Tag: IP_Protection

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 There are

There 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

“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

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

A medical device is defined as an instrument, application, or implant that is used in the diagnosis or treatment of a disease or other medical condition. Medical device patents differ from patents on biologics or pharmaceutical products in that there is less need to establish the efficacy of the device, actually build a prototype, or provide supporting data. In many cases, once the inventor has thought of the idea and how it would be implemented, a patent application for a medical device can be pursued. When a new medical device is disclosed to the Office of Technology Transfer, our case managers analyze the potential market for the product, what development still needs to occur for the product to be commercially viable, and perform a preliminary prior art search. Subsequently, if the market and initial patent analyses suggest that the idea is commercially feasible, the Emory Patent Group will get involved to develop a patent strategy, perform additional prior art searches, and draft a patent application. From an intellectual property (IP) standpoint, there are different options to protect a medical device when compared to a biologic or small molecule therapeutic. For any of these products, a utility patent application that covers

On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act, known as the AIA, into law. The purpose of this act was to modernize the United States patent system, and as a result several provisions have been implemented that change the way patents are regulated. On March 16, 2013, the eighteen-month anniversary of the signing of the act, the third and most prominent phase of implementations went into effect. Consequently, The United States now operates under a First Inventor to File (FITF) system, a major change from the previous First to Invent system. Up until March 16, 2013, U.S. law focused on who first conceived of an invention, rather than who filed the patent application itself. Under the AIA, the new focus shifts to whether a “first filer” obtained, or could have obtained, the invention from a “later filer.”  Most researchers are familiar with a need to document their conception dates and keep appropriately witnessed notebooks. This requirement was not eliminated in the AIA, but expanded. At the same time, this change does include some provisions which allow another applicant that files a patent for the same invention to show that the first filer derived the invention from