Introduction to IP

Ellen MonsonDirector

Intellectual Property OfficeUniversity of Cincinnati

Intellectual Property (IP)

• What is it?

• What can you do with it?– How does it work at a University?

Types of IP

• Trade Secrets

• Trademarks

• Copyrights

• Patents

Trade SecretsA trade secret is any formula, pattern, device or

compilation of information which is used in one's business, and which gives one an opportunity to obtain an advantage over competitors who do not know or use it.

• Know-how of current or potential competitive value• Must be safeguarded by reasonable measures• Indefinite protection period (= life of secrecy)• Protects against unauthorized use and disclosure• Right to use can be licensed

How do you gain Trade Secret protection?

• Keep your secret secret.

Examples

Trademarks

• Definition:– A distinctive sign or indicator used to identify

that the products or services originate from a unique source, and to distinguish its products or services from those of other entities

• Rights Granted:– Ability to stop others from unfairly using

Examples

How do you gain Trademark protection?

• Use your mark on a product

• Register [Optional, but recommended]– File a registration– Wait– Respond to an office action (if necessary)– Wait– Repeat Steps 3 & 4 (if necessary)– Have registered trademark status ®

CopyrightsCopyright protects “original works of authorship” that

are fixed in a tangible form of expression.

• Literary, artistic, musical, audiovisual, and graphic works• Original in expression• Can include software• Effective immediately upon completion of work• Protection is for term of life + 70 years• Protects against copying• Registration of copyright not required

Examples

How do you gain Copyright protection?

• Put the work in a tangible medium

• Register your copyright [Optional]

What is a patent?

A patent is a right granted under the US constitution to prevent others from making, using or selling your invention for a defined time period – 20 years from the date of filing in the US.

The burden of enforcement is on the patent holder.

What is patentable?

“Anything under the sun made by man”

(Supreme Court – Diamond vs. Chakraberty - 1980)

• Recombinant organisms• Articles of manufacture• Processes• Designs• Computer Programs• Compositions• Business methods• Plants

IF…

…the invention meets following criteria:

• Useful – practical utility in the real world

• Novel - not previously described (not published)

• Nonobvious - to someone skilled in the technical field

• Enabled – described in sufficient detail so someone skilled in the technical area can make and use the invention.

•Mathematical formulae; algorithms•Naturally occurring organisms•Laws of nature •Abstract Ideas•Natural Phenomena

What is not patentable?

How do you obtain a Patent?

1. Draft a patent application(1 to 3 weeks)

2. File with US Patent and Trademark Office

3. Wait (2 to 4 years)

4. Patent prosecution: Patent examiner and applicant usually go through several rounds of arguments to determine the final claim set.

5. Claims determine the scope of patent rights.

Incandescent Electric Lamp – US patent #242,896 – Thomas Edison et al. inventors

“Method and Means for Creating Anti-Gravity Illusion” US Patent # 5,255,452 – Invented by Michael Jackson et al.

MOONWALK SHOE

Board Game Apparatus – US patent # 2,026,082

What can you do with IP?

• Stop others

• Let others use it

What does UC do with IP?

• Disclose

• Assess

• Protect

• Market

• License

• Reward

Disclosehttp://www.ipo.uc.edu/index.cfm?fuseaction=home.forms

Assess• What is the Invention?• What other products are out there?

– Commercial or otherwise• How is this product different than the other products?

– Advantages and disadvantages• How do you protect it?

– Patent– Copyright– Trademark– Trade Secret

Market

• Exactly who wants to buy this product?

• Are there other uses which this product can be used for?

• Who else does this? How

does their product

compare?

License

• Licensing = selling– A license agreement is in its simplest form

a sale

• The goal is to find the interested parties who want the product and meet the valuation of the product

Reward

• The University’s primary goal in licensing a product is in obtaining a return on the investment made

• Policies exist for licensed items toreward the creators/inventors for theircontributions

http://www.ipo.uc.edu