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BACKGROUND ON INTELLECTUAL PROPERTY

WHAT IS INTELLECTUAL PROPERTY? From Cornell University Intellectual Property Handbook

Intellectual property is like mental real estate. As with any piece of property it can be bought, sold and rented (i.e. licensed). Unlike real property, intellectual property is intangible. The legal mechanisms of patents, copyrights, trade secrets and trademarks are used to protect such intangible property. A basic understanding of these mechanisms is essential for anyone whose research may lead to a patentable invention, for research administrators who must deal with intellectual property issues, or anyone who has an interest in commercializing the fruits of University Research.

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Patents

A patent, as well as a copyright or trademark, is an agreement between the United States Government and the inventor, and is a fundamental right provided in Article I, Section 8 of the United States Constitution. Congress is empowered to "... promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."

Abraham Lincoln believed that giving such rights to inventors adds the "fuel of incentive to the fire of genius." Various analyses have shown that patents are an essential incentive for most inventors to push the envelope of creativity and bring their ideas to fruition for the benefit of the public. Patents reward disclosure rather than secrecy. They encourage investment in research and development as well as production and marketing of new products.

In exchange for a limited-term right to exclude others from making, using or selling the potential invention, the inventor must provide a complete and accurate public description of the invention and the best mode of "practicing" it. This provides others with the ability to use that information to invent further, thus pushing technology forward for the benefit of society.

The United States Patent and Trademark Office (USPTO or PTO) has been given the authority by Congress to grant an inventor the right to exclude all others from exploiting their invention in the United States for a period of 20 years (up to 14 years for design patents) from the date of filing a patent application with the PTO. This right to exclude means that a patent is a "negative right" since a patent holder may only exclude others from the using, manufacturing, copying or selling his or her invention (although it should be noted that a patent cannot take away anything that the public already has). Patents, however, do not give the inventors inherent rights to practice their intended inventions. Even inventors may be excluded by other patent holders from making, using or selling their own inventions if others' patents dominate in some way.

Patents are territorial, and a U.S. patent has no force in other countries, just as a foreign patent has no force in this country. However, products sold in the U.S., even if they are made outside the patent domain, may infringe a U.S. patent. Regarding foreign patents, the procedures for filing, regulations for patentability, and patent terms vary considerably from country to country. Foreign patent expenses are typically very high, so Rice files for foreign patents only in those instances where the additional expense appears warranted.

There are three types of patents: utility, design, and plant:

Prior to June of 1995, the term of a utility patent, when all maintenance fees had been paid, had been limited to 17 years from the date of issuance of the patent (not the date of filing the patent application). For patents issuing on a patent application filed after June 8, 1995, however, the term changed to 20 years from the date of filing the first patent application from which priority is claimed. Maintenance fees must be paid at 4, 8 and 12 years after the date of issue or the patent will expire. Once a patent expires, the invention is in the public domain and anyone may use it without authorization from the patent holder.

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Trade Secrets

A trade secret is any formula, pattern, device, process, tool, mechanism, compound, etc., of value to its owner which is not protected by a patent and is not known or accessible to others. As long as it is kept secret, the owner may obtain a great deal of commercial benefit; however trade secrets do not have the same level of legal protection as patents and copyrights.

Trade secret protection is governed by state laws and every state makes a theft or unauthorized dissemination of a trade secret an unlawful act. Courts will protect trade secrets if they are truly secret, substantial and valuable; but there must be evidence that reasonable efforts are made to keep them undiscoverable.

A familiar example of a trade secret is the formula for Coca-Cola. If the formula had been patented, it would no longer be a secret since patent law requires public disclosure of the invention. Anyone who independently and legitimately discovers the secret of the Coca-Cola formula can use that discovery and the Coca-Cola company would have no legal means to stop them.

Rice inventors should not rely on trade secrets to protect intellectual property. As a general rule, the environment of open and free exchange of information that characterizes a university runs counter to the practices necessary to maintain trade secrets.

As a General Rule...

The environment of open and free exchange of information that characterizes a university runs counter to the practices necessary to maintain trade secrets. Rice inventors should not rely on trade secrets to protect intellectual property.

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Copyrights

In contrast to a patent which protects an idea and its implementation, copyright protects the expression of an idea, not the idea itself. Such expression must be in some retrievable form such as handwriting, set in type, recorded on magnetic tape or other storage medium. Copyright covers the expression in literary or musical works, computer programs, video or motion pictures, sound recording, photographs, and sculpture. Unlike patents, copyrights automatically come into being when the idea is fixed in a tangible medium of expression.

Copyright protection generally extends for 50 years beyond the creator's life. With two or more creators the period extends to 50 years beyond the life of the last surviving creator. On "Work-for-Hire" (the creator is hired to create and the work is owned by the creator's employer) the period extends for 75 years from publication or 100 years from creation whichever is shorter. Like patents, copyrights are property that may be bought, sold or licensed.

While no longer required by law, it is still useful to apply a copyright notice to the work. The notice should include the familiar [] symbol or the word "copyright," the year of first publication and the name of the owner of the copyright.

Copyrighted works can be registered with the U.S. Government at any point during the life of the copyright by submitting one copy of the work (if unpublished) or two copies (if published) of the work, with a registration form and fee to the U.S. Copyright Office. Although not required, formal registration (symbolized by the use of []) is recommended, among other reasons, because the copyright search would uncover potential infringement problems. Suing for copyright infringement requires copyright registration.

The owner of the copyrighted work has the exclusive right to control copying, adaptations, distribution of copies, public performances and public displays. In the "fair use doctrine," others may use a copyrighted work in limited ways for criticism, comment, news reporting, teaching, scholarship or research without infringing.

Copyrights that are typically relevant to university researchers relate to written material and software. Any copyrightable matter which is generated as a result of a Rice research contract should be reported to Rice. Although Rice creators of copyright material are not always obligated to work through Rice many do because of Rice's expertise in marketing, commercialization, licensing and account management. In addition to copyright protection, much software is also patentable.

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Trademarks

A trademark is a word, name, symbol or device used by a someone to identify their goods and distinguish them from others. Commercial logos are common examples of trademarks. Trademark rights can be asserted by using the familiar trademark indicator in association with particular goods or services. Rice might obtain trademark rights on certain inventions, typically plant varieties and software.

Registration of a trademark can sometimes afford limited protection beyond the life of the patent for a particular product. For example, the University of Florida developed an electrolyte replacement fluid for use by its football team. The formula was patented and had value, and the trademark (Gatorade) also had value. The patent ran out at the end of 17 years, but the trademark remains in force and continues to produce income for University of Florida.

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Other Intellectual Property Topics

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Content of this page compiled by Alice Um, CRPC consultant.

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