What You Need to Know
1. Patents are monopoly rights that extend to the functions of innovations (utility patents) and ornamental appearances (design patents). To receive patent protection, you need to file a patent application in the respective jurisdiction where you are seeking rights. Many countries have patent and trademark offices and grant patent rights to the first inventor to file a patent application with these offices.
2. You can lose your patent rights by making public disclosures. At a university, the most common types of public disclosures are academic publications and presentations. Other forms of public disclosures include an offer to sell the product and public use. In the United States, you have a year to file a patent from the time of the first public disclosure to retain patent rights. In most other international jurisdictions, you forfeit patent rights with a public disclosure. Therefore, it is important to communicate with the Technology Commercialization Office well before you make a public disclosure to reserve all potential patent rights.
3. If you are interested in an overview of patent law with links to case law and statutes,
Patent Law Summary
Congress recently passed the Leahy Smith America Invents Act which amends 35 USC the law that governs all patent law (link). The act has been fully enacted since March 16, 2013. In order to obtain patent protection in the United States, an inventor must file a patent application at the United States Patent and Trademark Office (USPTO), and USPTO must grant the patent (link ).
There are three different types of patents: plant, design and utility patents. Each of these patents has different statutory requirements and affords different protections. Plant patents grant twenty year monopolies over new asexually produced plants (link). Design patents grant fourteen year monopolies over ornamental designs (link ).
Historically the focus of university commercialization efforts, utility patents grant twenty year monopolies over new and useful inventions that fall within the statutory categories of process, machine, manufacture or composition of matter. Apart from the formalistic requirements of patent applications, there are four basic requirements for an innovation to receive a utility patent: it must have utility; it must be within the patentable subject matter; it must be novel; and it must be non-obviousness.
According to 35 USC § 101, “any new and useful process, machine, manufacture, or composition of matter” is patentable (see 35 U.S.C. 101). One criterion considered by the USPTO is whether an invention has utility. Usefulness or utility is usually the easiest requirement to meet when patenting an innovation and as a consequence rarely is the subject matter of litigation. Most of the utility case law deals with patents in the bio-chemistry fields (Brenner v. Manson link; In re Brana link).
There are three different types of utility that courts and patent examiners currently consider: credible utility, specific utility, and substantial utility. Credible utility is an assessment as to whether the utility described in the patent application is believable to a person of ordinary skill in the art—patent term that means relevant technology (e.g. is it believable that a rock can fly). Specific utility is a test as to whether the patent applicant claimed subject matter that has usefulness limited to a particular area of functionality and not dedicated to just general functionality(e.g. not sufficient to generally claim a rock has utility because of its mass). Substantial utility hinges on whether the utility claim has a “real world” use (e.g. not enough to claim a rock as a hat), (link).
Patentable Subject Matter
Pursuant to 35 USC § 101, the general statutory categories of patentable subject matter are process, machine, manufacture or composition of matter. As evidenced by the recent Supreme Court holdings in Bilski and Myriad Genetics (link, http://www.supremecourt. gov/opinions/12pdf/12-3981b7d.pdf), certain subject matter has been held to be not patentable because it is a law of nature, abstract idea, or physical phenomenon (see Chakrabarty link; e.g. isolated genes with sequences that occur in nature, business models for hedging taxes, watermarks, and are not patentable subject matter). In Bilski, the Supreme Court held that the Transformative or Machine Test for process patents was persuasive of patent eligibility, but not solely determinative. The Transformative or Machine Test consider whether: (1) a process is tied to a particular machine or apparatus, or (2) the process transforms a particular article into a different state or thing. In addition to recent case law, The Leahy Smith America Invents Act specifically stipulates that tax strategies and human organisms are prohibited from being patented (link).
The novelty requirement in US law is found in 35 USC § 102. While determining novelty can be a complicated process, the basic novelty analysis considers whether any prior art exhibits the same elements or components as the proposed invention—this is called the All Elements Test. When prior art has the same elements as the proposed invention, the invention is considered to be anticipated by prior art and is not patentable.
Sometimes the prior art does not explicitly list an element. Courts and patent examiners can find that the element is inherently in the prior art and anticipates the invention at hand when: 1) the limitation naturally flows from the prior art and 2) when the limitation necessarily is part of the prior art. This factual analysis is called the Doctrine of Inherency. However, courts have held that accidental anticipation does not defeat novelty when sporadic or not appreciated at the time, but courts do not reward patents on new uses for old inventions. (see Tilghman v. Proctor link)
Another criterion for a disclosure to be prior art is that it needs to be enabling to an ordinary person skilled in the art such that an ordinary person in the technical area can reduce the invention to practice based on the prior art disclosure (Titanium Metal Corporation v. Banner link). This does not mean that the prior art needs to list all the benefits of the invention or describe how to make the invention.
