Technology has always been very competitive. Increasingly businesses and corporations are searching for ways to leverage and exploit technology for financial gain. This includes an increasing emphasis on the discovery and protection of intellectual property. The scientists and engineers who create and generate new technology are instead very often highly focused on the technical objectives of their projects as opposed to the business aspects such as intellectual property. The nature and difficulty of the project objectives are frequently the sole professional motivation for a scientist. One common result is that new scientists and engineers are often unaware of the simple, basic procedural practices that can be a major benefit when and if their work later transpires into the creation of potentially valuable new intellectual property. The following is intended to help raise awareness and alert those people to at least some of the key issues which affect researchers. It is provided as free and lay advice concerning certain key issues which I have learned from experience as an inventor in sensors R&D and which affect the inventor. The following is not guaranteed to be complete or accurate at the time of reading. |
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PATENTS |
| Patent law is a specialized branch of law. Patent law is different in different countries and every once in a while it changes. The reader is strongly advised in all cases to consult with a patent attorney and especially at the outset of any R&D project, concerning the specifics relating to patent issues and preferred policies for conducting your particular R&D activities. Doing this early can help protect you from later grief. Having said this, many people will not consult a patent attorney until the last minute. US researchers are also encouraged to review the free patent law information available online at the US Patent & Trademark Office web site at http://www.uspto.gov/. |
| Intellectual property |
In the US, patents filed after about mid 1995 gave, if granted, the owner exclusive rights to use for a period of 20 years from the filing date. This is a change from the previous system which allowed 17 years from date of issue. The patent claims define and describe the intellectual property of the owner. Patent attorneys are qualified to explain the kinds of things which can and cannot be claimed and relate that to specific work. They should always be consulted to help define an appropriate claim strategy and at least help avoid errors due to incomplete or inaccurate filing. Nevertheless, broadly speaking, to be allowed, the claims as a whole must represent an advance in the art beyond that of ordinary or obvious skills and which has described advantages over the known prior art. It is necessary to have actually put into practice and to be able to describe an example of that which is claimed, or to be able to defend those aspects which have not been reduced to practice as evident to one of customary skills in the art. As an extension of this, it is occasionally possible and reasonable to patent ideas by themselves. |
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Types of patents |
| The intellectual property generated by scientists and engineers is usually most appropriately protected by utility patents. The USPTO definition of a utility patent is "....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." There are two other kinds of patents, of which I currently have no personal experience, namely, design patents, which as far as I understand are typically for ornamental designs, and so on, and plant patents, which have to do with botanical plants. |
| Prior art |
| Prior art includes anything which has been done and openly reported previous to the filing date. This includes, but is not limited to, earlier patents, published literature and commercial use. A key result of this is that publishing the results of an R&D project prior to filing a patent application can potentially jeopardize the application. The publication will establish prior art - even though it is your own work. Similarly, any reduction to practice significantly prior to patent filing must be for experimental, test or demonstration purposes only. Specifically, according to information currently available at the USPTO web site: "any public use or sale in the United States or publication of the invention anywhere in the world more than one year prior to the filing of a patent application on that invention will prohibit the granting of an U. S. patent on it..... The inventor must file on the date of public use or disclosure, however, in order to preserve patent rights in many foreign countries." In other words, it must not appear on the open market or be put into commercial use, even internally. In the US, provisional applications can now be filed and are useful for establishing an early effective filing date before the formal non-provisional application is completed, which must then be filed within 12 months. The filing date establishes precedence. Consult your attorney because dates and deadlines can be important and may not always be obvious. |
| Written records |
| This is a matter of discipline. Maintaining written records is a chore. However, written records such as signed, witnessed and dated, permanently bound, laboratory notebooks and sketches, (especially the first sketch and the first reduction to practice), and properly completed internal records of invention forms, substantially help establish inventorship, credibility and hence a legally defensible history. Such records are potentially useful for defending patents if infringement is charged or other disputes over issued patents or inventorship arise. Such records must clearly and adequately describe ideas and activities pertaining to the central aspects of eventual claims. Although useful to have, and expected to exist, such records are not officially required for a patent application and do not guarantee eventual ownership. However, in my opinion it is a mistake not to keep appropriately adequate written records of the progress of an R&D project. |
| Patent attorneys |
| Just as some patents are stronger than others, also some attorneys are better than others. If it is worth patenting, then it is worth tracking down and investing in a good attorney who also has experience in your general area. Your attorney can help you write the patent application. He/she will appreciate but does not absolutely need a well written disclosure from the inventor. He/she will advise on claims and translate these into claim language. Either you or the attorney can draft the claims. However, it is usually much better if the inventor at least identifies the independent claims. He/she can provide the written specification, take care of the filing and explain and assist in subsequent patent office actions. You will probably meet on several occasions. You need to be able to describe what you have done and identify what is new and wonderful about what you have done. This is vital. You must have a technical appreciation of what is currently done. You are the technical expert. Good attorneys are good at understanding and translating into legalese difficult technical concepts, but they are not professional scientists and engineers. He/she will want a review from you of the known prior art, especially with respect to the individual claims of earlier patents. Patent and literature searches are normally required. He/she will want to make your claims as broad and solid as possible and ask you to identify the preferred embodiment and consider the possibility of alternative embodiments. Once the claims are established he/she will then want to confirm who the principal and co-inventors are. He/she will be capable of rendering a judgment on inventorship if requested. Unlike selecting authors for a paper, inventorship is a purely legal matter. It should be possible to clearly connect the contributions of each inventor to one or more of the claims. |
| CONFIDENTIALITY / NDA AGREEMENTS |
| Confidentiality agreements, (also known as nondisclosure agreements / NDA's), are legal documents executed prior to disclosure of the information which is to be held in confidence and which detail or sufficiently specify the precise information to be held in confidence plus the terms of that agreement. In the course of a research project the outcome of which could potentially lead to new and valuable information, confidentiality agreements between potential owners of that information and others are customary devices for protecting that information when disclosure is necessary. For instance, they are frequently part of any agreement between a client and a consultant. However, it is good practice to nevertheless also be careful and guarded when it comes to disclosing valuable or potentially valuable proprietary information, regardless of the existence of an NDA or not. This may come as a shock if it happens to you personally, but be aware that not everyone or every company is trustworthy in this respect. You may find out and learn too late. Use judgment. When considering sharing confidential and proprietary information with individuals and companies, I at least recommend also taking into consideration intangibles such as reputation, professionalism and experience, and any other relevant factors such as codes of ethics and conduct which are recognized and promoted by well-established professional societies and which their members are required to observe and practice. In the end it always comes down to a matter of trust. |
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