Patents: The Origins and The Mysteries

Patents are ubiquitous nowadays, but where did the notion of owning an idea come from? Although there is not abundant evidence, scholars believe patents first came into use in Ancient Greece. Some of the first recorded patents were issued in the fifteenth century to Venetian glassblowers, renowned for their unique techniques, used patents to protect the unique methods and style of their work from glassblowers throughout the rest of Europe. The Republic of Venice stated that new innovations “had to be communicated to the Republic to obtain the right to prevent others from using them.”

In 1449, one of the first formally recorded patents was registered in England to John of Utynam for his glass-making process. The patent had a duration of twenty years and granted him sole rights to the use of his novel technique. Interestingly, in payment for his patent, John of Utynam taught fellow English glass-makers his technique. English government saw patents as a useful tool to increase economic competition and encourage technological improvements—an opinion that holds true today. Unfortunately, the patent system in England soon became corrupt and became a source of income for the monarchy rather than a mechanism to support new innovations. Public outcry resulted in the Statute of Monopolies in 1624, which affirmed the tenets that patents must be novel, serve the public interest, and be time-limited-tenets that have influenced modern patent law worldwide.Patent Graphic

In North America, there was no formal system for filing patents prior to the creation of the constitution. Initially, inventors had to make individual appeals on a case by case basis to colonial governments, and those patents were unregulated and generally limited to within each state. By the late 18th century, states began to pass general patent laws that led to a more regulated patent approach, yet the process was still separated by state so a patent had to be filed in each state individually for full protections. The US federal government made sure to include similar regulations for the protection of ideas, which are included in Article I, section 8 of the Constitution passed in 1788. In 1790, the government introduced the United States Patent Act, which allowed for federal patent protection lasting for up to fourteen years for a novel, useful innovation. The first federal American patent filed was to Samuel Hopkins in 1790 for a method of making potash, which was a substance used to make soaps. According to some estimates, a patent at this time cost between four and five dollars. By 1793, the Act was revised by Thomas Jefferson to more clearly define what is patentable: “any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement on any art, machine, manufacture or composition of matter.”

Despite the filing of only three patents during 1790, but filings soon skyrocketed to a total of 10,000 by 1836. As the number of patents grew, the office moved records to a temporary location while a safer, fireproof building was built. Unfortunately, the temporary location caught fire and many details of the earliest patents were lost. While most of this information was lost, some have been recovered over time through old family records or university archives. All patents lost to the fire, or the patents filed prior to 1836, are called “X- patents.”  In current times more than 600,000 patent applications are filed annually with more than 300,000 granted annually with all of this work handled by a staff of more than 10,000 employees at the USPTO. While the patent process might be more clear logistically, it is still full of disagreement, delays, and complications.

IP Jargon: What are they talking about? – Part 2

When beginning the process of protecting your invention, lots of industry specific terms and legal jargon get thrown around and can seem a bit daunting. To help ease you into the world of intellectual property protection, OTT has collected and defined some of the most common words and phrases that you’re likely to come across. In this two-part post, we’ll discuss jargon heard in patent statutes and applications and during the patent review process and a patent appeal (Part 1 can be found here). In this part we will cover jargon often heard during the patent review and appeal processes.

Patent Review Process Jargon

  • Amending the Claim/Amendment: After the patent has been filed, if it is discovered that an aspect of the invention already mentioned within the patent is not fully described or drawn, the patent may be amended to properly describe it.Patent Graphic

  • Office Action: After a patent application is submitted, the case is assigned an examiner, who evaluates the application for language and structure as well as prior art. If the application is rejected (which most are initially) the case’s examiner will provide this document explaining why.

    • Non-final Office Action: The Office Action sent after the patent application’s first rejection. The applicant may respond in a variety of ways, including amending the terms or requesting reconsideration.

    • Final Action: If the inventor’s response to the first Office Action was not considered sufficient, they may receive a Final Action. A case’s second rejection is usually deemed “final,” which means that the inventor’s options for response are restricted. Options for response include modifying the rejected claims, filing a Request for Continued Examination, requesting an interview with the examiner or filing an appeal.

    • Restriction Requirement: A given patent may only be awarded to one individual invention. If an examiner feels that the application includes more than one distinct invention, the applicant will have to choose one, and restrict the claims to those concerning that invention.