Prior art can be any sort of public disclosure including the following: any offer to sell a product that is enabled enough to be patented; any sort of public publication or presentation including internet postings and indexed theses; any patents and patent applications; and any sort of public use not involving experimental use. Courts determine whether use is experimental use by considering the following questions: the number of prototypes; the number of records and reports of experimental use; confidentiality agreements; commercial advantages; and control over the use (Elizabeth City v. Pavement Company link).
When elements in the innovation at hand are not the same as the prior art but are essentially equivalent, courts may hold that the innovation is anticipated based on the Doctrine of Equivalents. According the Supreme Court Case Warner-Jenkinson v. Hilton Chemical, Justice Scalia held that both the Triple Identities Test and Insubstantial Difference Test could be used to determine equivalence (link). The triple identities test has the following factual analyses: the function served by a particular claim element, the way that element serves that function, and the result thus obtained by that element. The insubstantial difference test asks whether the substitute element plays a role substantially different from the claimed element.
The Leahy Smith America Invents Act overhauled the novelty requirements in the US, harmonized the law more closely with international patent regimes, and broadened the scope of available prior art. Prior to the change in law, US priority for competing inventions was different from international patent regimes because in the US inventors were rewarded priority when they were the first to conceive the invention and could demonstrate that they were diligently reducing the concept to practice; whereas, international patent regimes rewarded priority to the entity that was the first to file a patent application.
Effective since March 16, 2013, the Leahy Smith America Invents Act changes US novelty law from the first to invent to first inventor to disclose and/or file the patent. This law no longer considers which inventor first conceived the invention, but only considers which inventor files the patent first or makes a public disclosure first and then files a patent within a statutory period of one year. The caveat is that the inventors, who file first, may not derive or in laymen’s terms steal their inventions from other inventors. The law provides a post-patent award arbitration to deal with stolen inventions called derivation proceedings. (link)
One important consideration at a university is how patent law relates to publications because a primary function of a university is to publish and make public presentations. After an inventor or third party makes a publication and/or other public disclosure of an invention, an inventor has one year to file a patent on the invention before the invention is deemed to be dedicated to the public domain. Once an invention is dedicated to the public domain an inventor cannot later try to receive patent protection on the invention.
The non-obviousness test is the most difficult barrier to receive patent protection and is found in in 35 USC § 103. Courts determine obviousness using a test developed in the Supreme Court case Graham v. John Deere Co. The Graham Test involves the following three factual inquiries: 1) determine analogous art; 2) determine the differences between the invention and analogous art; and 3) determine the ordinary skill of the art. Courts also consider secondary factors that are: commercial success of the invention; long-felt but unsolved needs that the invention has met; failure of others to produce a similar invention; and unexpected results of the invention. While persuasive, secondary considerations are not determinative of non-obviousness in the Graham Test. (Graham v. John Deere Co link ).
While applying the three prongs of the Graham Test, courts first determine the scope of analogous art by ascertaining whether the prior art falls within the same field as the invention and whether the prior art logically commends itself to the same problems resolved by the invention. Second, courts determine the differences between the invention and the analogous art by considering all the elements of the analogous art as a whole and not just the gist of the art. They also evaluate the inherent properties of the analogous art and whether the analogous art teaches away from the invention. Third, courts assess the ordinary skill in the art by looking at the following criteria: 1) the problems in the analogous art, 2) prior solutions to these problems, 3) the rate of innovation in the art, 4) the sophistication of the technology, and 5) the educational obtainment of a person of ordinary skill in the art (e.g. PhD, MS, BS, or AS). During this process, courts may consider whether the invention was “obvious to try” and whether the analogous art motivates, teaches, and suggests the innovations embodied in the invention. In general, the courts do not consider inventions to be innovative enough if they are combinations of analogous art unless these combinations have unexpected results. (link)
#1. Copyrights are monopolies over expressive works that are made from scratch and have a modicum of creativity. In copyright law, the author has a monopoly on how she/he expressed something and not on the core idea or facts. The rights of copyrights extend 70 years plus the life of the author where the work is not anonymous and published after January 1, 1978.
#2. In addition to media common in the humanities and arts, software qualifies for copyright protection. Because patents protect the functionality of the software, copyrights protect the expressive parts of software including software code.
#3. Authors receive copyrights once they have fixed their expression in a tangible medium like writing words on a computer, but cannot sue infringers until they register their copyright with the Library of Congress.
#4. If you are interested in an overview of copyright law with links to case law and statutes.
