Knowledge Translation

K T4T T
Technology Transfer

R E S O U R C E P U B L I C AT I O N

INTELLECTUAL PROPERTY MODULE

Center for Assistive Technology

NATIONAL INSTITUTE ON DISABILITY University at Buffalo
AND REHABILITATION RESEARCH
 Table of Contents

Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1

Types of Intellectual Property . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2

Patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2

Types of Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2

Priority of Invention . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5

Patent Application Process . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6

Copyright . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8

Trademark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .11

Trade Secret . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .13

Early Steps to Protect your Intellectual Property . . . . . . . . . . . . . . . . . . . . . .14

Other Intellectual Property Considerations . . . . . . . . . . . . . . . . . . . . . . . . . . .17

 INTELLECTUAL PROPERTY MODULE
Copyright 2014, KT4TT

(Information in this module does not provide legal advice nor is it intended to provide you with legal advice.
All legal advice should be obtained from a qualified intellectual property attorney. This module provides
definitions, examples, and resources only – it’s a starting point for your information gathering journey as
a technology developer, but it is not exhaustive.)

INTRODUCTION

Commercializing technology innovations is a complex process. Many of its milestones and related activities
may be unfamiliar to many people looking to develop new technologies. Attempting to commercialize
your developments will raise several new issues that must be addressed. One of the most significant issues
is recognizing the importance of protecting your intellectual property. To help you better understand the
issues involved, this module will suggest some early steps to help protect your intellectual property along
with options for how it can be protected.

Intellectual property is defined by the United States Patent and Trademark Office (USPTO) as “Creations
of the mind – creative works or ideas embodied in a form that can be shared or can enable others to rec-
reate, emulate, or manufacture them.”1 Intellectual property can be protected in different ways through
patent law, copyright law, trademark law, and trade secret law. Each is completely different from the oth-
ers in the types of property protected and the rights granted. All intellectual property must be protected
throughout the development process by both creating careful records to prove your ownership and using
non-disclosure agreements when discussing your development with others.

In this module, we will explain each type of intellectual property protection (including which types of
protection are most appropriate for different developments) and discuss the need for confidentiality and
non-disclosure agreements throughout the development process. Once again, please be aware that this
module was not designed to give legal advice.

1
United States Patent and Trademark Office web site. http://www.uspto.gov/main/glossary/index.html#i 1
 TYPES OF INTELLECTUAL PROPERTY
There are four primary types of intellectual property protection in the United States:
1) Patent
2) Copyright
3) Trademark
4) Trade Secret

1) PATENT

Patent Law is derived primarily from statutory law, specifically the Patent Act of 1952 and its subsequent
revisions. A patent is a property right granted by the United States government to an inventor “ ‘to ex-
clude others from making, using, offering for sale, or selling the invention throughout the United States
or importing the invention into the United States’ for a limited time in exchange for public disclosure of
the invention when the patent is granted.”2 The key point is that a patent only excludes others from pro-
ducing, using, or selling your invention. It neither gives the inventor a right to produce his/her invention
nor does it convey that there is a market for the invention.

TYPES OF PATENTS

There are three types of patents: utility patents, design patents, and plant patents.

Utility Patents
Utility Patents filed after June 8, 1995 are valid for a term of 20 years from the first U.S. filing date for
the patent. Utility patents are issued for inventions that are useful, novel, and nonobvious (please refer
to the definitions at the end of this section for further explanation of these terms). Utility patents protect
how the invention works. In some cases, utility patents can be used to protect software products.

The Patent Act of 1952 states that “Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.” 35 U.S.C. §101. While this section of
the patent statute seems very straightforward, determining what is patentable does not simply mean that
any invention that fits into one of the categories listed in the statute is eligible for a patent. An example
used by the book Patent Law and Policy: Cases and Materials describes the discovery of a pine needle with
medicinal properties as a discovery that is not patentable, even though it appears to be within the meaning
of the statute. While such a pine needle is a “new and useful…composition of matter”, it may be denied
a patent in light of many cases interpreting the broad language included in the patent statute.3 Therefore,
the Patent Act must be read in conjunction with appropriate case law to determine what is patentable.

