Along with the help from the Office of Technology Transfer, here are some additional resources that will provide information and guidance on patenting technologies.
Intellectual property is anything created by the human mind. Some examples of intellectual property include inventions, poems, books, articles, song lyrics, music, paintings, drawings, sculptures, recipes, designs, logos, symbols, photographs, videos and film. Intellectual property is considered personal property — just like a car, a chair or a computer. Because intellectual property is considered personal property, ownership of IP can transfer from one person to another. Different forms of IP are given legal protection in the form of copyrights, trade secrets, trademarks, plant variety protection and patents.
A copyright is legal term used to describe a collection of rights that creators have over their literary and artistic works that have been “fixed in a tangible medium of expression.” Such works also include computer programs and architectural designs. Generally, the creator’s collection of rights under a copyright include the ability to authorize or prohibit others from:
- Reproducing the work in various forms, such as making copies of DVDs or photocopying a book
- Publicly performing the work, such as a music group playing a song in a night club
- Recording the work, such as recording a concert performance
- Broadcasting the work, such as posting a video that features a song by The Beatles to YouTube
- Translating the work into other languages
- Adapting the work, such as making a film based on another creator’s novel
Additionally, a copyright owner may have rights to claim authorship of a work and to oppose changes to a work that would harm the creator’s reputation. A copyright does not protect an idea, but it does protect a specific expression of an idea. For example, a copyright would not protect an artist’s idea to paint a bowl of fruit; however, a copyright would protect the artist’s actual painting of a bowl of fruit. For more information on copyrights, please contact the Office of Technology Transfer or visit the United States Copyright Office website.
Generally, any confidential business information that provides an organization a competitive advantage may be considered a trade secret. Trade secret is a broad term that usually includes a business’s selling or distributing methods; client or supplier lists; consumer profiles; and manufacturing processes. Typically, trade secrets are protected without a formal registration process; however, the following conditions determine whether information is legally considered a trade secret:
- The information must be secret (not generally known or readily accessible by competitors)
- The information must have some commercial value because it is secret
- The information’s rightful owner must have taken reasonable steps to keep the information secret, such as through use of confidentiality agreements or limited access to the information
For example, a semiconductor chip manufacturing company considers the design specifications for its new computer processor secret and marks all files associated with the specifications as “confidential.” If the company posts the specifications in area visible to any visitors touring the company, then the company has not taken reasonable steps to keep the specifications secret. As a result, the specifications are not legally a trade secret.
Trade secret protection lasts as long as the information is legally considered a trade secret. However, such protection does not prevent others from reverse engineering an invention. For example, manufacturer A places a new battery on the market that has twice the usable lifespan of other available batteries. If manufacturer A only protects how the battery works as a trade secret, then manufacturer B can purchase the battery, disassemble it, learn how the battery works, and then produce similar batteries without violating any law. As a result, some discoveries may be better protected by patent law. The OTT can help you determine whether trade secret or patent protection is best for your discovery.
A trademark is any word, name, symbol, device or combination used to distinguish one’s goods or services from another’s goods or services. Some examples of trademarks include Apple®, Coca-Cola®, the McDonald’s® Golden Arches, the NBC® chimes, and “JUST DO IT.” A federally registered trademark is protected indefinitely as long as the trademark is used in commerce and a registration renewal form is filed every ten years. Similar to copyrights, a trademark does not have to be registered, but doing so provides certain advantages. The most important advantage is the ability to bring a lawsuit against infringing trademarks in federal court. Additionally, registration provides public notice of the owner’s trademark and allows the owner to use the federal registration symbol, “®.” For more information on trademarks, please contact the Office of Technology Transfer or visit the United States Patent and Trademark Office.
Plant variety protection is a method of protecting sexually reproduced (by seed) or tuber-propagated (except fungi or bacteria) plant varieties. By receiving a plant variety protection certificate, a breeder has the right to prevent others from selling, offering for sale, reproducing, importing, exporting or hybridizing the plant variety. Additionally, the breeder can elect to have the variety sold within the United States only as a class of certified seed for a designated number of generations. Generally, plant variety protection continues for 20 years from the date the certificate is granted; however, protection for tree and vine varieties continues for 25 years.
In order to qualify for plant variety protection, a plant variety must meet four criteria: new, distinct, uniform and stable. A new plant variety is one that has not been commercialized or offered for sale for more than a year inside the United States prior to filing. Additionally, plant varieties must not have been commercialized or offered for sale for more than four years outside the United States prior to filing. A distinct plant variety differs from all other known plant varieties by at least one botanical characteristic, such as height, maturity or color. A uniform plant variety features botanical characteristics that are describable, predictable and commercially acceptable from plant to plant within the variety. A stable plant variety remains genetically unchanged with regard to the variety’s essential and distinctive characteristics from generation to generation.
