1.E.Intellectual Property
Bayh-Dole key points
* Non-profits, including universities, and small businesses may elect to retain title to innovations developed under federally-funded research. * Universities are encouraged to collaborate with commercial concerns to promote the utilization of inventions arising from federal funding. * Universities are expected to file patents on inventions they elect to own. * Universities are expected to give licensing preference to small businesses. * The government retains a non-exclusive license to practice the patent throughout the world. * The government retains march-in rights in very specific circumstances."
What are the 3 Types of Patents?
1) UTILITY patents - invention or discovery of any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof; 2) DESIGN patents - invention of a new, original, and ornamental design for an article of manufacture; and 3) PLANT patents - invention or discovery and asexually reproduction of any distinct and new variety of plant.
Exclusive rights of the copyright owner (section 106 , title 17, U.S. Code)
1. To REPRODUCE the work 2. To prepare DERIVATIVE works 3. To PUBLICLY DISTRIBUTE copies or phonorecords of the work by sale, rental, lease, or lending 4. In the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to PERFORM the work PUBLICLY 5. In the case of 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, to DISPLAY PUBLICLY 6. In the case of sound recordings, to perform the copyrighted work publicly by means of a DIGITAL AUDIO TRANSMISSION
3 conditions for (Copyright) Preregistration
1. work is UNPUBLISHED 2. work is BEING PREPARED FOR COMMERCIAL DISTRIBUTION in either physical or digital format 3. classes of work have a history of infringement prior to commercial distribution: motion pictures, sound recordings, musical compositions, books, computer programs or video games, advertising or marketing photos.
What kinds of inventions can be patented?
A patented invention must: 1. be of PRACTICAL USE, 2. show an element of "NOVELTY", 3. NON_OBVIOUSNESS; show an "inventive step"
License
A promise not to sue. In the context of intellectual property law, usually granted in exchange for royalty payments or as a settlement to a countersuit for infringement.
Public Domain
A work of authorship no longer under copyright protection or failed to meet requirements for copyright protection may be used freely without the permission of the former copyright owner.
Patent
An exclusive right granted for a USEFUL INVENTION for a limited period (generally 20 years). The owner can decide whether and how an invention can be used by others.
Berne Convention of 1886
An international treaty, the "Convention for the Protection of Literary and Artistic Works and all acts, protocols, and revisions thereto." The U.S. acceded effective 3/1/1989.
Copyright Notice
An optional identifier, generally the symbol © or word and year of first publication. Use is the responsibility of the owner and does not require advance permission from, or registration with, the Copyright Office.
Trademark
Any word, name, symbol, or device, or any combination thereof, capable of identifying goods produced or provided by an individual or a company. Periods of protection vary but can be renewed indefinitely upon payment of fees.
Non-Provisional Application for a Patent (4 parts)
Application made to the USPTO Director that includes: (1) A written document which comprises a specification (DESCRIPTION AND CLAIMS); (2) DRAWINGS (when necessary); (3) An OATH or declaration; and (4) FEES for filing, search, and examination. Fees are reduced by 50% for an eligible small entity and are reduced by 75% for a micro entity.
Library of Congress (Control) Number
Assigned by the Library at its discretion to assist librarians in acquiring and cataloging works.
Copyright
Creator rights to "original works of authorship. Examples: books, music, paintings, sculpture, films, computer programs, databases, advertisements, maps, technical drawings.
What is a publication?
Distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display constitutes publication. A public performance or display of a work does not of itself constitute publication." Generally, publication occurs on the date on which copies of the work are first made available to the public.
Patent Cooperation Treaty
Eff. 1/24/1978, an international treaty that facilitates foreign patent filings for residents of member countries when obtaining patents in other member countries. -No certified copies of the original application are needed and most expenses are delayed until 2 1/2 years after original filing. -Member countries include all European countries, Mexico, Canada, China, Japan, Korea, Russia and many other industrialized countries.
Bayh-Dole Act
Enacted 12/12/1980, P.L. 96-517, Patent and Trademark Act Amendments of 1980 created a uniform patent policy among the many federal agencies that fund research, enabling small businesses and non-profit organizations, including UNIVERSITIES, to retain TITLE TO INVENTIONS made under FEDERALLY-FUNDED RESEARCH programs.
Atomic Energy Act of 1954
Excludes patenting inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon. See 42 U.S.C. 2181(a).
Does copyright protection require registration?
In general, registration is voluntary. Copyright exists from the moment the work is created. You have to register to sue for infringement of a U.S. work. Work is under copyright protection the moment it is created and fixed in a tangible form that it is perceptible either directly or with the aid of a machine or device.
