Intellectual Property for Engineering

8/20/2019 Intellectual Property for Engineering

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otecting Your Intellectual Properti

RPItechnology.com

Khaled Abul-09/13/15


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Learning objectives:

1)hat is, and ho! to obtain an intellectual"ro"ert# $%P)&')h# #ou need to (no! about %Ps&)*ensselaer+s %P guidelines or students.)Patents/ rights, inringe0entdesign around,"rosecution, inventorshi", o!nershi", and

re2uire0ents,re

2uire0ents,3)Prior art search,

4)Patent 5lai0s,6)Patent value,7)5o"#rights,8)9rade secrets,

1)9rade Mar(s,


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“Intellectual Properties”

What do technology-basedentrepreneurs generally need to

ensure a sustainable competitiveadvantage?


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What is an intellectual property (IP)?

● Legal rights to non-tangible products

of the human mind or intellect.

Patents,

Copyrights,Trademarks

Trade ecrets

!PItechnology"com


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How do !e havedo !e have use getuse getaround %Ps&around %Ps&

Like a personal property, you can ! Invent"create

! License ! #ircumvent $design around% ! In&ringe $'illing to go to court%

! Wait &or e(piration $e.g., Pro)ac%


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h# do % need to (no!h# do % need to (no!

about %Ps&about %Ps&

To claim credit for your work


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h# do % need to (no!h# do % need to (no!about %Ps&about %Ps&


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Entrepreneurs = 0.3 of you looking for sustainable

competiti!e ad!antage.


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"orking for others = #a$ority


10/52%&' and () realties

h# do % need to (no!h# do % need to (no!about %Ps&about %Ps&


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h# do % need to (no!h# do % need to (no!about %Ps&about %Ps& The film (Flash of Genius-2008) idea is derived from patentla terminolo!"# in effe$t from 19%1 to 1952# that ar!ued theidea for an invention $ould $ome to someone out of nohere*i.e. ob!ious+ and ithout "ears of or&in! on it 'eforehand

Ford offered o'ert *earns a +30m settlement# ith noadmission of ron!doin! on Ford,s part

o'ert refused# $ourt de$ided that Ford,s infrin!ement asnot deli'erate 'ut aarded him +101m and the ri!ht to $laimhis invention as his on

o'ert later sued hr"sler and on +18.m

Flash of Genius - Traile


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;our rights and Duties in ;our rights and Duties in*P%*P%


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,uidelines for tudent reated () at %ensselaer

tudents at %ensselaer are obligated under

%ensselaer/s (ntellectual )roperty *()+ )olicy to

1 #aintain a notebook documenting all research theyparticipate in2

1 'ownload2 fill an in!ention disclosure form from

www.rpitechnology.com2

1 ubmit disclosure to T4%)(.edu as soon as

practicable21 upport the ownership and protection of %ensselaer/s ()

including the e5ecution of documents necessary to

effectuate that () ownership and protection.


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%ensselaer/s wnership of (ntellectual )roperty

%ensselaer owns () if

#) u$%ect to a sponsored research or other agreement

re&uiring o'nership to reside in some other party

including !ensselaer,

) Conceied, created, deeloped, or *irst reduced to

practice 'ith igni*icant +se o* !ensselaer !esources,

) Conceied, created, deeloped or *irst reduced to

practice as a direct result o* his-her duties at !ensselaer"


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ignificant 6se of %ensselaer/s %esources defined

. /ny use o* !ensselaer personnel or *acilities

including0

pace, *unds, e&uipment, *acilities or serices, employee on1the1%o$ time,

la$oratories, computers, so*t'are, paid student time, (e"g" research

assistants, teaching assistants, *ello's, students 'ho proide

serices under sponsor agreements that re&uire !ensselaer

o'nership) attending, participating in or $ene*iting *rom a !ensselaercourse, the superision o* a *aculty or sta** mem$er, con*idential

in*ormation or !ensselaer1o'ned Intellectual Property (such as

Tangi$le !esearch Property (T!P)), !ensselaer organi2ed so*t'are

deelopment pro%ects or recordings o* presentations o* Course

3aterials"