  • Rejections: is technically an office action where the patent examiner rejects claims based on patentability of the subject matter (section 101) or patentability in light of prior art (section 102 or 103). Although a rejection of claims (section 112) may sound like a rejection of the content found in a claim, this rejection is can be based on objections that the claims are not in their proper form.

    • Obviousness (section 103): An invention must not simply consist of a combination of prior art or an improvement on a previous invention. To be eligible for a patent, an invention must be completely unique.

    • Novelty (section 102): An invention may not have been previously patented, described in publication, or have been in use or on sale by anyone—including the inventor—for more than a year before the application was filed.
    • Patentable Subject Matter (section 101): An invention that is eligible for patent protection meeting the standards of novelty (section 102), utility (section 112), and non-obviousness (section 103). This includes “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

Patent Appeal Jargon

  • Appeal: A request that a decision be reviewed by a higher authority. An appeal may be filed after an inventor receives a final office action, to be reviewed by the Patent Trials and Appeals Board.

  • RCE: (Request for Continued Examination): After the final office action, an inventor may file an RCE and make any amendments and arguments to be considered by the examiner.

IP Jargon: What are they talking about? – Part 1

When beginning the process of protecting your invention, lots of industry specific terms and legal jargon get thrown around and can seem a bit daunting. To help ease you into the world of intellectual property protection, OTT has collected and defined some of the most common words and phrases that you’re likely to come across. In this two-part post, we’ll discuss jargon heard in patent statutes and applications and during the patent review process and a patent appeal. In this part we will cover jargon found in patent statutes and applications.

Patent Statue Jargon

  • Statutory Subject Matter: Something that can be legally protected under a patent. There are four categories of ideas that can be protected by patents: process (a series of steps), machine (an object consisting of parts), manufacture (an object produced by giving new form to raw materials), and composition of matter (compositions of two or more substances.)

  • Bar date (aka Statutory Bar Dates): Dates that are triggered by statue in the patent application process. If any date is missed all potential rights are lost. These are similar to statute of limitations.Patent Graphic

  • Provisional Patent Application: Acts almost as a “placeholder” for a patent application, a provisional application will be granted a filing date, but the application will never be examined and will not become a patent. Although provisional applications become void after one year, an inventor may wish to file one once they have enough detail on the invention, to ensure that they are the first to file. Provisional applications may also allow more time for research or developing the idea before applying for a full patent.

  • Utility vs. Design Patents: There are hree types of patents available in the US: utility, design, and plant. Utility and Design patents, can both be obtained for the same invention. Utility patents protect what an invention does, whereas design patents protect how an invention looks. Although design patents last longer (14 years is typical), utility patents are generally stronger in that they protect the actual function of the invention. For example, if an inventor only holds a design patent, others can make inventions that have the same function as long as they appear differently. Lastly, are plant patents which provide 20 years of patent protection for the inventor of a new variety of plant, preventing others from reproducing and/or selling the plant.

  • PCT Patent Application: A patent application filed under the “Patent Cooperation Treaty.” This non-provisional “International” type patent application lasts for 18 months. It enables the applicant to a single application and retain both their filing date as well as the ability to choose which countries specifically to enter their application into at the end of the 18 months. This method is best for those considering applying for patents in many countries, and wishing to delay cost.

  • AIA (Leahy-Smith America Invents Act): Enacted in the US in 2013, the main change made by the AIA was the switch from “first to invent” to “first to file,” in regards to patents. When multiple inventors file for the same patent, the party that filed a patent first wins control, instead of the party who invented the idea first. You can find more information on the America Invents Act here.

Patent Application Jargon

  • Assignment: Describes both the act of transferring one’s rights to a patent or application to someone else and the legal document memorializing the transfer.

  • Claim: The exact part of an idea within a patent application in which an inventor outlines his or her invention. The claims usually take the shape of a list formatted in oddly worded sentences. This is what the patent will protect and what the inventor will have the rights to.

  • Declaration: A document in which the inventor declares that he/she was the inventor, and that he/she authorized the filing of the patent, acknowledging associated penalties.

  • Enablement: The application and the patent must provide language clear enough for an ordinary person in the field to be able to build or practice the invention from the description in the patent.

  • Embodiments: Different versions of the invention. The intended usage of the invention is known as the “preferred embodiment,” whereas other related versions are known as “alternative embodiments.” Preferred and alternative embodiments must be described in a patent application either through words, drawings, or both.