2
http://www.uspto.gov/main/glossary/index.html (Definition of “patent”)
3
Merges, Robert Patrick, et al. Patent Law and Policy: Cases and Materials. Newark: LexisNexis, 2002 (p. 66) 2
Definitions
Utility – The utility requirement is easily met in most cases since it only mandates that an invention be
minimally useful. There are a few cases in which a new invention with no real use is created (for example,
a new chemical compound that does not serve any purpose). In these few cases, the utility requirement
would not be met.

Novelty (35 U.S.C. 102[a]) – “A person shall be entitled to a patent unless the invention was known or used
by others in this country, or patented or described in a printed publication in this or a foreign country,
before the invention thereof by the applicant for patent.” In short, the invention must truly be new and
unique. If others have invented the device or described it in a previous publication (regardless of whether
you knew of the previous invention or publication), then the invention is not novel and not entitled to a
patent. It may be beneficial to contact a patent attorney to discuss whether your concept is truly novel
before investing a significant amount of money in an invention that cannot be patented. A patent attorney
will also be able to discuss aspects of the novelty requirement that may be specific to your concept.

Nonobviousness (35 U.S.C. 103[a]) – “A patent may not be obtained…if the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would have been obvious at the
time to a person having ordinary skill in the art to which said subject matter pertains.” Therefore, in lay-
men’s terms, “nonobviousness asks whether a development is a significant enough technical advance to
merit the award of a patent.”4 Nonobviousness may very well be the most important of the patent require-
ments, and it may also be the most difficult to satisfy.

Design Patents
Design patents are granted to inventors that create a novel and nonobvious ornamental design for an
article of manufacture. The key difference between a utility patent and a design patent is that a design
patent only protects how the invention looks, not how the invention works. The term for a design patent
is 14 years, and it also has a fee schedule that is different from utility patents (please refer to the USPTO
web site for more information on the fee schedule and application process for design patents –
http://www.uspto.gov/web/offices/pac/doc/general/design.htm).5

Plant Patents
Plant patents are available to protect the development of new varieties of both sexually and asexually
produced plants. The Plant Patent Act (PPA) protects asexually produced plants, while the Plant Varieties
Protection Act (PVPA) protects sexually produced plants.

The PPA grants the patentee the “right to exclude others from asexually reproducing the plant, and from
using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United
States.” 35 U.S.C. Section 163. This particular statement has been interpreted to mean that the right to
exclude only prevents others from asexually reproducing plants from the patentee’s plants. Therefore, if
someone independently develops the same plant, they would not be liable for infringement. The PPA also
does not protect any previously unknown variety of plant that is found in nature. In many other important
respects, the PPA follows along with the Patent Act, particularly with respect to the patent term and the
application process. For more information on the PPA, please refer directly to the statute (35 U.S.C. §161).

4
Merges, Robert Patrick, et al. Patent Law and Policy: Cases and Materials. Newark: LexisNexis, 2002 (pg. 644)
5
http://www.uspto.gov/web/offices/pac/doc/general/design.htm 3
Unlike the PPA, the PVPA differs from the Patent Act in several ways, most notably that the PVPA is
administered by the Department of Agriculture, and there are exemptions for experimentation and for
certain uses by farmers. The plant patent term also lasts for twenty years from the date of the issuance of
the patent, rather than twenty years from the date of application. For more information on the PVPA,
please refer directly to the statute (7 U.S.C. §2321).

4
PRIORITY OF INVENTION

On March 16, 2013, the United States patent system completely changed from a “first-to-invent” system
to a “first-inventor-to-file” system. This means that patent examiners at the United States Patent and
Trademark Office give priority to the first inventor to file an application for patent for an invention in-
stead of the first person to invent the invention.