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For self-sponsoring students only who made

significant use of %ensselaer/s resources

(f interested in graduating with a pro!isionalpatent and a license from %)(7

e poli$" for students tudent pa"s for provisional patent $ost andorldide li$ense fee 4+%35#

tudents responsi'le for prose$ution $osts# o reuired annual fees '" # o ro"alt" reuired until annual !ross sales rea$h+1m6 17 ro"alt" is due


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(s there is any benefit to disclosing in!entions2

and gi!e ownership of my () to %)(7

8es9 ha!ing %)( as an assignee rather than :

person*s+; deters potential infringers.


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Patents

(ssued by the 6.. )atent & Trademark ffice*6)T+2 which is part of the 'epartment ofommerce

)atents are contracts between the federal

go!ernment2 on behalf of the public2 and thein!entor*s+ for a time-limited monopoly

- )atents gi!e owners the e5clusi!e right to :e5clude others;

from making2 using2 offering for sale2 selling and


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*ights, %nringe0ent,

5ircu0ventionDesign around

atent 1 rodu$t 2 rodu$t 3 rodu$t %

ot infrin!in!limination: nfrin!in!

ot infrin!in!u'stitution:

)roduct 3 needs to take a license from patent > holder


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Patent 4a' 1 Types

6tility patents

-o!er a combination of elements2 a set of processes2

steps2 or a product made by a specified process.

- ?0 years from date of filing

'esign patents

-o!er ornamental appearance of an article that is

separable from its functionality

- >@ years from the date of issue

)lant patents

-o!er in!entions


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Patentable *ub+ect atter

#achines

Articles of manufacture

omposition of matter

)rocesseso!ers method of making or using something

o!ers software where the process is tied to a particular

machine or transforms a particular articleBusiness methods are sub$ect to same rules as other

processes


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What #ant e Patented

Abstract ideas

Laws of nature or fundamental scientific principles

)roducts occurring in nature

#athematical algorithms and computationalprocedures *in the absence of an actual application+

For an in!ented process to be patent-eligible *such

as a business method+ it must be either :tied to aparticular machine or apparatus; or :transform anarticle from status to another;.


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Patent Re/uirements

:Cery important to document the followings in yournotebook;

'ate of onception

'ate of %eduction to )ractice

(n!entors lab notebooks are critical to pro!ing first in!ention ;6se permanently bound notebooks

;ign and date notes and sketches

;(f possible2 ha!e a witness countersign *learned witness+

;%ecord discussions from lab meetings

;Dote ideas or suggestions made by others and document their names


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Patent Re/uirements

)ublic disclosure of in!ention2 or selling or offering to sell thein!ention *before filing a patent application+

)rohibits foreign filings international rights are lost

tarts a > year clock for a 6 filing2 after which filing is barred

File for patent protection or obtain a onfidential 'isclosure Agreement before

)ublications

)resentations

"eb )ostings

orporate )roposals

)ublication of a public grant


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0he Patent 1pplication Process

6 )ro!isional Application )rocess uick & heap

nly places a holder *> year+ and establishes a priority date

Do claims reuired

6 Don-)ro!isional Application )rocess - E5pensi!e & Long *3-G 8ears+

; #ust disclose and describe the best mode contemplated by thein!entor of carrying out the in!ention

; pecification *Technical+ Background2 ummary2 'escription of

'rawings2 and 'etailed 'escription of (n!ention.; laims “5e*ine the metes and $ounds o* the parcel o* IP you seek to

o'n"”

Foreign

)atent ooperation Treaty *)T+


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What is 2Patent Inventorship3?