  • Prior Art: Any information (publication, presentations, etc.) regarding an invention that has been made public before patenting. To ensure originality for a patent, there must not be any prior art for the invention. Search Report: a report published by a patent office, explaining which documents may be used in determining the patentability of an invention. These documents usually contribute to prior art.

Overview of the U. S. Patent Process

Getting Started: The Provisional Patent Application

There are multiple avenues to consider when filing a patent based on the specifics of the situation and the inventors. The first available option (and the one most commonly used at universities) is a provisional application. The importance of provisional patents stems from the patent system’s usage of a first to file system, which dictates that the first party to file a patent for a technology, rather than the first party to invent the technology, is granted the rights for the invention.

Unlike a non-provisional patent application, a provisional application is not examined and does not need to comply with formal requirements, but should include the most detailed description possible in order to ensure the best coverage for the technology. The filing fees for a provisional patent application are considerably lower than other patenting options and allow for establishing an earlier effective filing date. A provisional application lasts for 12 months and will otherwise become abandoned if not converted into an examinable patent application (e.g., a non-provisional or PCT application). During the 12 month provisional time period, the invention may be identified with the term “patent pending.”

Types of Examinable Patent Applications

Patent GraphicThere are four application types: a design patent application, a non-provisional application, PCT application, a design application, or plant application. Design patent applications are used to protect the visual elements of an invention, while utility patent applications provide protection for the function of an invention. Both non-provisional applications and PCT applications are utility patent applications. Non-provisional applications are U.S. examinable patent applications. PCT Applications are “international type” patent applications that allow for a single streamlined process through which to file the application in the U.S and/or internationally. Plant patent applications provide patent protection for the inventor of a new variety of plant, preventing others from reproducing and/or selling the plant.

Completing a Patent Application

It is important to keep in mind that after the non-provisional patent application is filed with the USPTO (United States Patent and Trademark Office), additional information cannot be added. After an application is filed, notice is given regarding whether or not the application is considered complete by the USPTO. Following notice of a completed application, an examiner is assigned to determine whether or not the application meets official requirements of patenting. A response may be resubmitted following a rejection, and if the patent application is rejected twice, an appeal may be filed with the Patent Trial and Appeal Board (PTAB) or the applicant may request continued examination (often called an RCE which includes an associated fee) to continue examination of the patent application by USPTO.

Patent Approval and Maintenance

If a patent application is approved, a notice of allowance is sent out explaining the necessary issue and publication fees. Later, after the fees have been paid, the patent will proceed to issuance and be granted. The letters patent is sent out on the patent’s issue date. In order to keep a patent in effect, maintenance fees are due on a set timeline. The maintenance schedules vary by country and patent type, for example the fees for a utility patent are due at 3-3.5 years, 7-7.5 years, and 11-11.5 years and may not be paid early. Once a patent term has ended, the patent is deemed expired.

The Office of Technology Transfer at Emory University filed more than 150 patent applications last year.  Although the patent process is not completely straightforward, we, at the Office of Technology Transfer, are here to help guide you through the journey.

Six Things to Know About Copyrights

Copyright GraphicThere are plenty of myths and confusion around copyright law. Many people aren’t sure what a copyright covers and how it differs from other types of intellectual property (IP) protection like patents or trademarks. Although a blog is too short to go into all the specific details of copyright law, we hope to hit a few key highpoints here and help clarify what a copyright is and its function.

  • A copyright differs from a patent or trademark in that it protects an original work of authorship. A patent protects inventions or discoveries and a trademark protects words, phrases, symbols, or designs identifying the source of the goods or services.

  • In the United States, under the Copyright Act (17 U.S.C §§ 101 et seq) computer programs are literary works and may be filed as such, meaning that software is often protected via a copyright.

  • You do not need to register or publish your work to gain copyright protection. A work is under copyright protection the moment it is created and fixed in a tangible form that is perceptible either directly or with the aid of a machine or device. A copyright does not protect ideas, concepts, systems or methods of doing something. A copyright would protect the expression of the idea or concept.

  • The term of a copyright work depends on other factors. As a general rule, the life of a copyright is the author’s life plus 70 years, meaning the copyright will expire 70 years after the author’s death. For an anonymous work, pseudonymous work, or work made for hire, the copyright term is 95 years from the year of its first publication or 120 years from the year of its creation. For works published before 1978, consult chapter 3 of the Copyright Act, as the terms can differ.