The University of Idaho holds plant variety protection certificates for several bean, potato, and wheat varieties. For more information on plant variety protection, please contact the Office of Technology Transfer or visit the Plant Variety Protection Office website.
A patent is the exclusive right granted for an invention to prevent or stop others from commercially making, using, distributing, importing, or selling the patented invention without the patent owner’s permission. In exchange for a patent, the inventor must disclose technical information in the patent application that will enable others to make the invention. Also, a patent is only valid in the issuing country. For example, a U.S. patent owner could prevent others in the United States from making his/her U.S. patented invention; however, he/she could not prevent others in China from making his/her U.S. patented invention. Nevertheless, the U.S. patent owner could prevent such Chinese-made inventions from being imported and sold in the United States. Additionally, a patent is granted for a limited time. Within the United States, a patent will expire twenty years after the patent application’s filing date. For more information on patents, please contact the OTT or visit the United States Patent and Trademark Office.
Generally, a public disclosure is anything that is readily accessible by the public and that describes the invention in sufficient detail to enable someone to make and use the invention. Public disclosures include written descriptions in printed publications, public demonstrations or use, offers for sale, actual sale, poster displays, paper presentations, oral presentations/lectures, slide presentations, emails and posting online in blogs, websites, databases or videos.
A nondisclosure agreement — also referred to as an NDA or confidentiality agreement — is a legally enforceable contract that typically serves three functions. First, NDAs protect secret information. Second, NDAs help protect patent rights. Third, NDAs outline what information is confidential and what information can be disclosed.
An NDA creates a confidential relationship between two people. Participants in a confidential relationship promise not to reveal or distribute information shared with them. If a participant breaks the confidence, then he/she can be sued. Although confidential relationships can be created through an oral agreement, NDAs are an easier method of proving that a confidential relationship exists between two people.
At the University of Idaho, any incoming or outgoing NDAs should be reviewed, negotiated, and signed by the OTT.
A patent is the result of a bargain between a government and an inventor. On one hand, inventors are typically reluctant to reveal the details of their inventions because they do not want others to copy their inventions. On the other hand, governments want the public to be able to copy inventions because doing so leads to increased competition in economic markets, increased collective knowledge and increased innovation, which all benefit society. Therefore, governments offer a limited commercial monopoly to an inventor (through a patent) in exchange for disclosure of his/her invention’s details. The inventor can recoup his/her costs for developing the invention and gain additional income by charging a fee to others who use the invention, and the public gains information about the invention that can be used for other innovations. If the public already knows how to make, copy and improve an invention, then there is no motivation for a government to make a bargain with an inventor in order to obtain that same information.
Please contact the Office of Technology Transfer as soon as possible. Most likely you have already lost the ability to apply for a patent in most foreign countries. Globally, for an invention to patentable, it must be novel. Novelty is determined by comparing a claimed invention to publicly available knowledge. If publicly available knowledge does not disclose how to make an invention, then that invention may be novel. Most foreign countries require “absolute novelty.” In other words, a patent application for an invention must be filed within the associated country before making a public disclosure regarding the invention anywhere in the world.
Nevertheless, some countries allow for a grace period that provides a safety net for inventors who made a public disclosure before filing a patent application. Depending on the country, an inventor will have between six to twelve months to file a patent application in that country after making a public disclosure. The United States has a one-year grace period for inventors. For example, a professor gives a presentation at a scientific conference in Tokyo where she reveals the details from her latest research on Oct. 15, 2014. The professor must file a US patent application before Oct. 16, 2015. Otherwise, her presentation will be used by the United States Patent and Trademark Office to reject her US patent application because the professor’s invention is not novel.
Talk with the Office of Technology Transfer (OTT) as soon as possible. The OTT staff can discuss your available options. Some options may include removing proprietary information from your presentation, preparing confidentiality agreements for attendees to sign, or preparing and filing a patent application before you present. The earlier you speak with the OTT, the more options will be available to you.
The best way to preserve the ability to patent and publish is to file a patent application before publishing. For public disclosure purposes, publishing includes being featured in traditional published documents such as published patent applications, journal articles, student theses, technical manuals, magazines, newspapers and books. Additionally, courts have held that poster presentations, handouts at scientific meetings and online posts also qualify as printed publications.
The OTT staff will be pleased to explain the patent application process and assist you through the process. Additionally, the OTT staff can inform you of what countries have grace periods for filing a patent application after publishing; however, remember that your ability to patent your invention will be lost in almost all countries if you publish before filing a patent application.