Copyright Law Summary
While copyright law is a copious body of statutes and case law, this section focuses on statutory and common law copyrightable material, the scope and duration of a copyright, and advantages of federally filing a copyright. This section does not consider subjects often popular at universities such as fair use pursuant to 17 USC §107 and exemptions of performances and displays rights pursuant to 17 USC § 110.
In addition to case law, the Copyright Act of 1976 is the major source of copyright law in the US (http://www.copyright. gov/title17/circ92.pdf ). When the US adopted the Berne Convention in 1989, the duration of copyright protection was extended and registration and notice requirements were discontinued. Another major change in copyright law occurred with the Digital Millennium Copyright Act. This act penalizes the circumvention of access controls to digital media and creates a safety harbor for internet service providers who timely remove infringing materials from their platforms once made aware of the infringing materials (link; see also link).
Statutory Copyrightable Material
Copyrights protect the expression of a widget unlike patents which protect the function of a widget. In some situations like with computer code, the author of the software can receive both copyright protection on the expression of computer code (how the code is arranged) and patent protection on the functionality of software (the functions of the code). Because copyrights are easy to receive and last longer than patents, they often are preferable to patents.
According to 17 USC 102, copyrights are created when original expressions are fixed to tangible forms. The courts have held that expression is original when it is made from scratch (independent creation) and has a modicum of creativity (e.g. Bleistein v. Donaldson low brow art such as posters are copyrightable link). Authors can receive copyright protection on derivative works (works where expressive elements are taken from prior works) when the derivative work is more than trivially different than the original work (e.g. Batlin & Son v. Synder: derived Uncle Sam Bank not more than trivially different link). Compilations are also copyrightable with some restrictions (see 17 USC §201(c) & New York Times v. Tasini: searchable databases are not a revision of the magazines and newspapers and therefore magazines and newspapers are not reproducible as databases by publisher absent a contract link).
According to the definition in 17 USC §101, copyrights are fixed in a tangible medium of expression when it is embodied and “is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” The courts have held that a work is embodied when it is written, digitized, and/or recorded on any medium (e.g. mp3 files, YouTube videos, word files, paper, canvas, film, photograph, stone, metal, brick, cement, wood, plastic, CD, DVD, record, tape, microfiche, digital movie file, etc.). However, speech, performances, and other expressions not embodied are not copyrightable (e.g. professors have no copyright protection for their verbal lectures not dedicated to some physical medium).
In addition to being embodied, the expression needs to be permanent for more than a transitory duration to receive copyright protection. In Cartoon Network v. CSC Holdings, the court held that the DVR service did not infringe in part because the copy of the copyrighted content stored on the servers for 1.2 seconds to buffer the stream of the content was not sufficiently permanent to be considered infringing (link).
Pursuant to 17 USC §102, the general statutory categories of copyrightable material are: literary works; 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; and architectural works. Although not explicitly included in a separate statutory category, software is uniformly recognized as being copyrightable.
Common Law Copyrightable Material
Courts often struggle to determine what merits copyright protection. Facts and ideas are not subject to copyright protection. Courts consider the following questions when trying to assess whether a work is predominately factual or expressive: Is there originality in the selection of the facts? Is there originality in the arrangement of the work? Using this analysis, Courts have held phone directories and graphical representations of factual information to be not copyrightable (Feist Publications v. Rural Tel. Serv. link; Meshwerks, Inc. v. Toyota Motor Sales link; see also link).
Sometimes ideas and functions merge into expression. When ideas and functions are not separable from expression, the courts have held the expression to be not copyrightable according to the Merger Doctrine. When applying the merger doctrine, courts created the construct of “soft ideas” versus “hard ideas” where soft ideas may merit copyright protection and hard ideas do not (CCC Information Services v. Maclean Hunter Market Reports, Inc. link).
Designs in useful articles such as mannequins have been held to be not copyrightable when courts have applied the Conceptual Separability Test. Courts have used the following steps to determine whether designs of useful articles are copyrightable: are the artistic features primary? Is it marketable as art? Does it stimulate the mind of a concept separate from utility? Is the design not influenced by functional considerations? Does the artistic feature stand alone as work of art? Was the artistic judgment exercised independent from functional influences?
Courts are hesitant to grant broad copyrights over plots and characters because of archetypes and narrative structures pervasive in literary traditions and conduct a Comprehensive Non-Literal Similarity Test to determine whether a work is sufficiently similar to a previous work to constitute infringement. This test applied to plot involves the following inquires: comparison between sequence of events between the allegedly infringing work and the infringed work; analysis of the interplay of characters in the works, and the patterns in general of the works. When this test is applied to graphical characters, courts consider the following: the physical features of the characters, the characters’ mannerisms, their reaction to events, and their relationships with others (Metro-Goldwyn-Mayer v. American Honda link).
