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Basic Intellectual PropertyBasic Intellectual Property
Jonathan L. TolstedtLicensing Associate/Patent Agent
(NDSU/TTO)
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Purpose of Presentation
general
Basic patent law
Invention rocess
Explain how NDSU handles IP
, ,
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My Background Jonathan Tolstedt
Masters in Computer Science
and software design
Written several patents
Have two endin atents of m own
Adjunct Lecturer for ECE department
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Basic Types of Intellectual Property
Trade SecretsPatents
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Basic Types of Intellectual Property
Form of protection provided to original works of authorship, bothpublished and unpublished
us e expresse wr en or o er ang e orm
Copyright is automatic, but can be registered
Life of author plus 70 years
Examples:
Documents, Books, Songs
User Manuals, Software Source Code
Web Pages, Sculptures, Paintings
Note about copyrighting source code
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Basic Types of Intellectual Property
Protect words, names, symbols, sounds, or colors (and smells!) thatdistinguish goods and services from those manufactured or sold by
Can be renewed forever as long as they are being used in commerce
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Sounds, Colors, Shapes, and Smells???
SMELLSSOUNDS
COLORSSHAPES
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Basic Types of Intellectual Property
Information that companies keep secret to give them an advantage overtheir competitors
Must make an effort to keep secret, must not be disclosed
Protection lasts only as long as secrets are kept
Trade Secret Examples: ecret ormu a or oca o a
Merchandise 7X is the "secret ingredient
Executives who know formula cant fly on the same plane or be left alone
The Colonels Secret Blend of 11 Herbs and Spices
three more locked doors
Samples of the 11 herbs and spices kept, also
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Basic Types of Intellectual Property
A granted property right that allows inventor to exclude others frommaking, using, offering for sale, or selling the invention throughout theUnited States or im ortin the invention into the United States
Does NOT grant you the right to practice the invention
FULL, enabling disclosure (opposite of trade secret)
20 ears from first filin date
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Basic Types of Intellectual Property
Patent-like rights for plant breeders Gives breeders exclusive control over new, distinct, uniform, and stable
- -
20 years from issue date of certificate, 25 years for trees and vines
Should not be confused with plant patents which are limited to asexuallyre roduced lants not includin tuber ro a ated lants
However, plants eligible for Plant Variety Protection can also beprotected with a utility patent (not a plant patent)
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Patenting BasicsPatenting Basics
Jonathan L. TolstedtLicensing Associate/Patent Agent
(NDSU/TTO)
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Basic Patent Law
the United States Code (35 USC)
An invention must be useful (35 USC 101)
An invention must be novel (35 USC 102) n nvent on must e non-o v ous
An invention must be fully disclosed (35 USC 112)
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An invention must be useful
Whoever invents or discovers any new and useful process,machine, manufacture, or composition of matter, or any new and
, ,to the conditions and requirements of this title.
Must be man-made anno pa en :
Newly discovered minerals or plants found in nature
Laws of nature or physical phenomena
Abstract ideas Very few patents are rejected as being non-useful
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For example:
Patent 6,293,874 entitled User-operated amusement apparatus forkicking the users buttocks.
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An invention must be novel
The invention must be new Different from anything known previously
known or used by others in US before date of invention
patented or published anywhere in the world before date of invention
in ublic use or on sale in the US more than 1 ear before atent filin date
patented or published by the inventor (or others) anywhere before filing date
not invented by you
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An invention must be non-obvious
The invention must not be obvious Cant be obvious to a person skilled in the art
previously known inventions
There are a lot of novel inventions in the world, but not that many non-obvious ones
Be careful of these assumptions: Ive never seen anything like this before
Patent examiners have access to databases that you dont
No one has anything exactly like this
That invention uses Method X, but we use Method Y (Doctrine of Equivalents)
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An invention must be fully disclosed
35 USC 112 You get 20 years of patent protection is exchange for disclosing
A patent application must have a full, enabling disclosure
Enabling means that a person in the same field of expertise (oneskilled in the arts could make the invention based solel on our atentapplication
You must also disclose the best mode of your invention (the preferredembodiment) cant hold something back from the public
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Anatomy of a Patent
Specification Written descri tion thorou hl describin our invention
and what it takes to implement your invention
Claims (legal language) Define the boundaries of your actual invention
Describe which parts of the specification are new andinventive
Claims are interpreted based on the specification
Claims must be supported by specification
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Types of Patents
Utility Patent- -
Continuation
Design Patent
PCT Applications and Foreign Patents
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Provisional Patent
Not reall a atent more of a laceholder
Established a filing date for the invention Lasts for 12 months
Requires full, enabling specification
Claims are not re uired but a ood idea
