1	INTELLECTUAL PROPERTY by Robert M. (Bob) Hunter, Ph.D. Registered Patent Agent WebPatent.com
2	What is Intellectual Property? An intangible product of the intellect Free for anyone to use unless protected Must be placed in a “vessel” Can be sold, rented, licensed, etc. Some rights allocated by regulation technical data subject inventions
3	WHY SHOULD YOU CARE? INTELLECTUAL PROPERTY RIGHTS MAY BE THE ONLY ASSET REMAINING AFTER THE PROJECT ENDS
4	Types of Intellectual Property Patents Utility (technology), design and plant Plant variety Trade secret Copyright Semiconductor mask work Trademark/service mark Trade dress
5	Copyright Literary works, including computer programs Musical works, including any accompanying words Dramatic works, including any accompanying music Pantomimes and choreographic works Pictorial, graphic, and sculptural works Motion pictures and other audiovisual works Sound recordings Architectural works
6	Cannot Copyright Titles, names, short phrases, and slogans; familiar symbols or designs; mere listings of ingredients or contents Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices Standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents
7	Copyright Owner Can Prevent Reproduction of a work Preparation of derivative works Distribution of copies Performance of the work publicly Display of the work publicly Digital audio transmission (including webcasting) of sound recordings
8	Securing a Copyright Secured automatically when the work is fixed in tangible form for the first time Deposit with the Library of Congress mandatory for works published in U.S. Use of copyright notice precludes innocent infringement defense, e.g., © 2000 John Doe Benefits of timely copyright registration ($30 filing fee) include right to enforce and availability of statutory damages
9	Design Patent Shape or surface ornamentation of an article of manufacture Protects the way the article looks Application includes a drawing of the article and a single claim in a specific form Must be ornamental, novel, nonobvious Examples: full user interface or individual icon embodied in a computer screen; shape of a new vehicle or instrument Term: 14 years from date of grant
10	Computer Icon for Display Panel U.S. Patent No. D439,912
11	Plant Patent Plants propagated asexually, e.g., by rooting, layering, budding, grafting, etc. Includes cultivated sports, mutants, hybrids, and newly found seedlings Excludes tuber propagated plants or plants found in an uncultivated state Inventor(s) must have asexually reproduced the plant to establish reproducibility Claimed invention must be a distinct and new variety of plant, not just a flower or a fruit
12	Plant Patent Application Characteristics that distinguish the plant from related known varieties, including colors of plant structures, if distinctive Where and in what manner the plant was asexually reproduced Location and character of area in which a newly found plant was found A single claim in a specific form Two copies of color drawings or photographs
13	Grape Plant “Sugareighteen” U.S. Patent No. PP11,820
14	Plant Variety Sexually reproduced (by seed) and tuber propagated plant varieties Variety must be new, distinct, uniform and stable Variety may be represented by seed, transplants, plants, tubers, tissue culture plantlets or other matter Term: 20 years from date of issue of certificate, 25 years for a tree or vine
15	Variety Owner Can Prevent Selling or marketing of the protected variety Importation of the variety into, or exportation from, the U.S. Sexual multiplication or propagation of the variety as a step in marketing Use of the variety in producing (as distinguished from developing) a hybrid or different variety
16	Variety Protection Criteria Has not been sold in U.S. by breeder within 1 year of filing date or outside U.S. within 4 years of filing date (6 years for vines and trees) Clearly distinguishable from any known variety Variations are describable, predictable, and commercially acceptable When reproduced, remains reasonably unchanged in essential characteristics
17	Variety Protection Application Name of variety (or temporary designation) Description of the variety and genealogy and breeding procedure, when known Basis of the claim that variety is new Declaration that a viable sample of basic seed will be deposited and replenished periodically in a public repository Basis of applicant's ownership
18	Trade Secret Any formula, pattern, device or information used in one's business that has commercial value or that provides its owner with a competitive advantage Sufficiently secret that use of improper means is necessary to acquire it A competitor may use legal means (e.g., reverse engineering) to independently discover the secret Term: until the subject matter enters the public domain
19	Technical Data Any recorded technical information developed in performance of award reports, invention disclosures software documentation Rights retained by small business for four years after each phase of project After those periods, Government may use, release or disclose to others, or permit others to use!!
20	Game Rule No. 1 Do not rely on trade secret protection of intellectual property developed during SBIR or STTR projects
21	Subject Inventions What is included? patentable technology, design or plant protectable plant variety How does a discovery qualify? invention conceived or first actually reduced to practice in performance of work date of determination of plant variety within period of performance
22	Game Rule No. 2 Make sure the members of your project team can identify a subject invention when they see one and understand their obligation to document it and disclose it to you
23	Examples of Patentable Technologies Mechanical, electrical, optical devices Isolated microbial cultures, DNA, RNA Plants and seeds Genetically-engineered non-humans Ways of making or operating things Business methods Software systems, processes, interfaces
24	Cheese Filtered Cigarette U.S. Patent No. 3,234,948
25	Method of Concealing Baldness U.S. Patent No. 4,022,227
26	Decoy and Hunter Shield U.S. Patent No. 5,572,823
27	Types of Utility Patent Applications Provisional U.S. patent application Asserts priority of invention internationally Regular U.S. patent application Contains claims; is examined; can issue International (PCT) patent application Does not issue as a patent Regional patent application (e.g., EPO) Non-U.S. patent application
28	Patentability Criteria Legal-required to report? can patent? appropriate subject matter useful, novel, non-obvious Practical-business reason to patent? valuable long economic life enforceable FUD-Fear, Uncertainty and Doubt
29	Business Method Defined Administering, managing, or otherwise operating an enterprise or organization Processing financial data Any technique used in athletics, instruction, or personal skills
30	Business Method Rules Publication of application required Disclosure of search results required Nonobviousness of a computer implemented business method defined Grounds for post-grant opposition widened Prior use defense created
31	Allocation of Rights Small business (or subcontractor) may retain title to a subject invention depends on who thought it up or built and tested it cannot require subcontractors to give up rights as a condition of hiring them Government receives a non-exclusive, nontransferable, irrevocable, paid-up, worldwide license for Government use
32	Game Rule No. 3 It is often a good idea for the “inventing” portion of an SBIR or STTR project to be performed by employees of the small business recipient of the award who have signed employment agreements assigning inventions to the business
33	Your Responsibilities Report invention to Government within two months of disclosure by inventor(s) Elect to retain title within two years of initial report File a non-provisional U.S. patent application within one year of election File non-U.S. patent applications within ten months of U.S. filing
34	Commercializing Your Rights Licensing or sale (assignment) of rights Herculean marketing effort required Less investment, less risk Much smaller potential return Less or no control Like dancing with an elephant New venture formation Larger skill set required Like riding a tiger
35	Conclusions SBIR and STTR programs are excellent wealth-building techniques But only if you commercialize your intellectual property rights Preserve and protect those rights and then sell, sell, sell them either embodied in products or outright!
36	IP MANAGEMENT WEBSITES Patent searching-expect surprises www.uspto.gov www.delphion.com www.surfip.gov.sg Invention reporting-an allowable cost www.iedison.gov Protecting and licensing inventions www.webpatent.com