What is a patent?
- A patent is a property right issued by the United States Patent and Trademark Office. Generally, the term of a patent is 20 years from the date when the application for the patent was filed in the United States. U.S. patents are effective only within the United States and U.S. territories. Under certain circumstances, the patent term may be extended or adjusted.
- The right created by the patent is "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. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.
There are three types of patents:
Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
- Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
- Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
What can I patent?
- Any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent," subject to the conditions and requirements of the law. "Process" is defined by law as a process, act, or method, and primarily includes industrial or technical processes. "Manufacture" refers to articles that are made, and includes all manufactured articles. "Composition of matter" relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.
- The patent law specifies that the subject matter of the patent application (the invention) must be useful, novel, and non-obvious. "Useful" means that the invention has a useful purpose and is properly functional. "Novel" means that the invention is new and has not been sold, publicly disclosed or used, or described by a previous patent or patent application. "Non-obvious" means that the differences between the new invention and any existing inventions are sufficiently different to be non-obvious to a person of ordinary skill in that technical field.
What is a copyright?
- Copyright is a form of protection for original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works.
What can I copyright?
- Copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights may be registered by the Copyright Office.
What is a trademark?
- A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks.
- Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks that are used in interstate or foreign commerce may be registered with the USPTO.
What can I trademark?
- A trademark typically protects brand names and logos used on goods and services.
- Once you determine that the type of protection you need is, in fact, trademark protection, then selecting a mark is the very first step in the overall application/registration process. This must be done with thought and care, because not every mark can be registered with the USPTO.
- Some factors to consider when choosing a mark to register are likelihood of confusion with other marks, strength of the mark, and marketability.
- "Likelihood of confusion" is determined by analyzing both the similarity of marks and the relatedness of the goods and services to which the marks apply. The greater the likelihood of confusion, the less likely the USPTO will grant protection of your mark.
- "Strength of mark" refers to how easily the mark will allow you to prevent third-party use of your mark. The strongest and most likely registrable marks are fanciful or arbitrary, using either invented words (e.g. BELMICO for "insurance services") or existing words with no natural connection to the goods or services provided (e.g. BANANA for "tires"). Suggestive marks, which suggest but do not describe qualities or a connection to the goods or services (e.g. QUICK N' NEAT for "pie crust"), are also considered strong marks that can be registered. Descriptive marks (e.g. CREAMY for "yogurt") and generic marks (e.g. BICYCLES for "retail bicycle stores") are very weak and rarely registrable.
- "Marketability" considerations include whether the public is likely to be able to remember, pronounce, and spell the mark. If you plan to market your goods or services outside the United States under the same mark, consider whether the U.S. mark might have another meaning when translated into a foreign language, particularly if, for example, the translated word could be considered offensive.
What is a trade secret?
- Trade secrets consist of information and can include a formula, pattern, compilation, program, device, method, technique or process. To be considered a trade secret, it must be used in business and give an opportunity to obtain an economic advantage over competitors who do not know or use it. If a trade secret holder fails to maintain secrecy or if the information is independently discovered, becomes released or otherwise becomes generally known, protection as a trade secret is lost. Trade secrets do not expire so protection continues until discovery or loss.
- Trade secret protection is an alternative to patent protection. Patents require the inventor to provide a detailed and enabling disclosure about the invention in exchange for the right to exclude others from practicing the invention for a limited period of time. Patents do expire, and when that happens, the information contained within is no longer protected. However, unlike trade secrets, patents protect against independent discovery. Patent protection also eliminates the need to maintain secrecy. While most anything can be kept secret, there are limitations on what can be protected by a patent. If a given invention is eligible for either patent or trade secret protection, then the decision on how to protect that invention depends on business considerations and weighing of the relative benefits of each type of intellectual property.
How are trade secrets protected?
- Trade secrets can be protected by treating the information as confidential. Measures to do this may include using passwords on computers where the information is stored, locking doors to labs, not leaving lab notebooks unattended in public spaces, and taking other reasonable safeguards to protect the information.
- To protect trade secrets, courts may order unauthorized parties that have disclosed (or misappropriated) a trade secret to take steps to maintain its secrecy, as well as order payment of a royalty to the owner. Courts can also award damages, court costs, and reasonable attorneys' fees. This protection is very limited because a trade secret holder is only protected from unauthorized disclosure.
Non-Disclosure Agreement (NDA)
- A non-disclosure agreement (NDA) is a contract that ensures that information is kept confidential while interested parties enter into initial discussions about specific processes, methods, or technology to determine if they should pursue future sponsored research activity. They are sometimes referred to as confidentiality or secrecy agreements.
- NDA's outline the responsibilities of each party with regard to confidential information. The parties, typically referred to as the disclosing party and the receiving party or recipient, are expected to maintain confidentiality of disclosed information, often for several years.
- NDAs are valuable to protect the ability to patent an invention, which can be compromised if a disclosure of the invention becomes public knowledge. If you are sharing new processes, unpublished data, or other confidential information, contact the TTO in order to prepare an NDA and protect your rights and information.
Material Transfer Agreement (MTA)
- A material transfer agreement (MTA) is a legal contract that controls the exchange of tangible materials, such as chemicals, software, plant- and animal-derived material, or research animals, between universities and other organizations for research purposes. The MTA defines the rights of the providing scientists, recipient scientists, and their respective organizations with regard to materials, derivatives, and inventions that may result from the use of the transferred material.
- MTA's ensure that:
- intellectual property rights of the receiving organization and the providing organization are addressed;
- special shipping and handling needs are met;
- a record of the types of materials entering or leaving DU is created; and
- health and safety risks are identified and properly addressed as required by law and DU policy.
- Before transferring resources between DU and other organizations or universities, contact the TTO to create a MTA so that you, DU, and the outside entity can keep track of what materials are being transferred and how they will be managed. You must have the necessary IRB or IBC approvals to request the materials. Please see Research Integrity with questions about these approvals.
Data Use Agreement (DUA)
- Similar to an MTA, a data use agreement (DUA) is a contract used to govern the transfer of non-public or restricted research data between organizations. DUA's are also similar to confidentiality agreements in that they restrict the use and disclosure of the data set. A DUA is established between a provider institution and recipient institution to document the data being transferred and to specify terms and conditions of ownership, permitted uses of the data, publication of results, development of inventions, disposal of the data and liability. Establishing conditions prior to the transfer of data avoids issues and misunderstandings after research has begun. Certain types of data, such as student data or human subject data, must be carefully protected as required by law.
- It is up to the data provider to determine whether a DUA is necessary in a given exchange. If a DUA is required, the agreement must be entered into before any use or disclosure of the data. If you plan to transfer data to or receive data from another organization, consult the TTO to make sure that a DUA is necessary and properly drafted.