Provisional patent is not read by USPTO unless autility patent is filed referencing provisional
Cant introduce new material over provisional
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Utility Patent (Non-Provisional)
function of an invention
improvement thereon
years from first filing date
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Children of a Utility
- - Largely the same as the parent application, but adds in improvements
since the original patent was filed (new matter can be added)
on nua on Same patent specification, but claims can be changed
Used to keep prosecution on an invention open, since you cant makechanges to an issued patent
Divisional
covers more than one distinct invention, they may require you to splitone or more of the inventions off into a divisional application
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Design Patent
Covers the ornamental
design of an inventiononly
oes not care a outfunction, only the looks of
The design of chesspieces, for example
17 years from date ofpatent issue
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Plant Patents
including tuber propagated plants)'
from asexually reproducing, selling, or using
20 years from the date of filing the application
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PCT and Foreign Patents
Must file a atent in each countr se aratel
Most countries do not have a one-year grace periodlike the US
Must file at least a provisional patent before pubicdisclosure to preserve rights in ROW (rest of world)
A single generic application accepted by most countries inthe world
Placeholder that buys more time Still have to file in individual countries
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Patent Timing I was
Potentiall ears of research
once
File a provisional application File a utility application within
12 months
Get first Office Action after 2 to
Respond to Office Action
Get second Office Action
Respond
Final rejection or allowance
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Things to Know During theThings to Know During the
Jonathan L. TolstedtLicensing Associate/Patent Agent
(NDSU/TTO)
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Document Everything
Best bet is an invention notebook
Pre-printed page numbers
Document the entire process in the notebook How conceived? Where conceived? What circumstances?
Dumb ideas
Description should be enabling
Get the notebook pages witnessed andsi ned At least two witnesses, sign and date that they have read and
understood
A notary public is even better (for key ideas)
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Know the Prior Art
Any existing information that may affect theatentabilit of our invention
Patent applications and publications
Magazine articles and websites Masters and Doctoral Theses
Technical papers and abstracts
Student presentations and design competitions
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Patent Searching
than most, ,
and after research
Can help define your research/invention
Look at patents, web pages, periodicals, etc.
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Patent Searching Tools (for free)
www.uspto.gov
Easy PDF versions of any published application or issued patent
www.wipo.org World Intellectual Pro ert Or anization PCT patents (Patent Cooperation Treaty)
www.epo.org European Patent Office
www.jpo.go.jp Japan Patent Office
www. at2 df.or If you know the patent number, fetches patent and converts to PDF format
www.google.com (non-patent searching)
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Beware of Public Disclosures
Talkin to someone about our invention without aconfidentiality agreement in place might be a publicdisclosure
protection is in place, you may immediately lose
foreign patent rights The United States currently has a one-year grace
period after a disclosure
presenting, publishing, or sharing information withparticipants in a meeting
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Examples of Public Disclosures
your thesis or dissertation Discussin it with otential customers without a
confidentiality agreement in place
Technical a er resentation or abstractpublication
Student design competition or student
presentation An offer for sale or license of an invention
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An Enabling Disclosure
someone skilled in the arts could reproducethe invention from the disclosure alonewithout undue experimentation.
public, enabling disclosure
warp the fabric of time-space, is likely anenablin disclosure
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Inventorship vs. Ownership
contributed to even one claim on a patent
Which inventors listed on a patent could change
Inventorship determined on a claim-by-claim basis
Ownership CAN change Patents are property, just like real estate
Inventions made with NDSU resources must be assigned to NDSU(according to state law)
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Inventorship vs. Authorship
authorship, not inventorship,
Writing a paper on an invention does not
Publishing is very important
ee o e aware o ow a ec s r g s
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Who is an inventor?
Contributed to at least one claim Can be a co-inventor
All co-inventors have the same rights, regardless of amount ofcontribution
an ma e a ega agreemen o c ange r g s
Person who suggests a result (but not the means) is
not an inventor Person working under direction and control of
another is not an inventor Your boss or someone resent in the room are not
automatically inventors Legal issue determined by patent attorney/agent
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The Technology TransferThe Technology Transfer
Jonathan L. TolstedtLicensing Associate/Patent Agent
(NDSU/TTO)
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NDSU Policies on IP
NDSU Policy Section 190 (http://www.ndsu.nodak.edu/policy/190.htm)
Policy and practices set by North Dakota StateBoard of Higher EducationThe Institution shall have the right of first refusal to the title of all
patentable discoveries derived with the use of facilities, gifts, grants, or
contract funds through the university
m ar o e po c es o mos compan es nindustry you are the inventor, but they are theowner.
Actually BETTER than most corporate policies:you get 30% of any net revenue.