  • Know who owns the copyright. The copyright belongs to the author as soon as the work is created. Paying someone(s) to create a work (for example to code software) does not guarantee that you will own it. Although “work made for hire” makes ownership by an employer the default, not all commissioned work of software qualifies as “work made for hire.” To avoid issues or confusion, it is best to clearly state a work was made as “work for hire” in a contract.

  • The fair use doctrine permits the use of limited portions of a work for purposes such as commentary, criticism, news reporting, and scholarly reports. There are no legal rules permitting the use of a percentage, specific number of words, or certain number of musical notes of a work.

If you are unsure or have any questions regarding intellectual property, it is best to consult your technology transfer office, we would be happy to meet with you, or an IP attorney. You can find more information regarding copyright law at the United States Copyright Office’s website, http://copyright.gov/.

Quick Reference of the Common Types of Intellectual Property Rights

“Intellectual property” or “IP” generally refers to exclusive rights granted to owners under U.S. intellectual property laws to a variety of intangible assets covering creations of the human mind.  Common types of IP rights include copyrights, trademarks, patents (utility and design patents) and trade secrets.

Type of Right

What it Protects

How to Obtain

Copyright Original works of authorship, including writings (including computer software) music (including any accompany words and/or music), and works of art (e.g., pictorial, graphic, and/or sculptural works) that have been tangibly expressed
  • Copyright exists immediately and automatically when the work is created, that is, when it is fixed in a tangible copy for the first time
  • A notice of copyright may be designated on the work of authorship by the following:
    • The symbol © (the letter “C” in a circle), or the word “Copyright” or the abbreviation “Corp.”;
    • The year of first publication of the work; and
    • The name of the copyright owner (e.g., Emory University)
  • No publication, registration or other action in the U.S. Copyright Office is required to secure copyright
Trademark Word, name, symbol, logo, image design, or any combination used or intended to be used to identify and distinguish the goods/services of a particular source from those of others
  • Rights can be established by registering in the U.S. Patent and Trademark Office (also referred to as “registered trademark”) or through actual use in the marketplace (also referred to as “unregistered trademark” or “common law” trademark)i
  • A trademark is designated by the following symbols:
    • ™ for a common law or unregistered trademark; and
    • ® for a registered trademark
Utility Patent Any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof – i.e., the way an item works and is used (the structure/function of an item)
  • Examples include: medical devices, methods of treatment, compounds, mechanical devices, and methods of manufacture
  • Most patents are utility patents
  • Rights can be established by a grant of a Utility Patent by the U.S. Patent and Trademark Officeii
Design Patent New, original, ornamental design of an article of manufacture – i.e., the way an item looks
  • Examples include: jewelry, furniture, beverage containers, and computer icons
  • Also referred to as “industrial design.”
  • Rights can be established by a grant of a Design Patent by the U.S. Patent and Trademark Officeiii
Trade Secret Any formula, pattern, device, instrument, or compilation of information, which is not generally known or ascertainable, which may give a business an economic advantage over competitors who do not know the trade secret
  • Examples include: a formula for a chemical compound (e.g., The Coca-Cola Company’s formula), a processes, plans, treating or preserving materials, software, or a pattern for a machine or other device
  • General Factors to determine whether information is a trade secret:
    • the extent to which the information is known to those in your business and those outside the business (e.g., extent to access to the information)
    • The information confers some sort of economic benefit on its holder (e.g., the information is valuable as to significantly impact the operations of a business); and
    • the information is subject to reasonable efforts to maintain secrecy

 

Here at the Office of Technology Transfer, we work hard to determine the most appropriate and potentially valuable type of intellectual property to pursue for our new technologies.   If you have questions regarding IP protection or to learn more about how the Office of Technology Transfer works with our faculty, clinicians and students to pursue IP protection, please reach out to our office or take a look at the IP section of our website, http://www.ott.emory.edu/inventors/protection.html.

i To register a trademark in the U.S. Patent and Trademark Office, the trademark owner must file an application in the U.S. Patent and Trademark Office and the U.S. Patent and Trademark Office must find that the trademark meets trademark requirements, such as showing that the mark is not likely to be confused with other trademarks in the general class.

ii,iii   To be granted a patent in the U.S. Patent and Trademark Office, the applicant must file and application in the U.S. Patent and Trademark Office and the Patent Office must find that the claimed invention/design meets patentability requirements, such as novel and not obvious.

Inventorship: Who is an Inventor?