The best way to discuss your research/invention with others is to have them sign a nondisclosure agreement. This can be difficult in an academic setting where the free exchange of knowledge is encouraged and often expected. Nevertheless, without a nondisclosure agreement, anyone with whom you discuss your research/invention could make a public disclosure and limit your ability to obtain a patent. If others are unable to sign a nondisclosure agreement, then you should make every attempt to ensure that they understand your research/invention is confidential and that you expect them to keep such information confidential. Do not allow anyone to make or keep copies of your data, research or invention. If you need to discuss your research for a grant proposal, contact Office of Technology Transfer staff for additional guidelines. The OTT is a safe place for faculty members to discuss their research/inventions.
Lectures may also be considered a public disclosure. The following are some simple guidelines for faculty members to follow when presenting material to students. First, be certain that the presented material is not connected to any personally conducted research/idea for any agency or individual. Each problem has multiple solutions. Faculty members should be certain they are not presenting their unique solution to their students.
Second, faculty members should not allow any video or audio recording of their lectures or distribute copies of slide presentations that contain proprietary information or information that is not within the public domain. UI Faculty-Staff Handbook 4700 F-7 already prohibits electronic recording of lectures without an instructor’s permission. Faculty members should inform students of this policy and enforce it within their classrooms.
Third, faculty members can request confidentiality from their students in a syllabus. The following is an example of a statement that may be included in an undergraduate course syllabus to help protect intellectual property:
As students, many of you will have opportunities to participate in research projects. An important aspect of conducting research is protecting confidential information. To prepare you for participating in and conducting research projects in educational and professional environments, you will be expected to protect information identified as confidential in this course.
ANY INFORMATION ORALLY OR VISUALLY IDENTIFIED BY THE INSTRUCTOR AS CONFIDENTIAL OR PROPRIETARY SHALL NOT BE DISTRIBUTED OR DISCUSSED OUTSIDE THE CLASSROOM, unless as part of a learning activity related to this course. During such learning activities, confidential information shall only be discussed with other class members or the instructor. DISTRIBUTING INCLUDES POSTING TO THE INTERNET IN ANY FORM.
According to University of Idaho policy, STUDENTS MAY NOT ELECTRONICALLY RECORD ANY CLASS LECTURES WITHOUT THE INSTRUCTOR’S PERMISSION (UI Faculty-Staff Handbook 4700 F-7). I do not grant such permission. Additionally, students will not have access to any slides presented in this course.
By participating in this course, each student agrees to not to distribute or discuss any confidential information outside of class and accepts that doing so may result in receiving a failing grade for the course.
Instructors should draw students’ attention to any language requesting confidentiality in the syllabus in order to provide notice to the students that such a request is being made. Since much of what instructors divulge is within the public domain, instructors should identify confidential material during their presentations to students. This practice will remind students of the request for confidentiality and identify what information students should hold confidential.
Nevertheless, when a course is partnered with an outside agency, faculty members should be certain that all involved students have signed a nondisclosure agreement to prevent disclosure of an outside agency’s intellectual property. Office of Technology Transfer staff can guide you to the proper form for use in your course.
The best way to show your invention to others is to have them sign a nondisclosure agreement, because showing your invention may be considered a public disclosure that limits your ability to apply for a patent. The Office of Technology Transfer staff knows firsthand of inventions denied a patent because they were displayed publicly. If others are unable to sign a nondisclosure agreement, or if this is not logistically possible (such as a convention), here are some simple actions you can take to help preserve your ability to patent your invention:
- Do not show your invention for money-making purposes
- Do not permit your invention to leave your control
- Do not permit anyone to touch, handle or use your invention
- Do not leave your invention unattended
- Do not allow anyone to photograph your invention
- Limit the number of people that view your invention to at one time
- Do not demonstrate your invention in public
While the previously listed actions are helpful, they still may be insufficient to completely preserve your ability to patent your invention. Please contact the OTT if you are considering showing your invention to anyone that has not signed a nondisclosure agreement regarding your invention.
The answer to this question depends on why you need someone to test your invention. If your invention works and the users’ feedback will be used to further refine the invention, then allowing people to test/use your invention jeopardizes your ability to apply for a patent. You should contact the Office of Technology Transfer and explain you have a working invention. If your invention does not function as designed and the users’ feedback will be used to correct design flaws, then you should have all potential users sign a nondisclosure agreement. Do not allow anyone to use your invention without first having a nondisclosure agreement in place.
If you receive a nondisclosure agreement — also referred to as an NDA or confidentiality agreement — contact the Office of Technology Transfer as soon as possible. At the University of Idaho, any incoming or outgoing NDAs should be reviewed, negotiated and signed by the OTT. An individual faculty member does not have the authority to sign an NDA on behalf of the University of Idaho.