(n!entors are only those who concei!e of the ideas embodied

in the claims of the patent9 reduction to practice is not

in!entorship.

onception is the formation in the mind of the in!entor*s+ of a definite andpermanent idea of the complete and operati!e in!ention

olleagues2 mentors2 ad!isors2 department chairs2 students and researchassistants are not co-in!entors unless they concei!e of part of the claimedin!ention

(f claims are dropped or re$ected during patent prosecution2 in!entorshipmay change2 as certain in!entors may ha!e contributed only to certainclaims

(ncorrect designation of in!entorship could result in patent

in!alidation.


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What is 2Patent Inventorship3?

Legal in!entorship authorship of a $ournal article'isco!ering2 defining2 or discussing a problem is not

in!entorship2 nor is suggesting a desired result withoutconcei!ing of the corresponding idea or solution

Assisting in!entor in reducing the in!ention to practice is notin!entorship2 nor is contributing ob!ious elements and


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Patent


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Rules o& Patentability

What do patent e(aminers look&or?

>+ 6tility?+ Do!elty

3+ Don-ob!iousness


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What are the rules o&

patentability?>+ 6tility (n!ention must be useful and ha!e some application or utility for

users.

Toilet with a disk sliding bench top


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?+ Do!elty(n!ention must be new and no!el. Dew uses of knownprocesses2 apparatus2 compositions of matter and materialsare also patentable. Further2 incremental improements of a

known machine or process are patentable if satisfying thefollowing condition

Light Bulb hanger


patentability?


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3+ Don-ob!iousness *the acid test+(n!ention cannot be :678I6+” to a person ha!ing HordinaryskillH in the field of the in!ention.


patentability?

)illow "ith Arm Iole


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6$iousness9 a high hurdle:

Ahat is o'viousBCD an 'e lo!i$all" dedu$ed

D om'inations of hat is alread" &non to o'tain

predi$ta'le results6 1E1 2

D imple su'stitution to o'tain a predi$ta'le result

D ?se of &non te$hniue to improve similar devi$es

D ppl"in! a &non te$hniue to a &non devi$eD ppl"in! a &non te$hniue to a different field

(under mar&et pressure)

D >isten$e of some tea$hin!# su!!estions# or motivation

to invent

B Jearns !s Ford imilar to E) and K)2 the 6)T is gradually getting tougher on

incremental inno!ations.

G0 of patents in litigations are in!alidated for ob!iousness.


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35

@>#id 8ear

?00


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4bviousness5 a highhurdle6

'ad addle ,eek )ouchBicycle-lawn mower


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Tough on engineers, 'ait to hear this one

*or scientists;

Choosing *rom a *inite num$er o* identi*ied, predicta$le

solutions, 'ith a reasona$le e i* ##@, the latter is easier, $ut design around is

$est i* o$taining patent is not essential:


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"hen and why should ( carry out a patent

search7 Literature and patent searches should be conducted before any

research pro$ect is initiated in order to a!oid duplication of research

and intellectual property.

:)rior art; search enables anticipation of

ob$ections to claims.

Allows circum!ention *design around+.

'etermines the acti!ities of competitors.


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Iow do ( carry out a patent search7

The method used depends on the ob$ecti!es of the search.

The most common reason for carrying out a patent search is to

determine no!elty.

)atent searching can be a long2 complicated procedure and the

results are largely dependent on the keywords used.

Best to use broad search terms initially to ensure identification ofall rele!ant prior art *modify your key words as much as

possible+. Iits must be e5amined to determine whether they

o!erlap with your in!ention2 then identify other prior art

documents that ha!e been identified in the search reports.


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Resources &or Patent *earches

,oogle )atents www.google.com


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*eading Patents-7o to 7oogle Patents www.google.com/advanced_patent_search

◙ If you are filing a patent:

- Skip reading claims and concentrate on specification (under “detailed description” or

“description of the preferred embodiment”). Anything in specs, regardless of whether it is

being claimed or not, is considered prior art, hence no longer patentable (obious).

- !se the "nternational ("nt. #".) and !S #lassifications (!.S. #.".) to search for more prior

art.