Inventorship could be the million dollar question. In a university setting where collaboration is common place – who is an inventor? Most scholars understand “authorship,” but this concept shouldn’t be confused with “inventorship.” Being listed as an author on a journal article discussing the invention does not automatically make one an inventor on the patent itself.

As a general rule, an inventor is one who has substantially contributed to the “conception” of an invention. Whereas, someone working at the direction of another, using routine skill without making a substantial conceptual contribution, is not considered to be an inventor under U. S. patent law. Credentials, such as degrees or titles, do not play a role in whether someone is an inventor on a particular patent. Disputes regarding inventorship often arise when a person with involvement in testing or construction of the invention believes they should be named as an inventor. Whether that person should be named as a joint inventor is not simply a courtesy or straightforward yes/no decision, it is a fact-intensive inquiry based on conceptual contributions of the person to the invention.

Two real world examples illustrating these points are provided below. In the first one, highly reputable scientists working in collaboration with other inventors were found by a court not to contribute to the conception of a particular invention. Burroughs Wellcome Company was the owner of six patents that claimed various preparations of 3′-azidothymidine (AZT) and methods for using that drug to treat HIV, a retrovirus. Each of these patents named the same inventors, all of whom were employed by Burroughs Wellcome. Tests performed at Burroughs Wellcome facilities showed that AZT had activity against murine retroviruses. Scientists at the National Institutes of Health (NIH) were able to develop a test that could demonstrate a compound’s effectiveness against HIV in humans. Burroughs Wellcome had sent a sample of AZT to the NIH. In an accompanying letter, Burroughs Wellcome reported the results of the murine retrovirus tests and asked that the compounds, including AZT, be tested for activity against HIV. The NIH test found AZT was active against HIV.

A dispute ensued that questioned (?) whether NIH scientists were also joint inventors. The court held that,

Conception is the touchstone of inventorship, the completion of the mental part of invention. . . . But an inventor need not know that his invention will work for conception to be complete. . . . He need only show that he had the idea; the discovery that an invention actually works is part of its reduction to practice. Burroughs Wellcome v. Barr 40 F.3d 1223 (U.S. Fed. Cir.1994)

The NIH scientists were held not to be joint inventors “because the testing confirmed the operability of the inventions, it showed that the Burroughs Wellcome inventors had a definite and permanent idea of the inventions. It was part of the reduction to practice and inured to the benefit of Burroughs Wellcome.” The court reasoned that “the [NIH] testing was brief, simply confirming the operability . . .” Id. Thus, the involvement was not considered substantial enough to warrant the NIH scientists be listed as co-inventors.

In a more recent case, Kent Displays, Inc. (“KDI”) hired an associate professor at Kent State to work on a project for KDI which entailed the synthesis and development of chiral additives for improving portable Liquid Chrystal Displays (“LCDs”). The professor hired a post-doctoral researcher to synthesize the chiral molecules. Both the professor and the post-doctoral researcher were listed as “Co-Research Institution Investigators” on grant applications filed with the National Science Foundation, and the post-doctoral researcher was to work independently and to have ideas of his own while working on the KDI project. The prepared compounds were tested at KDI.

The post-doctoral researcher eventually left his position with Kent State. A patent was later obtained that claimed chiral compounds made by the professor after the post-doctoral researcher left his position. The professor and KDI employees were named as co-inventors. The post-doctoral researcher was not named as a co-inventor. The patent specification disclosed a synthesis protocol developed by the post-doctoral researcher as the protocol utilized to synthesize the claimed class of chiral compounds. The post-doctoral research sued to be named as a co-inventor. The court held that,

A joint invention is the product of a collaboration between two or more persons working together to solve the problem addressed. . . . People may be joint inventors even though they do not physically work on the invention together or at the same time, and even though each does not make the same type or amount of contribution. . . . Each joint inventor, however, “must contribute in some significant manner to the conception of the invention.” . . . Conception of a chemical compound “requires knowledge of both the specific chemical structure of the compound and an operative method of making it.” Falana v. Kent State University (Fed Cir. 2012)

In this case, the court reasoned that the collaborative contribution of the post-doctoral researcher of the synthesis protocol was a sufficient contribution to the conception of the claimed compounds to render him a joint inventor.

At a university where collaboration is king, inventorship can be tricky and differs significantly from authorship as was illustrated here. This issue is handled routinely by the staff of the Emory Patent Group (EPG) in the technology transfer office. Disclosure your discovery and EPG will work through the issues and make a legal determination.