The OTT highly recommends that faculty members put an NDA in place before disclosing their unpublished research to other organizations or people. Faculty members should contact the OTT to negotiate and put an NDA in place.
Currently, a work eligible for copyright protection created after Jan. 1, 1978, is protected for the author’s life plus seventy years.
A work does not have to be published to receive copyright protection. Neither does a copyright have to be registered; however, publishing a work and registering a copyright provide some advantages. Publishing a work informs the public that a work is protected by copyright and allows the owner access to all exclusive rights available under copyright law. Registering a copyright allows the owner to file a lawsuit for copyright infringement and provides notice to the US Customs Service to prevent infringing copies from being imported into the United States.
In order to qualify for a patent, an invention must be a “new and useful process, machine, manufacture or composition of matter.” A process is an act or a series of steps, such as a procedure to vulcanize rubber or a recipe to make toast. A machine is a device used to perform a function, produce a certain effect or produce a certain result. Cars, typewriters and cellular phones are all examples of machines. A manufacture is an item produced from other raw or prepared materials, such as a toothbrush, pencil or tire. A composition of matter is a composition of two or more substances combined through a mechanical mixture or chemical bonds, such as glue, toothpaste, or a prescription drug. Also, a new and useful improvement to a machine, manufacture or composition of matter is eligible to receive a patent, such as the proverbial better mousetrap.
Yes, some inventions are ineligible for a patent. In many countries, scientific theories, mathematical formulas, natural phenomenon, natural substances, plant and animal species, artistic creations, business methods, medical treatment methods and computer programs are generally not patentable.
There are some exceptions to this list for U.S. patents. In the United States, some computer programs are patentable. Additionally, “new, original and ornamental designs of articles of manufacture” are eligible for a design patent. Famous design patents include the Statue of Liberty (D11,023) and the iPad (D504,889). Also within the United States, patents are available for certain plant varieties. The plant variety must be new and distinct, and the inventor or discoverer must have asexually reproduced the plant variety, such as by grafting.
Yes. To obtain a patent in any country, including the United States, you must be the first person to apply for a patent on your invention. For example, two chemists are independently creating an identical chemical compound using identical reaction pathways for use in a cancer medication. If chemist A files a patent application for the compound in the United States on July 10, 2014, and chemist B files a patent application for the identical compound in the United States on July 11, 2014, then chemist A will be awarded the patent. Additionally, you will lose the ability to apply for a patent by making a public disclosure about your invention before filing a patent application.
Software can sometimes be patentable; however, not all countries allow software to be patented. Software can generally be copyrighted. Because the patent requirements and practices vary by country, contacting the OTT for assistance is a wise course of action. Software may be better protected by a copyright or trade secret than a patent. The OTT staff can assist you with determining the best form of legal protection available for your software.
The answer to this question depends on where and how you created the work or invention. Generally, the University of Idaho will own works or inventions developed specifically as part of your employment duties, as part of an agreement with the University of Idaho or using University of Idaho facilities, equipment and space; however, you probably will own works or inventions created on your own time and not using University of Idaho facilities, equipment and space.
For example, if the university pays a math professor to write a calculus textbook for use in university classrooms, then the university will own the copyright on the textbook. However, if that same math professor writes a romance novel on her personal laptop in her living room, then the professor will own the copyright on the novel. Here is another example: if a chemistry professor develops a new cancer medication using his university lab and materials purchased by the university, then the university will own the patent on the medication. However, if the same chemistry professor invents a new environmentally-safe household cleaner in his garage using chemicals he purchased, then the professor will own the patent on the cleaner.
The OTT staff will be pleased to answer any questions regarding who owns intellectual property you author or invent. Also, you can read the University of Idaho policy regarding intellectual property rights and Employment Agreement Concerning Intellectual Property.
Yes. Student theses and poster presentations are considered public disclosures that affect a person’s ability to apply for a patent. Posting online about your research is also considered a public disclosure whether it be through using social media, posting a video to YouTube or blogging. Whenever you discuss your research/invention, be sure to provide a general overview without providing specific details. For example, you could say, “I’m researching a new potential asthma treatment” instead of, “I’m analyzing the effects of P20 peptide on actin fiber disruption in human airway smooth muscle cells.”
As a University of Idaho student, you might participate in research programs that require you to sign a nondisclosure agreement. By doing so, you are signing a legal contract that will require you to keep certain information confidential. If you disclose that confidential information, you could face a lawsuit. In order to protect such confidential information, you should take the same precautions as faculty members.