Ben-Gurion University Technology Transfer Intellectual Property and Patenting Basics

Intellectual property can take the form of patents, trade secrets, copyrights, or trademarks and service marks. Each of these different kinds of intellectual property offers different types of protection that serve different purposes.

Intellectual Property

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Patents

A patent for an invention is the grant of a property right to the owner of the invention in a certain geographical area (country). The right conferred by the patent grant prevents others from benefiting from the invention in the area for which the patent has been granted as the language of the grant itself says "the right to exclude others from making, using, offering for sale, or selling" without the invention's owner permission. A patent does not give the inventor or the owner of the invention the right to practice his or her own invention (Freedom to Operate) if another party owns a patent that "dominates" the invention. Under such circumstances, if the owner wishes to use his patent he would require a license from the owner of the dominating patent.

A patent is given for a certain geographic area and is recognized only in the country in which it is granted or validated for example a US patent are effective only within the United States, US territories, and US possessions.

The term of a new patent is 20 years from the date on which the first application for the patent was filed subject to the payment of maintenance fees.

Not every invention is patentable. A patent is awarded if the invention is deemed to be new, useful, and not obvious, and if the text describing the invention is detailed enough that a person "skilled in the art" can practice the full scope of its claims without "undue experimentation."

There are three types of patents:

1) Utility patents may be 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

2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture

3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

Trade Secrets

Even when an invention fails to meet the hurdles of novelty, utility, and non-obviousness, it may nonetheless serve as an exclusive, valuable asset if it can be maintained as a trade secret. An advantage of trade secret protection over patent protection is that it can last forever—provided that its subject matter is kept secret. Unlike patent law, however, trade secret protection does not prohibit use of the trade secret if it is independently developed by another, that is, without copying or theft. In addition, the holder of a trade secret is also subject to a substantial risk that the secret will be passed on to competitors by breach of a confidential relationship. In academia, the mobility of scientists makes the maintenance of a trade secret very difficult. Accordingly, when an invention meets the standards of patentability, patent protection is the safest option, and a patent application should be filed.

Copyrights

Copyright protects the authors of "original works of authorship," including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of a copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies of phonograph records, CDs, and DVDs of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

The copyright protects the form of expression rather than its subject matter. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the invention.

Computer software is subject to copyright protection. As discussed above, however, the scope of protection is relatively narrow. If the underlying algorithm meets the patentability standards, patent protection is a much more secure option and would protect a broader scope of use.

Patenting Basics

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Important conditions for patent protection

A patent, as a right to exclude, cannot be awarded if its subject matter is already in the public domain—hence the criteria that an invention be new and not obvious. The presence of an invention in the public domain can act as a bar to patentability.

If the invention has been described in a printed publication anywhere in the world by anyone including the inventor himself, or if it has been in public use or on sale by anyone including the inventor himself before the date it was made (according to US patent law) before the date it was filed (according to patent laws for the rest of the world) by its alleged inventor, it is not patentable. United States patent law allows however a one year “grace period" from the date of publication until the date of patent filing so even if an invention was published or was in the public use or on sale by anyone including the inventor himself a patent can be still filed in the US within the year. This one year "grace period" is generally not recognized by other countries, with several exceptions. That means that for most of the world, a publication prior to filing a patent application renders the invention un-patentable.

Even if the subject matter submitted for patent protection is not exactly in the public domain, a patent may still be refused if the differences would be obvious. Factors that indicate that an invention is not obvious include failure of others, solving a longstanding problem, and commercial success.

Provisional Patent Applications

The United States allows for the filing of so-called provisional applications that do not enter the examination process, have fewer formal structural requirements, and carry a substantially lower filing fee. A provisional application survives for one year, after which it must be converted to a regular patent application to remain viable. The converted application may then benefit from the filing date of the provisional application as the provisional application provides a "priority date."

What Do I Need To Do As An Inventor?

The following are suggestions for optimizing your role in the patenting process:

Prompt filing of an Invention Report before any publication

Because publication in any of the forms mentioned below creates a bar to patentability you should file an Invention Disclosure that notifies BGN of any impending publication. The Invention Disclosure should be filed well in advance so that BGN has plenty of time to review it before publication.

Alerting BGN to any future publications once your Invention Disclosure has been submitted.

After filing and especially within the first year of filing, notify BGN of upcoming publications which contain material, results, and ideas, not included in the patent application. Publications occurring after the filing of a patent application may contain patentable improvements that can be incorporated into the patent application.

Intellectual Property and Patenting Basics