Industrial Property
Includes patents for inventions, trademarks, industrial designs and geographical indications.
ISBN number
International Standard Book Number is a numerical identifier to assist the international community in identifying and ordering certain publications. It is administered by the R.R. Bowker Company.
The Paris Convention (for the Protection of Industrial Property)
International treaty relating to patents (176 countries) that provides the same patent/trademark rights to foreigners as citizens. A regular first application filing date in a member country allows for protection in all member countries if other applications are filed within 12 months (first applications) or 6 months (industrial designs or trademarks). An international treaty that enables residents of member countries to file patent applications in other member countries. -A Paris Convention patent application must be filed within 1 year of the original (home country) patent application (or 6 months for industrial designs or trademarks), and -it must be accompanied by a certified copy of the original application and a translation into the language of the foreign country. Examples: If a patent application is to be filed in 3 or 4 foreign countries, the Paris Convention is usually less expensive than the Patent Cooperation Treaty. However, if patent protection is sought in all seventeen (17) countries of Europe, for example, more savings are realized if the Patent Cooperation Treaty is used.
National Intellectual Property Rights Coordination Center (IPR Center)
Member agencies share information, develop initiatives, coordinate enforcement actions, and conduct investigations related to IP theft.
Can I copyright a domain name?
No, the Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit organization administers the name assignments through accredited registers.
Intellectual Property (IP)
Non-physical creations of the mind. Examples: inventions; literary and artistic works; designs; and symbols, names and images used in commerce. Types: copyright, patent, trademark, industrial design, geographical indication.
Trade Secret
SECRECY + COMPETITIVE ADVANTAGE. Any information that can be used in the operation of a business or other enterprise and that is sufficiently valuable and secret to afford an actual or potential economic advantage over others. -Must involve secrecy and competitive advantage. -No built-in expiration if owner maintains secrecy.
Copyright preregistration
Simply a place-holder for limited circumstances if a copyright owner needs to sue for infringement while a work is still being prepared for commercial release. Registration must be completed within 1 month after the copyright owner is aware of infringement and no later than three months after first publication.
Non Disclosure Agreement (NDA)
The USPTO maintains all patent applications in confidence until a patent is awarded. Inventor(s) should treat the invention as a trade secret unless it is being sold to the public. Before public disclosure, anyone who needs to see the invention should sign an agreement to acknowledge that the invention is a trade secret and agree to maintain it as such.
Are U.S. copyrights good in other countries?
The United States has copyright relations with most countries throughout the world, and we honor each other's citizens' copyrights. However, the U.S. does not have such copyright relationships with every country.
Assignment (Copyright)
Transfer of ownership in a copyright must generally be done in writing. Exception when the transfer occurs "by operation of law" which may include transfers occurring as a result of a merger.
United States Patent and Trademark Office (USPTO)
U.S. Department of Commerce agency that grants patents for the protection of inventions and registers trademarks to promote the industrial and technological progress of the nation and strengthen the economy.
Fair Use Doctrine
U.S. copyright law allows limited use of portions of a work without permission. -Example: quotes, for commentary, criticism, news reporting, and scholarly reports. -No legal rules about a specific number of words, musical notes, or percentage of a work. -Whether a particular use qualifies depends on all circumstances.
U.S.C.
United States Code -Title 15 of the U.S.C., beginning at section 1051, contains all of the federal TRADEMARK statutes. -Title 17, beginning at section 1, includes all of the COPYRIGHT statutes. -Title 35, beginning at section 1, includes all of the PATENT statutes.
Maintenance Fee (Patents)
Utility patents for applications filed on/after 12/12/1980 are subject to maintenance fees to maintain the patent in force. -Fees are due at 3 ½, 7 ½ and 11 ½ years from the patent grant date. -Payment "window-period" is 6 months preceding each due date. -Failure to pay on time may result in patent expiration. -6-month grace period for maintenance fee paid with a surcharge immediately following due date. -USPTO does not mail notices to patent owners that maintenance fees are due. Efforts are made to remind the responsible party that the maintenance fee may be paid during the grace period with a surcharge.
Copyright Infringement
When a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner.
Mandatory Deposit
Within 3 months of first publication date, copies of all works under copyright protection that have been published in the United States are required to be deposited with the Copyright Office.
Work made for hire
Work created when working for another person or company. The copyright in a work made for hire belongs to the employer, not the creator.
Do copyrights have to be renewed?
Works created on or after 1/1/1978, are not subject to renewal registration. -Works published or registered before 1/1/1978: renewal registration is optional after 28 years but does provide certain legal advantages.
Is copyright registration information public record?
Yes