Leahy – Smith America Invents Act (AIA)

The America Invents Act was signed into law September 16, 2011 and was fully implemented March 16,
2013. An inventor can no longer claim and prove an invention is yours based on your signed and dated
log books. Now, first disclosure, prior art, and the date you filed for a patent is the most important. Pat-
entability can be barred by actions and prior art due to public use, sales, publications, and other disclo-
sures available to the public in any country as of the filing date. Exceptions to this include prior art by the
inventor within one year of filing (inventor’s “publication-conditioned grace period”. Additional changes
to prior art under this act include the language “otherwise available to the public” to indicate that public
disclosure is prior art but that secret sales or activities do not qualify as prior art. Also, there is no longer a
requirement of “by others” for prior art meaning that disclosure does not need to be “by others” to con-
stitute prior art. Remember, however, that inventors have a one year grace period (described above).

Consider the following example: John and Bob have both invented the exact same device. John conceived
the device on January 1, 2000, while Bob conceived the device on July 1, 2000. Both John and Bob com-
plete prototypes of the invention, and they both draft and file patent applications for their inventions
immediately after their prototypes are completed. However, Bob files his patent application three months
before John does. Who is entitled to the patent?

In the previous example, the determination as to which inventor will receive the patent is contingent upon
Bob’s successful patent application. There would be no consideration that John actually conceived the
device first. Under a “first-inventor-to-file” system, priority is given to the first inventor to file an applica-
tion for the patent.

For technologies that may be sold in other countries, inventors should be aware that almost every other
country in the world also has a “first-inventor-to-file” patent system.

5
PATENT APPLICATION PROCESS

Types of Patent Applications

There are three main types of applications for patent that an inventor can submit: non-provisional appli-
cation for patent, provisional application for patent, and a Patent Cooperation Treaty application.

Non-pprovisional Application for Patent

A non-provisional application for patent requires a specification (which includes a claim or claims), draw-
ings, as well as the appropriate forms and fees.6 The specification is a written description of the invention
that includes the process for making and using the invention. The claims included in the specification
are what “define the precise scope of the intellectual property rights that are warranted by the disclo-
sure made earlier in the specification.”7 Therefore, claims must be drafted carefully to be as broad as the
USPTO will allow because the claims define the rights you have with respect to a particular invention.
Broader claims will allow the inventor to have broader legal rights. However, if the claim is too broad, the
USPTO would likely reject the claim if it includes “anything within the mass of publicly available informa-
tion…; or anything beyond the actual discoveries of the inventor.”8 Therefore, if you wish to file a non-
provisional application for patent, it is recommended that you contact an intellectual property attorney to
assist you in drafting your patent application to ensure that you have the broadest possible legal rights if
your patent is granted. If the patent is granted, the non-provisional application for patent will result in a
utility patent with a twenty-year term from the filing date of the non-provisional application.

Provisional Application for Patent

Effective June 8, 1995, it became possible to file a provisional application for patent with the U.S. Patent
and Trademark Office. The provisional application for patent is intended to be a relatively low-cost way
of postponing the cost and effort of drafting and filing a non-provisional patent application. The provi-
sional application need not contain claims, and the filing fee is modest. Once the provisional application
for patent is filed, the applicant may then wait almost a full year before filing a non-provisional patent ap-
plication (the provisional application has a duration of one year from the date of filing). The twenty-year
patent term that runs from the first U.S. filing date does not start with the provisional application, but
instead begins only with the date of the subsequent non-provisional patent application. As a result, one
may postpone the start of the twenty-year patent term by up to one year through the use of a provisional
patent application. Filing a provisional patent application delays any review of the information contained
in it for merit or prior art for one year.

