Frequently Asked Questions – Intellectual Property
Until March 16, 2013, the U.S. has a “first to invent” patent system. That is, if two or more patent applications are filed for the same invention, any patent on that invention is awarded to the applicant who can show the earliest date of invention. Proof of invention must be in the form of documentary evidence, and the best form of this evidence is a laboratory notebook. The purpose of a lab notebook is to document how and when inventions occur, and to show what steps are taken and by whom. A lack of documentation can result in the loss of patent rights if the date of an invention is challenged, or if the inclusion or exclusion of a particular inventor is disputed. For these reasons, the UW C4C advises researchers to develop good record keeping practices.
A lab notebook should include a description of the research problem and the solutions or hypotheses under consideration. It is particularly important to record the conception of any idea that may be new, such as an important scientific breakthrough. Conception occurs when an inventor has a complete idea of a solution to a problem. The concept should be fully described in the lab notebook, in sufficient detail such that someone of ordinary skill in your field could understand the concept. Lab notebooks should also contain experimental results and data that support your solutions or hypotheses. Each entry in the lab notebook should be complete, dated, and signed by an investigator and a witness. In addition, the title of the research project, the name of each investigator, and information about relevant funding sources should be documented on the first page of the lab notebook. For more information, watch How to Keep a Lab Notebook, a 2-minute tutorial featuring Jesse Kindra, C4C’s Director of IP Management.
Copyrights and Trademarks
Copyright rights exist by the creation of “original works of authorship that are fixed in a tangible medium of expression.” To be an “original” work, the work must have a minimum level of creativity (e.g., facts and data are not typically protectable through copyright law). Copyrightable subject matter may include: digital media, software, certain databases, literary works, images/videos, music, etc. Copyright law protects the expression of the work, not the idea (ideas are covered by patent law). A copyright owner has the exclusive right to copy, reproduce, distribute, display, perform, and create derivative works, and the right to license some or all of those rights to others.
Copyright rights exist at the moment the work is created and fixed in a tangible form (even if on your hard drive). Thus, your work does not need to be officially registered with the US Copyright Office to enjoy copyright protection. An official registration provides certain legal presumptions and greater remedies if a third party infringes your work. The UW Center for Commercialization may file a copyright registration application in your work, depending on the circumstances and the type of work. Your Technology Manager and the Copyright/Trademark Manager can discuss this option with you.
As a general rule, for works created after January 1, 1978, copyright protection lasts for the life of the author plus an additional 70 years. For works “made for hire,” e.g. by an employee for her employer, the copyright endures for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first. Therefore, copyright rights may last many years beyond the term of patent rights if your innovation includes available copyright and patent protection. For more detailed information on copyrights, see http://www.copyright.gov/help/faq/.
A trademark is a distinctive combination of words, phrases, symbols, designs, numerals, logos, drawings, or even sounds or smells that identify and distinguish the source of your goods or services from that of another party, such as a competitor. This can include the “look and feel” of a good or service (this is called trade dress). A trademark cannot be a generic name and typically cannot be merely a descriptive name/phrase. A trademark does not protect an idea or the product/service itself. A trademark is not a trade name, although they can comprise the same text (e.g., Coca-Cola Company sells Coca-Cola soft drinks). A carefully selected trademark can be a very valuable asset. It can generate goodwill and instill confidence in your customers as to the quality and source of your products/services, while reducing competition and preventing copy-cats.
- Trade Marks distinguish products or goods.
- Service Marks distinguish a service. A trademark could be a Trade Mark and a Service Mark concurrently.
- Collective Marks distinguish goods or services produced or provided by members of an association or cooperative. The goods or services usually need to meet the specifications defined by the members of the group (collective marks are less common).
- Certification Marks distinguish goods or services that have been certified by a certifying authority as complying with a set of standards and whose certification is not confined to members of a group, such as UL or LEED certifications (certification marks are less common).