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The Bayh-Dole Act of 1980
Gave US universities small businesses and non-
profits intellectual property control of their inventionsand other intellectual property that resulted fromgovernment un ng.
Previously, the government automatically got title to
used. Now, universities can claim title.
Universities must share revenue with the inventors
and give preference to US industry and smallbusiness.
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The Invention Process at NDSU
. Form located at http://www.ndsu.nodak.edu/research/tech_transfer/forms.php
Dont hold back information. Disclosing to the TTO is not a public disclosure.
You will not lose an ri hts b disclosin to the TTO.
Report before a public disclosure to retain all of your rights.
Invention is evaluated by TTO (see nextslide)
Based on evaluation, invention can be: Protected by a patent or similar form of IP protection
Waived to the government (inventors can petition for title)
Returned to inventor if no government funding
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Evaluating Inventions
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Patentability Prior art search is done
Invention is evaluated to see if it is useful, novel, and non-obvious
Market Potential,
If market is very small, may not justify the expense of patent costs
If the invention does not meet one or both of
these criteria, that does NOT mean the ideais not good
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NDSU Research Foundation
Research Foundation (NDSU/RF)- -,
tasked with commercializing the technologies
does all of the marketing and licensing of
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Benefits of the NDSU TTO and RF
,
all patent costs (which are considerable) The office activel markets invention to industr
The goal of the office is to license the technology
to industr If a license is completed, 30% of net revenue
from license goes to inventors, and 40% goes
back to the inventors department (to encourageand support new research)
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What About Starting aWhat About Starting a
Jonathan L. TolstedtLicensing Associate/Patent Agent
(NDSU/TTO)
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Be Informed and Prepared
Need to strive for a platform technology,
Need to obtain funding (probably more than
Need to understand the IP issues
ee o e very pers s en , very pa en , anvery open to criticism and set-backs
l
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Business Plan Tips
Detailed Financial Anal sis with lots of back u data isessential How much money required to invest?
How lon till investment is aid back?
What will the operating costs be?
What capital equipment is needed? Maintenance of equipment?
Detailed Market Anal sis Who will your customers be? Who are the primary competitors?
Why is your product better than the existing?
Will you be able to displace existing technologies? Even if your product is betterthan existing, there is still a cost for your customers to make the switch.
What percent of existing market can you capture? How will you capture it?
i Pl Ti
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Business Plan Tips
Detailed Product/Technical Analysis
Have prototypes been developed?
What are its pros and cons when compared to existing?
How much will it cost? Will there be licensin costs involved?
Detailed Operating Plan Who will manage the company?
Are there certifications or registrations involved?
What type of company will it be (c-corp, s-corp, LLC, sole proprietorship, etc.)?
convince someone else to invest in your company. You should do this to convince YOURSELF first.
D li i h NDSU/RF IP
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Dealing with NDSU/RF IP
NDSU/RF-owned invention.
NDSU/RF.
business plan in place.
license deal.
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Bison VenturesBison Ventures
Jonathan L. TolstedtLicensing Associate/Patent Agent
(NDSU/TTO)
Bi V
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Bison Ventures
, ,
economic development process
Architecture
,the TTO and NDSU Research Foundation,
Incubator
Bi V G l
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Bison Ventures Goals
Focus engineering education on innovation and discovery
Develo en ineerin raduates skills in roduct develo mentproject management, soft-skills, business concepts, and
global perspectives for successful entry into a globalmarket lace
Improve our regions technological and economiccompetiveness in the global economy by leveraging
agreements and high-tech spin-off companies.
Provide funding and company ownership incentives to facultyan stu ents or nnovat on act v ty
Provide investors with information about new technologyinnovations
Bi V P
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Bison Ventures Process Innovations are conceptualized by faculty, students, and outside
sponsors
Commercial viability of innovation concepts are evaluated by BisonVentures Board of Directors (BVBD) and concepts with high commercial
Concepts are reduced to practice by innovation team and inventionreports are filed with the Tech Transfer Office
,the technology themselves and form a corporation (spin-off), orNDSU/RF can out-license the technology to an external company
Incor orated teams s in-off com anies ma resent to investors at an
Investment Conference Incorporated teams may elect to move into the NDSU Research Parks
Technology Incubator
Bi V t d IP
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Bison Ventures and IP
Both product and business plan should bedevelo ed in detail and in arallel Without a business plan, wont be able to convince investors or
IP-owners
,IP rights and/or not convince investors
Avoid public disclosures (seek confidentiality
agreements with non-team members beforedisclosing) unless IP is fully protected
Contact Information
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Contact Information
Jonathan Tolstedt
NDSU Technology Transfer Office
(701) 231-8173