6
http://www.uspto.gov/web/offices/pac/utility/utility.htm
7
Merges, Robert Patrick, et al. Patent Law and Policy: Cases and Materials. Newark: LexisNexis, 2002 (pg. 26)
8
Merges, Robert Patrick, et al. Patent Law and Policy: Cases and Materials. Newark: LexisNexis, 2002 (pg. 26) 6
Patent Cooperation Treaty (PCT) Application
The PCT Application is used when the inventor(s) is considering pursuing patents outside of the United
States. The PCT Application is a “placeholder” that reserves a priority filing date in all of the countries
that are a party to the PCT. This is important because almost all other countries have a “first-to-file”
patent system, where the filing date is very important. The PCT application needs to be filed within one
year of the first patent application date in the United States. This includes the provisional application as
well. For example, if you file a provisional application for patent, the PCT application would need to be
filed within one year – the same amount of time you would have before needing to file the full application
for patent. Once the PCT application is filed, the applicant has 30 months from the priority filing date
to file patent applications in whichever PCT countries they choose. Therefore, if you wait a full year (12
months) to file the PCT application after your first United States patent application, then you only have
18 months from the date of the PCT application to file patent applications in PCT countries.9

While filing for patent applications in other countries may provide you with more protection worldwide,
it is important to consider which countries your invention is likely to be sold in and the potential market
for the invention in those countries. If the profits from sales do not provide an adequate return on your
investment (patent prosecution fees, filing fees, annual patent maintenance fees, cost to introduce the
invention into that market [including production costs, design modifications to meet product safety laws,
etc.]), then you may not wish to patent your invention in that country.

Additional Information
For both the Provisional Application for Patent and the Non-provisional applications for Patent, it is
important that inventors pay attention to the One-Year Time Bar for inventions disclosed prior to filing a
patent application:

One-Year Time Bar (35 U.S.C. §102[b]) – A person is not entitled to a patent if “the invention was pat-
ented or described in a printed publication in this or a foreign country or in public use or on sale in this
country, more than one year prior to the date of the application for patent in the United States.”10 As a
result, you are allowed to begin selling your invention, display it at a convention, or discuss it in a publica-
tion and still be able to patent it provided that you file a Non-Provisional Application for Patent within
one year of the first date of sale, publication, or dissemination. If that one-year period ends and you have
not filed a Non-Provisional Application for Patent, you are no longer entitled to a patent for the inven-
tion that was disclosed to the public. For example, if a person discloses his invention to the public through
sale or other means on January 1, 2006 and files a Provisional Application for Patent on July 1, 2006, the
inventor must file a Non-Provisional Application for Patent before January 1, 2007. It does not matter
that the one-year term of the Provisional Application for Patent has not expired. When it comes to the
one-year time bar, the only date that matters is the date of first public disclosure.

Patent Pending – The term “patent pending” can be used by a manufacturer of a product to indicate that
a patent application has been filed with the United States Patent and Trademark Office for that particu-
lar product. It cannot be used by a manufacturer that has not applied for a patent yet, even though they
may intend to do so in the future. Manufacturers that use the term “patent pending” fraudulently will be
subject to a fine.11

9
http://www.patentdoc.com/Learning/PCT_Patent_Application.asp
10
35 U.S.C. §102(b)
11
http://www.uspto.gov/web/offices/pac/doc/general/faq.htm#1 7
2) COPYRIGHT

Copyrights apply to many different works, including literary works, musical works, pictures, graphics, dra-
matic works, and sound recordings. The protection offered by a copyright is limited in that it only protects
the copyright owner from others who may copy his or her work. It does not, however, prevent others from
using the ideas contained in that work. Copyright only protects the expression of an idea, not the idea
itself. This idea-expression dichotomy is explained later in this section.

Copyright protection is also sought for many types of computer software. The U.S. Copyright Office
defines a computer program as a “set of statements or instructions to be used directly or indirectly in a
computer in order to bring about a certain result.”12 Copyright protection is afforded to all of the expres-
sions that combine to make up the computer program. Copyright protection cannot be used to protect
ideas, program logic, algorithms, systems, methods, concepts, and layouts. Computer software is typically
classified as a “literary work” under the Copyright Act.

