Patents, Trademarks, Copyrights and Trade Secrets

Intellectual Property Rights, in general, include:

  1. Patents
  2. Trademarks
  3. Copyrights
  4. Trade Secrets

Anyone doing research and development at a university, as well as those individuals concerned with the administration of grants and contracts, should be familiar with all of these intellectual property rights. In the past, patents were probably the most important for the University, but copyrights are now also extremely important.

Patents, trademarks, copyrights and trade secrets are used primarily to protect a product or process - it is our right to use and license University of Florida technology and generate licensing income, including royalties on sales. Such income may provide a source of funds for additional research and support for the technology transfer infrastructure.

The University's intellectual property has to be something a corporation considers extremely valuable and really desires. This makes it often difficult to find the correct corporate "match".

Comparison Between Patents, Copyrights, Trademarks, and Trade Secrets

Patents: Patent rights derive from the United States Constitution. A patent is an exclusive right of an inventor/owner to exclude others from trespassing on an invention for the life of a valid patent. In order to obtain patent protection, an invention must be new or novel, useful, and unobvious to someone skilled in the art.

Copyrights: Copyrights fall in the category of authorship. A copyright applies to an original embodiment, but it does not have to be novel or unique in a patent sense. Copyright protection prevents others from copying it. A copyright comes into existence immediately at the time you put the work in writing or other tangible form. You can defend it by registering it with the Library of Congress. Copyrights can protect a book, computer software, videotape, musical score, work of art, etc.

Trademarks: A trademark is a name to identify a product or service with its source. It lasts as long as the trademark continues to be used. You obtain registration from the U.S. Patent and Trademark Office, provided the mark is not a generic or merely descriptive name for the product or service. (The best example of trademark is, of course, Gatorade.)

Trade Secrets: A trade secret can cover any special, secret information used in business. Often it is information that gives the possessor a competitive edge. It does not have to be unique like a patent, but it must be independently a secret. All it does is prevent somebody from stealing it. If someone comes up with the very same idea as your "trade secret," you have no course of action. However, if the idea is stolen, legal recourse is available.

Specifics On Patents

A patent gives the inventor(s) or owner(s) the right to exclude others from making, using or selling specific technology. It does not give the inventor(s) or owner(s) the right to practice the invention. There may be someone else who holds a patent on an invention more basic than your own; that is, in order to make your own invention, you have to use the other person's patent (technology). The other person's patent may exclude you. You can improve on what someone else has patented, although you may not make or use the patented invention as part of your research efforts without permission of the inventor(s) or owner. Infringement occurs when someone makes or sells a product that is covered by a valid, unexpired patent held by someone else.

How do you go about obtaining a patent? After an invention is disclosed to the University and the University exerts an interest in the technology, the disclosure is forwarded to a patent attorney. If the technology is considered patentable and commercially valuable, a document called a patent application is prepared and submitted to the U.S. Patent and Trademark Office. The patent application describes the invention and contains claims which delineate, legally, the bounds of a discovery. These claims are the legal definition of what others can be prevented from doing. The preparation, submission, and prosecution of a patent application to issuance in the United States can cost $7,000 - $10,000, with complicated patent applications costing $40,000+. Filing in foreign countries can be even more expensive.

Until a patent application is filed (which gives the owner the right to mark the invention "patent pending"), there is no protection and the owner cannot enforce the patent until it issues. The "patent pending" mark puts other people on notice that, if they tool up and begin producing a product they have seen on the market with a "patent pending" notice, the owner may legally prevent them from doing so when the patent issues.

In the U.S. Patent and Trademark Office, the patent application is submitted to a Patent Examiner who, in theory, has expertise in the technology to which the patent pertains. His/her job is to see that the patent application satisfies formal requirements and to search the prior art. The prior art that is available to the Patent and Trademark Office often is not as pertinent as the prior art which is available to the inventor, especially an inventor in a university or large corporation. If the claims are allowed, either initially or by amendment, the patent issues and the owner gets a monopoly on the technology, beginning from the date of issuance.

The United States act implementing the General Agreement on Tariffs and Trade ("GATT") became effective June 8, 1995, and affected the term of a patent issued in the United States. In general, all patents enforce as of June 8, 1995, regardless of their issue date, or issuing on applications filed before June 8, 1995, are given a term of 17 years from issue, or from issue until 20 years after the earliest relied-on domestic filing date, whichever is longer. All patents issuing on applications filed after June 8, 1995 are given a term lasting from issue until 20 years after the earliest relied-on domestic date.

Standards Used In Granting Patents

  1. The invention must be new or novel. The Patent Examiner will check in patent files and printed publications, anywhere in the world, for disclosures of the invention by persons other than the inventor. If the invention has been in the public domain for over a year prior to the filing of the patent application, a patent is unobtainable. If the inventor(s) placed the invention in the public domain, e.g., by publication, a one-year grace period is allowed from the time of public disclosure in the U.S. to file a patent application. Foreign countries are more severe. Most foreign countries hold that the first time anything is disclosed without a patent application on file, the right to file is lost.
  2. The invention must be unobvious. This is a very subjective standard. The invention must be unobvious to anyone with ordinary skill in the art to which the invention pertains. It behooves the inventor(s) to find as much prior art as possible and turn this over to the patent attorney; trying to hide something will probably be cause for invalidation of a patent. Honesty with the U.S. Patent and Trademark Office will generate a stronger patent as there is a lessened chance of a validity challenge.
  3. The invention must be useful, or have utility. Although this is a simple requirement for many inventions, it can be problematic for other inventions. For example, it may be difficult to patent human genome fragments that have no known specific regulatory function.

Conclusion

The purpose of this handout is to provide general information. More specific information is available from the Office of Technology Licensing (392-8929).