This terminology is designed to be a resource for faculty and staff to better understand some of the elements of intellectual property and the technology transfer process. If you have any questions, please contact AT_inventions@IllinoisState.edu for assistance.
The law switched the U.S. rights to a patent from the previous "first-to-invent" system to a "first inventor-to-file" system for patent applications filed on or after March 16, 2013. The law also expanded the definition of prior art used in determining patentability. Actions and prior art that bar patentability under the Act include public use, sales, publications, and other disclosures available to the public anywhere in the world as of the filing date, other than publications by the inventor within one year of filing (inventor's "publication-conditioned grace period"), whether or not a third party also files a patent application. The law also notably expanded prior art to include foreign offers for sale and public uses
When an invention is improved after a patent application disclosing the invention has been filed, a new patent application, known as a Continuation-In-Part, and abbreviated as C-I-P, is filed to include the improvement. Prior art that arose after the filing date of the original patent application but not after the filing date of the C-I-P can be cited against the C-I-P.
Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. The copyright protects the form of expression rather than the subject matter of the writing. 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 are registered by the Copyright Office of the Library of Congress.
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. An example of this would be the iMac computer. Its ornamental design and bright colors allowed for it to be protected by a design patent. It should be noted, however, that if there were still a patent on the computer itself, Apple would have had to acquire a license to sell computers from the patent holder in order to sell an iMac since the functionality of the iMac, instead of the ornamental design, would be protected by patent.
Examiners are employees of the U.S. Patent & Trademark Office who conduct prior art searches and determine whether the patent application complies with the substantive and procedure requirements for the grant of the patent.
In a first to file patent system, the grant of a patent for an invention lies with the first to file a patent application. This is irrespective of who developed the invention and when it was developed. This means that potentially patentable work must be kept somewhat confidential until patent protection is obtained.
Intellectual property (IP) is an intangible creation of the human mind, usually expressed or translated into a tangible form, which is assigned certain rights of property. Examples of intellectual property include an author's copyright on a book or article, a distinctive logo design representing a soft drink company and its products, unique design elements of a web site, or a patent on a particular process to, for example, synthesize a drug.
An invention is a new and useful machine, article of manufacture, composition of matter, process, or any new use of the same that is described and/or claimed in a patent or patent application.
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:
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:
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.
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.