Copyrightable Subject Matter

“Copyright protection subsists…in original works of authorship fixed in any tangible medium of expres-
sion…from which they can be perceived, reproduced, or otherwise communicated, either directly or with
the aid of a machine or device.” (17 U.S.C. Section 102 [a]). “Works of authorship” as described in the
Copyright Act (17 U.S.C. Section 102 [a][1]-[8]) are:
1) Literary Works
2) Musical Works, including any accompanying words
3) Dramatic Works, including any accompanying words
4) Pantomimes and choreographic works
5) Pictorial, graphic, and sculptural works
6) Motion pictures and other audiovisual works
7) Sound recordings; and
8) Architectural works

As described, copyright protection is automatically afforded to the author of the materials listed above
upon creation, so long as it is “fixed” as described in the statute. This includes images created by a com-
puter game or software and projected onto a screen as well as anything written and/or drawn on paper or
computer and many other types of communications. For further explanation of what constitutes fixation,
please refer to the Copyright Act (17 U.S.C §101).

12
http://www.copyright.gov/circs/circ61.pdf 8
Copyright protects the expression of an idea, not the idea itself
“In no case does copyright protection for an original work of authorship extend to any idea, procedure,
process, system, method of operation, concept, principle, or discovery, regardless of the form in which
it is described, explained, illustrated, or embodied in such work.” (17 U.S.C. §102 [b]) Therefore, copy-
right only protects the actual expression of ideas or processes in words, pictures, or other medium and
not the actual ideas or processes. A very well-known case in copyright law that discusses this idea/expres-
sion dichotomy and what a copyright actually protects is Baker v. Selden, 101 U.S. 99 (1880). In this case,
Charles Selden had written and copyrighted an instructional book about a new system of accounting that
he had devised. The book included blank forms that illustrated the system and allowed the reader to actu-
ally practice the method of accounting. Mr. Baker had subsequently authored a book that described basi-
cally the same system of accounting with similar forms, except the system had a different arrangement of
columns and used different headings. Selden had filed suit against Baker, claiming that he had infringed
the copyrights for his original book and subsequent books he had written that added to and improved
his original system. The Court ruled that Selden could not secure the exclusive right to use the account-
ing system described in his book through copyright. Since only the explanation of the system is protected
by copyright, Baker could not infringe Selden’s copyright by describing the same system in his book, so
long as the expression of the idea was different. While the idea/expression dichotomy has been clarified
further by statute and other cases over the years, Baker v. Selden is considered the origin of the idea/ex-
pression dichotomy in American copyright law and provides a good example of what can and cannot be
protected by copyright.

Registration
Copyright registration is not necessary to obtain copyright protection. However, a registered copyright
can be very important in a copyright infringement suit. For example, in a copyright infringement suit, the
plaintiff must prove that: (1) she is the owner of a valid copyright, and (2) that one of her rights associ-
ated with the copyright had been violated (copyright owner’s rights will be discussed later). A registered
copyright is prima facie evidence of a copyright, meaning that the Court assumes that you have a valid
copyright unless proven otherwise by the defendant (provided that registration is within five years of
publication). Therefore, the first element of an infringement suit is already satisfied. For the minimal fee
required to secure a registered copyright with the United States Copyright Office, it would be worthwhile
to submit your work for registration in many cases. For more information regarding copyright registra-
tion, please visit the United States Copyright Office’s web site (http://www.copyright.gov/). For specific
advice regarding specific works of authorship, you should contact your intellectual property attorney
before pursuing a course of action.