Words, Common Phrases, and Titles are not subject to copyright. When expression is a common component of a computer code or a narrative structure such as a murder in a murder mystery, the courts hold that the expression is not copyrightable because it is Scene a Faire or in other words a common mode of expression.
Process documents such as ledgers are generally not copyrightable and fall within the domain of patent law protection (Baker v. Seldon link). However, courts have uniformly held that computer software is copyrightable (Apple Computer). When the computer codes are not exactly the same, but a party alleges infringement by another party, courts conduct Abstraction, Filtration, and Comparison Test. Courts first conduct an abstraction analysis which involves determining what is an expression or idea. Courts then filter out code based on the Merger Doctrine, Scenes a Faire, and code in the public domain. In the third step, courts compare the remaining code for similarities and consider the importance of the copied part of the code to the rest of the program (link).
Scope and Duration of a Copyright
Pursuant 17 USC §106 and §106A, Copyrights grant exclusive rights to do and authorize the following activities: reproduce copies; prepare derivative works; distribute copies; perform publicly literary, display publicly musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works; literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work; perform publicly sound recordings; and have rights of attribution. These exclusive have fair use exceptions found in 17 USC sections 107 through 122 (see link).
Prior to January 1, 1978, the duration of a copyright depended on whether it was registered, renewed, and had copyright notice. Since this time, copyrights last during the life of the author plus an additional 70 years after the death of the author. If the work has joint-authors, the copyright lasts 70 years after the last surviving author dies. Anonymous, pseudonymous, and works made for hire endure for a term of 95 years from the time of its publication, or a term of 120 years from the year of its creation, whichever expires first (see 17 USC § 302 link).
Advantages of Federally Filing a CopyrightOne can federally file a copyright at the Library of Congress (link). There are four advantages of federally filing a copyright: 1) it establishes a public record of the copyright; registration is necessary to file suit for US works; 2) if the registration is made within five years of publication, the registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate; 3) if registration is made within three months after publication of the work or prior to an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions; 4) and registration allows the owner of the copyright to record the registration with the U.S. Customs Service for protection against the importation of infringing copies.
#1. Trademarks are rights to protect the good will associated with products and services in the market.
#2. While an important part of establishing a business and marketing a product, trademarks are generally not important in the early commercialization process. At the Technology Commercialization Office, we have expertise in trademark law and discourage considering trademark issues before thinking through business formation and other IP rights.
3. If you are interested in an overview of trademark law with links to case law and statutes,
Trademark law, provided under the Lanham Act (link), gives entities defensive rights to prevent others from using logos, colors, words, and trade dress that have become associated with the entity either through using the trademarks first in commerce or through filing the trademark with the USPTO prior to others’ use or filing (see 15 USC 1127(a)). One can file a trademark at the following site link. This section discusses the following: the relative strength of a trademark, trademark actions, and the advantages of federally filing a trademark.
This law is intended to avoid consumer confusion. A Rolex knock-off provides an example of what the law intends to avoid where a consumer may be confused by a knock-off’s use of the “Rolex” brand and mistakenly purchase a watch thinking it is a Rolex.
The strength of a trade name depends on where the mark falls on the distinctiveness continuum between “arbitrary or fanciful,” “suggestive,” “descriptive,” and “generic.” If a name is “arbitrary or fanciful” like Google or Kodak, it is considered inherently distinctive and receives trademark protection. Also if a name is “suggestive” like Coppertone because it does not directly describe the product, but suggests the product, the mark is also considered distinctive and receives trademark protection. If a mark is “descriptive” like NFL because it describes the product, it only receives trademark protection if the mark has acquired secondary meaning. Conversely, if a name is generic or becomes generic like Aspirin, it has no trademark protection.
Trademark actions fall into either infringement or dilution suits. Infringement occurs when there is a likelihood of confusion between the infringing product and the trademarked product. The courts use the following criteria to weigh whether infringement occurs: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant's intent.
Dilution happens when a mark is “famous” and the distinctiveness of the mark is diluted or tarnished by another. The courts use the following criteria to determine whether a mark is famous: 1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; (8) whether the mark is registered.
Advantages of Federally Filing a Trademark
Most states including Utah have state trademark registering options (link), but there are several advantages for filing a federal trademark (link). These advantages are: providing public notice for ownership of the mark; a legal presumption of your ownership of the mark in court and exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration; the ability to bring suit in federal court; a means to obtain registration in foreign countries; the ability for U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods; the right to use the registration symbol ®; after 5 years the possibility for applying for incontestability of the trademark; and Listing in the United States Patent and Trademark Office’s online databases (link).