Frequently Asked IP Questions
“What is intellectual property? Who should own it?”
IP is (currently) a social and economic construct designed to maximize profit for capitalists. (Its precise nature changes shifts in technologies, economies, etc.) Whether or not something is considered a “valid” (legal) form of IP depends on whether or not one can extract surplus value from it in capitalist exchange. (There’s no *intrinsic* value in IP; it has to be created and sustained continuously.) Corporations, for example, typically exercise much greater IP rights than factory workers or housekeepers. Consider the relatively recent–and still rare, I think–case of students’ rights to their own work. The question of “should” is difficult, because entering into an economic relationship–by agreeing to call it “property”–constructs a relationship that is easily absorbed by late capitalist interests. Although capitalists frequently portray IP law as protecting the individual “investments” (of effort, time, money) of specific inventors, in most cases IP is owned by corporations. I think it would be interesting to play out IP as an individual possession (one that cannot be sold, which is where IP law started–the right was not transferable). Would corporations collapse if they could not purchase IP (patents and copyrights) on an open market (and could only exercise rights owned by individual employees, or only non-exclusive rights)?
In the United States there are three kinds of patent — utility patents, design patents, and plant patents. A patent permits its owner to exclude members of the public from making, using, or selling the claimed invention. Most countries of the world have patent systems, although the patent terms and types of patents vary.
In the United States, the term of a utility patent depends on when the patent application was filed. If the patent issued from an application filed prior to June 8, 1995, the term is the later of (1) 17 years from the date of issuance of the patent, or (2) 20 years from the first U.S. filing date for the patent. If the patent issued from an application filed on or after June 8, 1995, then the term is 20 years from the first U.S. filing date for the patent.
This complicated rule for the term of a utility patent is the result of the transition from the old term (17 years after issuance) to the uniform term prescribed by GATT (20 years after filing). It applies to all patents still in force on June 8, 1995. (If the details of this situation are important to you, we suggest that you seek the advice of competent counsel.)
Design patents in the United States have a term of 14 years, while plant patents have a term of 17 years.
A common misconception is that the patent gives its owner the right to make, use, or sell the invention. It only gives the owner the ability to exclude others from making, using or selling the invention. The patent owner may be forbidden from using the invention, usually due to the existence of another patent, or sometimes due to other legal restrictions.
What is a Patent?
A patent is a contract, created by statute, between the federal government and the inventor
Inventor agrees to make his discovery known to the public
Government agrees to grant inventor an exclusive right on his discovery for 20 years from the date of filing
What is Exclusive Right?
A Negative Right
Right to exclude others from making, using, offering for sale or selling the invention
Not an Affirmative Right
not a right to make, use, offer for sale or sell the invention
What is patentable?
Any new and useful:
– Manufacture (article)
– Composition of matter
– Useful improvement thereof
Requirements for a Patent
– New (novelty)
– Useful (utility)
Invention must be Novel
– Did others know of or use your invention in the U.S. before you invented it?
– Did someone patent or publish your invention in the U.S. or another country before you invented it?
– Did anyone patent or publish your invention anywhere more than one year before you filed your patent application?
– Did you sell products of your invention or offer to sell such products more than one year before you filed your patent application?
Are the differences between the invention and the prior art such that the invention would have been obvious at the time the invention was made to one of ordinary skill in the art?
Patent must be Enabling
•The patent application must describe the invention in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains to make and use the invention.
•The patent application must set forth the very best embodiment of the invention known to the inventor at the time the patent application is filed.
(BEST MODE REQUIREMENT)
Duty of Disclosure
The applicant has an affirmative duty to disclose to the U.S. Patent and Trademark Office any information that is relevant to the patentability of the invention.
Research Data Books
– It is the personal and professional obligation of each employee engaged in:
or any function that generates proprietary technical information and data to properly, and completely, record technical information and concepts he/she develops.
Research Data Books
Record where? why?
Such information and data are recorded in Research Notebooks or Record Books which are generated for the sole purpose of providing:
A permanent provable record. of:
1. Ideas and concepts conceived separate from or in conjunction with Research problems and projects.
2. Technical information and experimental data generated in conjunction with Research conducted in the development, evaluation, and testing of these ideas and concepts.
Data books – if properly kept –
¬Will provide Company with a permanent record of its technology.
Will define and support inventions to keep us ahead of competition.
Will give proof and corroboration of the work carried out and establish when the work was done. That means:
Legal Credibility, Retrievability, and Documentation of Concepts and Data
For – Reports
– Patent Applications
– Product Registrations
– and the like.
What are Trade Secrets?
Information which, if known to competitor, could provide them with unfair competitive advantage — look at ownership, confidentiality, use or disclosure, injury and competitive advantage in evaluating trade secrets.
Bottom Line: Confidential information, not generally known in industry, used to maintain and to develop business.
lists, requirements, payment history, personal history, personal information on contact people, methods of purchasing goods/ services; pricing information for particular customers.
marketing, expansion, contraction, target markets, hiring, takeover targets, new products/services, inventions, and discoveries
performance history, projections, strong and weak points
formulas, processes, and special training methods
Other Confidential Business Information
business allies, specific projects, employee — related problems, management — problems, etc.
Trade Secrets (TEST)
1. Must be a secret (not in the public domain)
2. Must be commercially valuable and provide advantage
3. Must be effectively protected by The Company programs
What does “obvious” and “unobvious”/”nonobvious” mean in the patent law?