9
Exclusive Rights
Another thing to consider is that a copyright is a grant of a bundle of rights by the United States govern-
ment to “a work of authorship” as previously described. Copyright owners have the exclusive rights to do
and to authorize any of the following (17 U.S.C. §106):
1) To reproduce the copyrighted work in copies or phonorecords;
2) To prepare derivative works based upon the copyrighted work;
3) To distribute copies or phonorecords of the copyrighted work to the public by sale or other
transfer of ownership, or by rental, lease, or lending;
4) To perform the copyrighted work publicly;
5) To display the copyrighted work publicly;
6) In the case of sound recordings, to perform the copyrighted work publicly by means of digital
audio transmission.

What this means is that the copyright owner has the sole right to make copies of his/her work and to
display, perform, present, or sell the work publicly. It also allows the owner to create works that are based
upon preexisting works, also known as derivative works.

While copyright owners are granted the aforementioned exclusive rights, the Copyright Act places some
limitations on those exclusive rights to ensure that the ideas included in those copyrighted works are dis-
seminated adequately for the public good (for example, a college student is allowed to photocopy a page
of a book to reference when writing a term paper). The Copyright Act discusses these limitations in de-
tail, but they are outside the scope of this module. Please refer to the Copyright Act, specifically sections
107-112, 117, 119, and 121-122 for more information on the limitations to the exclusive rights granted to
copyright owners.

10
3) TRADEMARK

“A trademark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs,
which identify and distinguish the source of the goods or services of one party from those of others.”13
Trademarks, unlike patents, do not expire as long as they are being used in commerce. Many companies
use trademarks to protect company names and logos as well as the names and logos that they develop for
their products. For more detail, please consult the U.S. Patent and Trademark Office frequently asked
questions at: http://www.uspto.gov/web/offices/tac/tmfaq.htm.

What is the difference between registered and unregistered trademarks?

The symbol™ indicates an unregistered trademark, and you can establish rights in that mark based on
legitimate use of the mark under trademark law.14 Even though registration is not required, it is usually
recommended. Registration of a trademark requires application to the United States Patent and Trade-
mark Office and approval of the mark by an examiner before use of the registered trademark symbol, ®,
is permitted. Advantages to registering your trademark include:
• Constructive notice to the public of the registrant’s claim of ownership of the mark
• A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive
right to use the mark nationwide on or in connection with the goods and/or services listed in the
registration
• The ability to bring an action concerning the mark in federal court
• The use of the U.S registration as a basis to obtain registration in foreign countries, and
• The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of
infringing foreign goods.15

You can file for a registered trademark online using the Trademark Electronic Application System
(TEAS), which is available at http://www.uspto.gov/teas/index.html, or via mail. Please consult an intellec-
tual property attorney for specific advice regarding your potential trademarks. However, an attorney is not
required to file a trademark application. Details regarding the requirements for a trademark application
can be found on the USPTO’s web site: http://www.uspto.gov/web/offices/tac/doc/basic/appcontent.htm.

13
http://www.uspto.gov/web/offices/tac/doc/basic/trade_defin.htm
14
http://www.uspto.gov/web/offices/tac/doc/basic/register.htm
15
http://www.uspto.gov/web/offices/tac/doc/basic/register.htm 11
Search existing trademarks before filing
To avoid trademark infringement, you should search existing trademarks prior to selecting a name or logo
for your product. The United States Patent and Trademark Office maintains a web site where users can
search U.S. trademark applications and registrations free of charge:
http://tess2.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk. Online databases available
through Thomson’s Dialog (http://www.dialog.com/) include trademark applications and registrations in
the United States, Canada, and many countries in Europe. Additional databases include:
• Trademark Search Atlas (http://www.trademark-search.com)
• Trademarks Online (http://www.trademarksonline.com)
• TMWeb (http://www.tmweb.com/)

Unlike patent applications, which in many cases must be filed in advance of a particular date, there is no
specific date by which a trademark registration application must be filed. Instead, in the United States, an
ordinary “use” trademark application can only be filed after the goods or services have been in interstate
commerce. However, as previously discussed, you do not need to register your trademark in the United
States to have trademark rights.

