Technology Transfer

FOR UMSL RESEARCHERS: INTELLECTUAL PROPERTY (IP) PRIMER

Intellectual property (IP) is property that can be protected under federal law including copyrightable works, ideas, discoveries, and inventions.

The four key classes of intellectual property are:

Patent
A patent is a government grant that gives the owner the exclusive right to keep others from making, having made, using leasing, offering to sell, selling or importing a product that infringes upon any claim contained in the patent. Patents are issued for the public good recognizing that unless a manufacturer is given some assurance of exclusivity, the cost of taking a new and innovative product to market may be prohibitive. As property, patents can be sold, assigned, or licensed.

Under United States standards of patentability, all patent applications are examined for:

Novelty (the invention has not been previously used, sold, or described publicly or through written publication)
Utility (the invention has use and is not just a subject for additional research)
Non-obviousness (the invention must be non-obvious to a person having ordinary skill in the art to which it pertains)

The applicant, usually through a patent attorney or agent, must establish these elements to the satisfaction of the U.S. Patent and Trademark Office (USPTO) before the patent is allowed.

For how long is a patent good?

Filed before 06/08/1995: U.S. utility patents granted for 17 years from issue date.
Filed after 06/08/1995: U.S. utility patents granted for 20 years from application date.
Design patents: 14 years from issue date.
The life of certain drug patents may be extended a few years under limited conditions.
Foreign patents: duration varies widely from country to country.

What is patentable?
Patent laws set forth those classes of inventions eligible for patenting. Statutes provide that any inventor who "invents or discovers a new or useful process, machine, manufacture, or composition-of-matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of the law".

The scope of statutory patentable classes of inventions has been expanded to include life forms resulting from genetic engineering. U.S. law also allows patenting of new varieties of asexually produced plants, other than tuber-propagated plants, or plants found in an uncultivated state. Plant Variety Protection Certificates are available from the U. S. Department of Agriculture for sexually produced plants.

Things that cannot be patented in the United States include:

Theories
Ideas
Plans of action
Discoveries of laws of nature or scientific principles
Things immoral or injurious to health and the good of society
Sexually reproduced plants

What about publishing my research?
Patents and publications are closely related, both represent means of disseminating the results of research. A patent, however, is a specialized form of publication which describes an invention to the world at large in return for a limited period during which others can be excluded from using the patented information. Care must be taken against premature disclosure of an invention (by publication in a scientific or technical journal or through public use) in order to avoid placing the invention in the public domain and thus losing the right to obtain a patent.

Patent Rights and Sponsored Research
Patent rights under sponsored research agreements are generally negotiated before the agreement takes effect. It is important that these agreements reserve patent rights for the University. Inventions arising from federally sponsored research are governed by Public Law 96-517 as amended by Public Law 98-620, which allow universities to retain rights to these inventions while reserving certain rights for the government. These laws are issued as 37 Code of Federal Regulations Chapter IV, Part 401.

Copyright — ©
A copyright is a right that protects original works of authorship fixed in a tangible medium of expression from being copied. Copyrights can include published and unpublished works — literary, dramatic, musical and dance compositions; films and photographs; audiovisual works; paintings, sculpture and other visual works of art; as well as computer programs. Copyright protects the expression of ideas, not the ideas themselves (e.g., computer code, but not computer program functionality). Copyright exists from the moment the work is created. Registration of the copyright is voluntary, but it is necessary in order to bring a lawsuit for infringement of a U.S. work.

Trademark — ™ / ®
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Trademarks do not need to be registered, but federal registration can help protect the mark legally.

Trade Secret
In Missouri (RsMO 417.453), Trade Secret is defined as “information, including but not limited to, technical or nontechnical data, a formula, pattern, compilation, program, device, method, technique, or process, that:

Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by other persons who can obtain economic value from its disclosure or use; and
Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.