There is much misunderstanding over what “unobvious” means in the context of U.S. patent law. The level of unobviousness required to render an invention patentable is a function of the particular art area containing the invention. An experienced patent attorney or agent will often be able to give some indication of the likelihood of a particular invention being held obvious or unobvious. In some cases the unobvious part of an invention (the part that renders the invention patentable) is simply identifying the problem, even if the solution is obvious once the problem has been identified.
1. Who is an author?
Under the copyright law, the creator of the original expression in a work is its author. The author is also the owner of copyright unless there is a written agreement by which the author assigns the copyright to another person or entity, such as a publisher. In cases of works made for hire, the employer or commissioning party is considered to be the author.
2. What is a deposit?
A deposit is usually one copy (if unpublished) or two copies (if published) of the work to be registered for copyright. In certain cases such as works of the visual arts, identifying material such as a photograph may be used instead.
3. What is publication?
Publication has a technical meaning in copyright law. According to the statute, “Publication is the distribution of copies or phone records of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phone records to a group of persons for purposes of further distribution, public performance, or public display constitutes publication. A public performance or display of a work does not of itself constitute publication.” Generally, publication occurs on the date on which copies of the work are first made available to the public.
4. What is a copyright notice? How do I put a copyright notice on my work?
A copyright notice is an identifier placed on copies of the work to inform the world of copyright ownership that generally consists of the symbol or word “copyright,” the name of the copyright owner, and the year of first publication, e.g., ©2003 John Doe. While use of a copyright notice was once required as a condition of copyright protection, it is now optional. Use of the notice is the responsibility of the copyright owner and does not require advance permission from, or registration with, the Copyright Office.
5. What is copyright infringement?
As a general matter, copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner.
6. Where is the public domain?
The public domain is not a place. A work of authorship is in the “public domain” if it is no longer under copyright protection or if it failed to meet the requirements for copyright protection. Works in the public domain may be used freely without the permission of the former copyright owner.
How Long Does Copyright Protection Last?
1. How long does a copyright last?
The term of copyright for a particular work depends on several factors, including whether it has been published, and, if so, the date of first publication. As a general rule, for works created after Jan. 1, 1978, copyright protection lasts for the life of the author plus an additional 70 years. For an anonymous work, a pseudonymous work, or a work made for hire, 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. For works first published prior to 1978, the term will vary depending on several factors. To determine the length of copyright protection for a particular work, consult chapter 3 of the Copyright Act (title 17 of the United States Code). More information on the term of copyright can be found in Circular 15a, Duration of Copyright, and Circular 1, Copyright Basics.
2. Do I have to renew my copyright?
No. Works created on or after Jan. 1, 1978, are not subject to renewal registration. As to works published or registered prior to Jan. 1, 1978, renewal registration is optional after 28 years but does provide certain legal advantages. For information on how to file a renewal application as well as the legal benefit for doing so, see Circular 15, Renewal of Copyright, and Circular 15a, Duration of Copyright.
3. How do I get permission to use somebody else’s work?
You can ask for it. If you know who the copyright owner is, you may contact the owner directly. If you are not certain about the ownership or have other related questions, you may wish to request that the Copyright Office conduct a search of its records or you may search yourself. See the next question for more details.
4. How can I find out who owns a copyright?
We can provide you with the information available in our records. A search of registrations, renewals, and recorded transfers of ownership made before 1978 requires a manual search of our files. Upon request, our staff will search our records at the statutory rate of $75 for each hour. There is no fee if you conduct a search in person at the Copyright Office. Copyright registrations made and documents recorded from 1978 to date are available for searching online. For further information, see Circular 22, How to Investigate the Copyright Status of a Work, and Circular 23, Copyright Card Catalog and the Online File.
5. How can I obtain copies of someone else’s work and/or registration certificate?
The Copyright Office will not honor a request for a copy of someone else’s protected work without written authorization from the copyright owner or from his or her designated agent, unless the work is involved in litigation. In the latter case, a litigation statement is required. A certificate of registration for any registered work can be obtained for a fee of $30. Circular 6, Access to and Copies of Copyright Records and Deposit, provides additional information.
6. How much of someone else’s work can I use without getting permission?
Under the fair use doctrine of the U.S. copyright statute, it is permissible to use limited portions of a work including quotes, for purposes such as commentary, criticism, news reporting, and scholarly reports. There are no legal rules permitting the use of a specific number of words, a certain number of musical notes, or percentage of a work. Whether a particular use qualifies as fair use depends on all the circumstances. See FL 102, Fair Use, and Circular 21, Reproductions of Copyrighted Works by Educators and Librarians.
7. How much do I have to change in order to claim copyright in someone else’s work?
Only the owner of copyright in a work has the right to prepare, or to authorize someone else to create, a new version of that work. Accordingly, you cannot claim copyright to another’s work, no matter how much you change it, unless you have the owner’s consent. See Circular 14, Copyright Registration for Derivative Works.
8. Somebody infringed my copyright. What can I do?
A party may seek to protect his or her copyrights against unauthorized use by filing a civil lawsuit in federal district court. If you believe that your copyright has been infringed, consult an attorney. In cases of willful infringement for profit, the U.S. Attorney may initiate a criminal investigation.
9. Could I be sued for using somebody else’s work? How about quotes or samples?
If you use a copyrighted work without authorization, the owner may be entitled to bring an infringement action against you. There are circumstances under the fair use doctrine where a quote or a sample may be used without permission. However, in cases of doubt, the Copyright Office recommends that permission be obtained.
How long before a public disclosure is made do I have to file a patent?
If you are apply for a patent in the US only? You have 12 months to file
If you are patent in Europe or Asia. You must apply prior to public disclosure