Software
Advantages to copyright protection:• Inexpensive• Immediate protection
Disadvantages to copyright protection:• Copyright only covers the way program is written, not
what it does (all word processors do the same things)• Easy to “design around”
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Comparison of Design Patent with Copyright
Design Patent• Aesthetic Aspects of
Manufactured Articles
• Broad Rights
• Expensive Filing/Prosecution with PTO
Copyright• Literary/Artistic Works
• Narrow Rights Against Copiers, Not Independent Creators
• Small Filing Fee with USCO
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Trade Secret Law
What is a trade secret?
Any information, design, devise, process, composition, technique, or formula that is not known generally and that affords its owner a competitive business advantage
• Examples
• Formula for paper used to make U.S. currency
• Chemical recipes for soft drinks, cosmetics, etc.
• Manufacturing process for forming eyes in needles
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Trade Secret Law
Trade secrets may also take the form of “Business Information.”
• Customer lists
• Names of suppliers
• Pricing data
Both technical and business information trade secrets can be protected!
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Trade Secret Law
The law affords protection for trade secrets:
1. Proportional to their business value and
2. Based upon how well the business protected the secret
The courts have rejected requests for relief if company had sloppy procedures for protecting secrets!
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Relationship of Patents To Trade Secrets
• Pending patent applications are confidential, thus the information can be protected as a trade secret
• Rejected patent applications remain confidential, thus the information can be protected as a trade secret
• Even if a decision is made by PTO to grant a patent, it can be rejected
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Relationship of Patents To Trade Secrets
Why would an owner choose to reject patent protection in favor of protection under trade secret law?
• Perpetual protection is possible• Cost• Confidentiality makes it hard to “design around”• Inventors aren’t named in trade secret rights• Trade secret rights are obtained immediately
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Relationship of Patents To Trade Secrets
Why would an owner choose patent protection over trade secret law?
• Reverse engineering is possible with trade secrets• Patents are presumed valid by the court, trade secrets
must be proven to exist before the suit may proceed• Trade secrets discovered by legitimate means may be
patented by others (if an invention is protected under trade secret law and put to commercial use, a patent must be filed within one year or any subsequently issued patent may be invalided.
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Important
Inventors should consider the relative
advantages/disadvantages available for
protecting their creations under
U.S. intellectual property law!
Patent Application Tips• The claim is the invention
• Claim has three parts:• Preamble• Body• Whereby clause
• Five types of claims:• Process or method• Machine• Article or article of manufacture• Composition of matter• New use of previous four statutory classes
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Sample Process Claim
A method for joining two pieces of cloth together at their edges, comprising the steps of:
a. Positioning said two pieces of cloth together so that an edge portion of one piece overlaps an adjacent edge portion of the other piece, and
b. Passing a thread repeatedly through and along the length of the overlapping portions in sequentially opposite directions and through sequentially spaced holes in said overlapping adjacent portions,
whereby said two pieces of cloth will be attached along said edge portions.
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Comprising – including the following items, but can also include others (open-ended).
Definitions
Consisting of – including the following items only (closed-ended).
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Food item comprising the following items: bananas, strawberries, ice cream and whipped cream.
Banana Split Example
Food item consisting of the following items: bananas, strawberries, ice cream and whipped cream.
Question: If I add walnuts, do I infringe on either claim?
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• First claim is always independent
Patent Claims
• Write a series of dependent claims in successively narrower terms
• If broader claim is disallowed, a more specific (narrower) one may be allowed
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Writing Claims
1. An article of furniture (etc.).
4. The article of furniture of Claim 3 wherein said sheet of chipboard has a rectangular shape.
1 2 3 4 5 6 7 8
2. The article of furniture of Claim 1 wherein said sheet of rigid material is made of wood.
3. The article of furniture of Claim 2 wherein said sheet of rigid material of wood is made of chipboard.
I D D D D D D D
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Understanding Infringement
Battle between a product/process and a patent
1 2 3 4 5 6 7 8
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Understanding Infringement
Infringed
Battle between a product/process and a patent
1 2 3 4 5 6 7 8
Are any other claims infringed?
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Understanding Infringement
Infringed
Battle between a product/process and a patent
1 2 3 4 5 6 7 8
Are any other claims infringed?
Yes, 1 and 2 but not 4-8!
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Understanding Invalidation
1 2 3 4 5 6 7 8
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Understanding Invalidation
Are any other claims lost?
Prior art reads on claim
1 2 3 4 5 6 7 8
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Understanding Invalidation
Are any other claims lost?
Yes, 1-3 but not 5-6!
Prior art reads on claim
1 2 3 4 5 6 7 8
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Can You Sue For Infringement If?
Product comes on market that infringes Claim 6. They find prior art that reads on Claim 5.
1 2 3 4 5 6 7 8
Prior Art
Infringement
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Can You Sue For Infringement If?
Product comes on market that infringes Claim 6. They find prior art that reads on Claim 5.
1 2 3 4 5 6 7 8
Prior Art
Infringement
Yes, Claims 6-8 remain!
Tip: Patent Prosecution
• Never say anything negative about your invention in writing
• If examiner raises an issue in an action and you agree, simply ignore the issue in your response thus conceding the point
• If examiner uses prior art in an action to argue obviousness, check for diverse fields
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