Once it is determined that trademark protection is appropriate for your goods and/or services, selecting an available and protectable trademark are important steps. A “clearance search” that looks for existing marks that may conflict with your proposed mark will help avoid possible infringement of another’s trademark and avoid having to change your trademark at a later point, which may adversely affect your business plan. Trademark rights exist when you are “using the trademark in commerce.” Those rights are typically protected through reliance on “common law” rights or “federal registration” rights. Common law rights exist automatically and provide limited geographic protection. Federal rights require the expense of filing for registration and, in the US, provide nationwide protection and presumptions/remedies upon infringement. Foreign trademark rights may also be appropriate depending upon various factors. Your Technology Manager and the Copyright/Trademark Manager can discuss trademarks and clearance searches with you in more detail.
Whether and when to apply for federal trademark registration is typically based upon: the nature of your product/service, your potential customer base, whether you are using the mark in commerce or intend to shortly use the mark in commerce, your business model/plan, and the timing of spinning-off campus (if you are a startup company). Having a federally registered trademark provides the following advantages:
- Constructive notice to the public of ownership of the mark.
- A legal presumption of ownership and the exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration.
- The ability to bring an action/suit concerning the mark in federal court.
- The use of the US registration as a basis to obtain registration in foreign countries.
- The ability to file the US registration with the US Customs Service to prevent importation of infringing foreign goods.
10. When can I use the trademark symbols TM, SM and ®, and will having a trademark affect others’ research?
To alert the public to your claim to common law rights in a mark, you may (but are not required to) use the “TM” (trade mark) or “SM” (service mark) designation, regardless of whether you have filed an application for federal trademark protection. You may use the federal registration symbol “®” only after the USPTO issues official registration of your mark upon successful prosecution of your trademark application. Asserting trademark rights will not normally affect the ability of others to factually discuss your product/service or research in publications and media. A trademark owner typically can only prevent others from “using the trademark” as a trademark in commerce. Contact your Technology Manager and the Copyright/Trademark Manager with questions.
A patent is a property right granted by the government for a certain period of time. A patent confers “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. Note that a patent does not give the patent holder the right to make, use, sell, offer to sell, or import the invention; it only provides the right to exclude others from doing so. Sometimes the patent holder must license other patents in order to be able make or use the invention. In the U.S., the term of a patent is 20 years from the date on which the patent application was filed or, in certain cases, from the date an earlier related application was filed. Patents are issued by the U.S. Patent and Trademark Office (USPTO) and by similar government offices in foreign countries, and apply only in the territory in which the patent was granted.
Processes, machines, manufactures, and compositions of matter are patentable subject matter, as are any new and useful improvements thereof. Laws of nature, physical phenomena, and abstract ideas are not patentable.
Computer programs and data structures are patentable, to the extent that they are recorded on a computer-readable medium. A patent may also be obtained for other aspects of software, including a process that the software performs, a device on which the software is installed, or a new, non-obvious use for previously existing software.
Within the above categories of patentable subject matter (processes, machines, manufactures, and compositions of matter), an invention is patentable if it is new (it provides the public with something it did not previously possess); useful (it has a useful purpose and is operative to perform its intended purpose); and non-obvious (it would not have been obvious to a person “of ordinary skill in the art”).
Patenting an invention resulting from UW research has many benefits. A patent secures the UW’s ability to market the invention to corporate or non-profit entities that may further invest in the development, manufacture, and distribution of the invention. A patent may encourage commercialization of an invention by providing the licensee with an exclusive period (e.g., 20 years from the date of filing) of ownership rights in the invention. In addition, a patent can benefit researchers by (1) demonstrating that their work is innovative; (2) returning revenue to researchers and their departments, schools, and colleges; (3) providing an asset around which researchers may build a company; and (4) providing the satisfaction of contributing new information to society, which may in turn lead to new or improved goods and services.
