Intellectual Property Terms

A license is simply a promise not to sue. In the context of intellectual property law, licenses are usually granted in exchange for royalty payments or as a settlement to a countersuit for infringement. There are two main types of licenses:

• Exclusive: a grant to a single party to exclusively make or sell a licensed invention. This type of license typically allows for higher upfront licensing fees and better royalty rates because it disallows the licensing of the invention to anyone else while the license agreement is valid.
• Non-Exclusive: a grant to a single party to make or sell a licensed invention. This is the more common method of licensing an invention. This is because it allows the licensor to issue licenses to multiple parties to further the use of the invention. These licenses, however, are issued with some restrictions. The most common restrictions are ‘field of use’ and ‘territory’. A ‘field of use’ restriction would only allow the licensee to sell the invention to a particular industry such as steel producers while a ‘territory’ restriction limits the physical area that a licensee can sell an invention such as a state or the Midwest.

An NDA is a legal document that allows for the disclosure of an invention to a party who agrees not to disclose details of the invention that might remove its patentability. This is typically used when trying to locate a potential licensee for an invention before it is protected by patent rights.

In return for disclosing an invention to the public, an inventor is awarded a twenty year legal monopoly, measured from the filing date of the patent application. The patent grants the patent owner the right to exclude others from making, using, selling, or offering to sell the invention throughout the U.S., or importing the invention into the U.S.

A patent bar is an activity that removes the right to patent an invention. This can occur via public disclosure or a sale of an item. In the US, you can file for a patent up to one year after having publically disclosed or sold an invention. However, foreign countries tend to be more strict and most require that a priority patent application be filed before any such disclosure. A disclosure can occur through publication in journal articles, open seminars, and even e-mail. To ensure global patentability, it is best to file an initial patent application before publically disclosing or selling an invention.

Statements included in a patent that describe (or recite) the structure of an invention in precise and exact terms, using a long-established formal style and precise terminology. Claims form the boundaries of an invention much like a deed describes the boundaries of real property. They may be broad or narrow in terms of the scope of the invention they address. The greater the scope of the invention defined in the claims (that is, the broader the claims), the wider the reach of the patent.

An international treaty that facilitates foreign patent filings for residents of member countries when obtaining patents in other member countries. Member countries include all European countries, Mexico, Canada, China, Japan, Korea, Russia and many other industrialized countries. No certified copies of the original application are needed and most expenses are delayed until two and a half years after the original filing. This is not a patent application but, rather, a means to declare intent to file in other countries covered by this treaty. A PCT application sets the priority date for all member countries. This must be followed up by entering the national stage of each member country in which one would want to secure a patent.

All utility patents which issue from applications filed on and after December 12, 1980 are subject to the payment of maintenance fees which must be paid to maintain the patent in force. These fees are due   3 ½ ($800), 7 ½ ($1,800), and 11 ½ ($3,700) years from the date the patent is granted. The listed fees are for small entities which ISU is as determined by the US Patent & Trademark Office (USPTO).

Patents are valid for a period of 20 years following the initial submission of the patent application. This term is only valid if the applicable maintenance fees are duly paid.

A utility patent protects the functional aspects of an invention and not the ornamental features as does a design patent.  Utility patents protect new software, mechanical items, chemical formulations, methods and processes that are new, useful and non-obvious.

A provisional patent application is a quick and inexpensive way for inventors to establish a U.S. filing date for their invention which can be claimed in a later filed non-provisional application. A provisional application is automatically abandoned twelve months after its filing date and is not examined. An applicant who decides to initially file a provisional application must file a corresponding non-provisional application during the 12-month pendency period of the provisional application in order to benefit from the earlier provisional application filing.

A design patent is directed to an ornamental design for an article of manufacture. A design may consist of surface ornamentation, ornamental configuration of combination thereof. Design patents can also cover computer displays and icons which are non-functional. The term of a design patent is 14 years and there are no maintenance fees.

A plant patent is granted by the Government to an inventor (or the inventor's heirs or assigns) who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. The grant, which lasts for 20 years from the date of filing the application, protects the inventor's right to exclude others from asexually reproducing, selling, or using the plant so reproduced. This protection is limited to a plant in its ordinary meaning:

• A living plant organism which expresses a set of characteristics determined by its single, genetic makeup or genotype, which can be duplicated through asexual reproduction, but which cannot otherwise be "made" or "manufactured."
• Sports, mutants, hybrids, and transformed plants are comprehended; sports or mutants may be spontaneous or induced. Hybrids may be natural, from a planned breeding program, or somatic in source. While natural plant mutants might have naturally occurred, they must have been discovered in a cultivated area.
• Algae and macro fungi are regarded as plants, but bacteria are not.

All subject matter (patents, publications, etc.) bearing on the novelty and non-obviousness of a claimed invention. This is all the relevant publications, patents, and products that are reviewed in order to assess the patentability of a new invention.

An international treaty that enables residents of member countries to file patent applications in other member countries. A Paris Convention patent application must be filed within one year of the original (home country) patent application, and it must be accompanied by a certified copy of the original application and a translation into the language of the foreign country. If a patent application is to be filed in three or four foreign countries, the Paris Convention is usually less expensive than the Patent Cooperation Treaty. However, if patent protection is sought in all seventeen (17) countries of Europe, for example, more savings are realized if the Patent Cooperation Treaty is used.

A trade secret is information that is kept confidential and has commercial value. Examples include undisclosed inventions, technical and marketing data, and financial information. The recipe for Coca Cola is a well-known example of a trade secret.

A technology transfer office handles invention disclosures from faculty members in an effort to promote widespread use of any invention. This office provides guidance to faculty pertaining to intellectual property, negotiates material transfer agreements, aids in the patenting and marketing of technologies, locates potential licensees, and negotiates licensing agreements. TTO’s are a service provider to faculty members. Faculty members are experts in their respective fields and TTO employees are helpful in bridging the gap between discovery in a lab and the commercial marketplace. The use of a technology transfer office is widely considered the best way to ensure an invention provides the greatest public benefit.

In order to be granted a patent, an invention must pass a series of tests or questions. Any invention must meet all of the below criteria in order to have a patent issued.

• Patentable Subject Matter: any new and useful process, machine, article of manufacture, composition of matter, or any improvement thereof. Mathematical methods, scientific theory, and items that would prove detrimental to society (weapons of mass destruction).
• Novel: the invention, or at least some aspect of it, must be new. It cannot have been previously disclosed through existing patents or publications.
• Useful: the invention must provide an industrial application or be of some use to society.
• Non-Obviousness: most often the hardest criteria to pass. The invention must not be readily apparent to someone with ordinary skill in the art to which the invention pertains. Example: suppose someone holds a patent for a ball point pen with black ink. If someone were to try and patent a ball point pen with red ink, they would likely get their patent claims rejected based on non-obviousness. This is because someone with ordinary skill in the art of making ball point pens would likely come to the conclusion that different colored inks could very well be used instead of black.

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. The Nike swoosh symbol and the McDonald’s Arches are two common examples of trademarks.

USPTO is the abbreviation for the United States Patent and Trademark Office. It was known as the United States Patent Office until 1975. This office is responsible for the examination and issuance of US patents and trademarks.