- $ook for your noelty (patents) and non-obiousness (non-patent literature) against prior art.

◙ If you are circumventing a patent:

- %ead specific patent claims against your inention&idea and think of how not to use all

elements or use none'uialent substitution (substantial same function, substantial same way,

resulting in same result). #heck out prior history of patent from ublic air.


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*ights, %nringe0ent,

5ircu0ventionDesign around

atent 1 rodu$t 2 rodu$t 3 rodu$t %

ot infrin!in!

limination:nfrin!in! ot infrin!in!

u'stitution:

)roduct 3 needs to take a license from patent > holder


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,uidelines for 'rafting )atents by 8ourself

laims are ritten in spe$ifi$ le!al formal lan!ua!e to des$ri'e$ertain $hara$teristi$s of an invention#

Final draftin! of $laims should 'e done '" e>perts (te$hni$al#le!al# and 'usiness) and ill affe$t "our patent valuation#

>er$ise ritin! spe$ifi$ations as a te$hni$al report to help "ouand "our le!al $ounselor to understand 'est draftin! strate!"

ill save "ou mone"#

?se the FH prin$iple (features# advanta!es# 'enefits) to

emphasis "our 'usiness model


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Ho! 0uch #our clai0s are

!orth& )atent Calue = re!enue 5 discount rate

'iscount rates

- cope = ?0

- tatus = ?G

- 'etectability = ?G

- wnership= ?0

- ircum!ention = G0- Enforceability = ?G

- Calidity = ?G

- Freedom to operate = >0

- )roduction = 33


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#opyright La' Protects

Literary works

#usical works and accompanying words

'ramatic works and accompanying music

)antomimes and horeographic "orks

)ictorial2 graphic and sculptural works

#otion pictures and other audio!isual works

ound recordings

Architectural works

Also

ompilations

'eri!ati!e works


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#opyright 8 Re/uirements 9 Rights

Copyright 6'nership Author owns the work :not contractual;

"ork made for hire :contractual;

; Employees

; (ndependent contractors for specially ordered orcommissioned works

%euirements ; riginal work of authorship

; Fi5ed in a tangible medium of e5pression *i.e.2 paper2'2 'C'+


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#opyright - est Practice

Add copyright notice to all works that are created

I(Date of Creation) (Author’s Name)

%egister with 6.. opyright ffice within three *3+ monthsof publication to obtain Attorney/s fees and tatutorydamages *)resumes ownership and need to be registeredto bring suit+


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0rade *ecret

A trade secret is any information that pro!ides thebusiness owner a competiti!e ad!antage9 formula2 de!ice2compilation of data such as customer lists or source code

)rotected under state law9 there are no federal trade secretlaws

Employees cannot use employer/s trade secrets for theirown benefit2 nor can third parties

To retain status as a trade secret2 reasonable means mustbe taken to maintain secrecy

; 6nlike patents and trademarks2 trade secrets are onlyprotected when they are not disclosed

wner runs the risk that trade secrets can be disco!eredby third parties by fair means *e.g.2 re!erse engineering+


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0rademark

Any word2 phrase2 symbol or de!ices used to identify and distinguish

goods and ser!ices from those manufactured and sold by others

er!ice #ark ame definition2 e5cept used to describe ser!ices ratherthan goods

Trademarks operate on a :first to use in commerce; basis2 which mustbe pro!en to determine rights in the case of competing marks

6se T# or # designation

#ust use trademark in commerce to ualify for registration

)osted Federal %egistration use N

'o not use trademark as a noun2 but as an ad$ecti!e

; Band-AidN Brand Adhesi!e trips

; CisaN redit ard

O 6)T Trademark earches www.uspto.go!


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hat t#"es o %Ps arehat t#"es o %Ps are

these&these& Ji$rosoft sour$e $ode

Pentium microprocessor

Gatorade

o$a ola


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Intellectual Property Resources

Learn #ore about ()

6)T (n!entor %esources

http


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