The decision to file a patent application is made by the UW Center for Commercialization (C4C), in consultation with the inventor(s). The determination is made based on the scope of the invention, its likely patentability, and its commercial potential. Only innovations that meet the criteria for patentability and marketability are considered for patent protection. The UW C4C does not pursue patent protection for all innovations disclosed to the office. Even if an invention is patentable, obtaining a patent may not be the most effective intellectual property strategy for a particular invention. For example, a patent may not be pursued if other forms of intellectual property (e.g., copyright) are more suitable for protection, if it would be easy for someone to design around the patent, if the patent might be unenforceable, or if further development of the innovation would lead to stronger patent protection.
The patenting process at UW begins when you report your innovation or discovery. To report your innovation, fill out a Record of Invention (ROI) form on the UW C4C website. (See Reporting an Innovation FAQs for additional information on the ROI process.) Once we receive your ROI, a technology manager will be assigned to your case and will meet with you to learn more about your innovation. Together with a patent agent, your technology manager will evaluate both the commercial potential and likely patentability of your innovation. If it is determined that a patent should be part of the intellectual property strategy for your innovation, UW C4C will work with you to file a patent application. A patent application may be as simple as filing a copy of your recent manuscript, or it may involve meeting with a UW C4C patent agent and outside counsel to discuss your innovation in preparation for drafting a full patent application.
As a condition of employment, all UW employees agree to assign to the UW all inventions and discoveries in which the UW has an interest. Students who are also employees, students working on a sponsored project, and students who have used University resources also agree to assign all such inventions and discoveries to the UW. (See the UW Intellectual Property Policy for more information.) Upon disclosing an innovation to the UW C4C (by submitting a Record of Invention (ROI) form), the inventors assign their rights in the innovation to the UW. Each inventor is also required to sign an assignment document for submission with the patent application.
If you create an innovation with someone from another institution or company, the UW C4C will work with that other institution or company to determine who owns the invention and any resulting intellectual property. If the invention is jointly owned with the other institution or company, the joint owners may choose to combine their ownership rights through an inter-institutional agreement and license their rights together. Alternatively, at least in the U.S., joint owners may separately pursue licensing and commercialization opportunities. The UW C4C and the other institution or company will evaluate these strategies and pursue an appropriate option for the particular innovation.
When a patent application is filed with the USPTO, it is routed to a patent examiner with an appropriate scientific background. It may be one or more years before the examiner begins review of the application. Once the examiner begins review, he or she evaluates the application for conformance with the patent laws and regulations, in addition to determining whether the application is distinct from the “prior art” (i.e., earlier patents and publications). The examiner may, and often does, reject most or all of the patent claims in the first review. A C4C patent agent or outside counsel responds to the examiner’s comments, often after obtaining input from the inventors. In general, several rounds of patent examiner review and UW C4C response are required before a patent is granted or finally rejected.
It can take at least two to six years from the date of application for a patent to issue.
A provisional patent application is a low-cost, informal patent application that is not examined by the USPTO. It is a placeholder that establishes an earlier filing date for a later filed non-provisional (i.e., full, formal) patent application. Such a non-provisional application must be filed within one year of the filing date of the provisional application. Your manuscript, poster, presentation slides, and other materials can form the basis for a provisional application. A provisional application is often filed before a publication, presentation, or discussions with a potential commercial partner, to protect the materials prior to disclosure of the innovation. Provisional applications allow researchers more time to develop an innovation before a full patent application is filed, and allow UW C4C additional time to evaluate the patentability of and market for the innovation. If a corresponding non-provisional application is not filed within one year, the provisional application simply becomes abandoned. Provisional applications are not published by the USPTO unless a corresponding non-provisional application is filed.
Public disclosure of an innovation is any public written or oral communication that describes the innovation in detail. Publications that are “enabling” (i.e., would allow one of ordinary skill in the art to arrive at the same invention without undue experimentation) can disqualify one from receiving a patent. The term “publication” is broadly interpreted to include journal articles, posters, slides, talks, conference proceedings, abstracts on the Web, theses and dissertations that are available to the public, and discussions with corporate researchers and company personnel. Research group meetings that are not open to the public, non-public communications with a grant agency, and confidential discussions (including those with the UW C4C) are not public disclosures.
In the U.S., there is a one-year grace period for filing a patent application. That is, a patent application can be filed up to one year after an enabling public disclosure; after that, patent protection is unavailable. In most foreign countries, however, there is no grace period; once an innovation is publicly disclosed, patent protection is lost. Therefore, before publicly disclosing any innovation or discovery, researchers should first discuss intellectual property issues with the UW C4C.
Only individuals who made an inventive contribution to the subject matter claimed in the patent application are considered inventors. Individuals who have made other contributions, such as gathering essential data or constructing a practical embodiment of the invention, are not inventors unless they also made an inventive contribution. Similarly, a project supervisor is not entitled to inventor status simply because of his or her supervisory role; an inventive contribution is the singular criterion. The claims of the patent application legally determine who is and who is not an inventor. The patent claims should be used as a guideline for determining inventorship. For this reason, inventorship can change during prosecution of the patent application, as the claims are amended. Accurately identifying all the inventor(s) is a prerequisite for a valid U.S. patent.
Authorship on a scientific publication is not the same as inventorship. Authorship and inventorship have different criteria; simply being an author on a publication does not necessarily qualify an individual as an inventor. An inventor must have made an inventive contribution to the subject matter claimed in the patent application.
The order of the inventors listed on a patent has no legal significance, nor does it have any relationship to the individuals’ contribution to the invention.
According to the UW Intellectual Property Policy, employees and students are required to do everything reasonably required to assist the UW in obtaining, protecting, and maintaining patent or other proprietary rights. This generally includes being available for a disclosure meeting to discuss your invention, reviewing a draft of the patent application, and responding to questions as they arise during patent drafting and prosecution.
Obtaining and managing patent rights for an invention is very expensive. For example, a U.S. patent can cost a total of $30,000 to $50,000 over its 20 year life. When a commercial partner is identified early (e.g., before a patent application is filed), that commercial partner often pays the patenting costs. However, even if a commercial partner has not been identified, the UW C4C may incur the patenting costs if there is a reasonable likelihood that those costs can be recovered from a commercial partner later.
See this page on Navigating IP Policy for a list of contacts at UW C4C who can answer your patent questions.
32. What are confidential disclosure (CDA) or non-disclosure (NDA) agreements and why are they important?
A confidential disclosure agreement (CDA), sometimes called a non-disclosure agreement (NDA), is a legal document for the protection of proprietary information. Such a document is necessary before any transfer of proprietary information is made from one party (such as a university researcher) to another (such as a corporate representative). Otherwise, the transfer of proprietary information, even in a casual conversation, could legally be considered a public disclosure. In the worst case, such a disclosure could allow the individual or company to whom this information was disclosed to use or transmit to others your confidential information, thus placing the invention in the public domain. This would preclude the possibility of obtaining intellectual property protection. It is important to contact the UW Center for Commercialization before disclosing any confidential proprietary information to another party. For a confidential disclosure agreement (CDA) please contact the Technology Manager at the UW Center for Commercialization who is working with you or email the UW Center for Commercialization to talk to a Technology Manager.
Material Transfer Agreements
Material transfer agreements (MTAs) are contracts that cover the transfer of specific research materials into, or out of, the UW. Typically UW researchers exchange research materials with other institutions or corporate researchers.
Research materials that require MTAs are cell lines, cultures, transgenic animals, and pharmaceuticals, among others.
MTAs are important because they protect UW intellectual property rights, limit UW liability, and fairly credit the developer of the materials.
The Agreements Group within the UW Center for Commercialization manages most MTAs for the UW. If the MTA is embedded in a Sponsored Research Agreement, or is linked to a clinical trial, then the Office of Sponsored Programs (OSP) may be responsible for the MTA. The UW Center for Commercialization and OSP are the only units of the University authorized to review and sign MTAs.