Intent-to-Use Trademark
A few years ago, the U.S. Patent and Trademark Office established a new kind of application called an
Intent-to-Use (ITU) trademark application. To be able to file this application, the applicant need not
have used the mark in interstate commerce, but the applicant must have a good-faith intention to use
the mark in interstate commerce. The Intent-to-Use application does not permit the applicant to reserve
trademarks for indefinite periods of time. The duration of the initial Intent-to-Use application is six
months. This period may be extended by six-month intervals for up to three years, provided some effort is
being made to use the mark in commerce. After 3 years, the USPTO will not register the mark if it is not
being used in interstate commerce and a Statement of Use notice has not been filed.

12
4) TRADE SECRET

A trade secret is the information that a company keeps secret to allow the company to compete effec-
tively in the marketplace. Trade secrets can include customer identities and preferences, vendors, product
pricing, marketing strategies, company finances, manufacturing processes, and other competitively valu-
able information. Some well-known examples of trade secrets are the recipes for Coca-Cola and Bush’s
Baked Beans. Trade secrets, however, are not protected by federal law as the other three types of Intel-
lectual Property are, and they do not need to be applied for or approved by any agency. Trade secret laws
have been developed through common law or through the Uniform Trade Secrets Act (UTSA), which
attempted to make trade secret laws the same from state to state. While many states have adopted the
Uniform Trade Secrets Act, some have not. Therefore, the UTSA is only applicable in the states that
have chosen to adopt it.

Under the Uniform Trade Secrets Act (1985), information must meet three criteria to qualify as a trade
secret. First, the information must not be “generally known or readily ascertainable” through proper
means. Second, the information must have “independent economic value due to its secrecy.” And third,
the trade secret holder must use “reasonable measures under the circumstances to protect” the secrecy of
the information.16 Therefore, as long as you keep this type of information secret, trade secrets can poten-
tially be protected in perpetuity. You may wish to contact an intellectual property attorney to determine
whether your concept is subject matter protected by your state’s trade secret laws.

16
UTSA §1(3). 13
 EARLY STEPS TO PROTECT Y OUR INTELLECTUAL PROPERTY
There are many ways to ensure that your intellectual property is sufficiently documented and protected
from the start of your development process. Two of the most important activities to protect your intellec-
tual property during development are the use of non-disclosure agreements and logbooks.

Non-Disclosure/Confidentiality Agreements
To safeguard your intellectual property, protect your concept when discussing it with others. In order
to do this, you must draft a non–disclosure or confidentiality agreement (hereafter referred to as confi-
dentiality agreement) that will have to be signed by people before discussing your concept with them. A
confidentiality agreement is a legal document that states that the person signing it will not disclose any
information regarding your invention or concept to anyone. The document also prevents the signee from
using the invention or concept for any purpose other than what is stated in the agreement. This means
that the person signing the confidentiality agreement cannot divulge information regarding your inven-
tion or concept to anyone else, nor can they go out and use or produce the invention or concept them-
selves. Therefore, it is important to ensure that the people you select to verify your logbook entries first
sign your confidentiality agreement.

The importance of a confidentiality agreement should not be underestimated. If you discuss your concept
with others outside of a confidentiality agreement, questions about ownership of that concept may come
into play. Without a signed confidentiality agreement in place, people with whom you discuss your inven-
tion or concept are able to discuss it with others or use it for their own purposes. They can also claim co-
invention (joint ownership) if they offer suggestions on improving or modifying your invention unless the
agreement specifies that ownership of any suggestions for improvements is granted back to you.

Logbooks/Laboratory Notebooks
Use of a logbook is an effective technique when creating an invention that will likely be patented. Log-
books are most important for patents since there is little protection for patentable subject matter during
the development process. While the United States no longer awards patents to the first inventor and now
is under a “file-inventor-to-file” system, logs books can still be very useful. At some point in your patent
process, you may need to prove when you invented all or parts of your invention. Also, as a “first-inventor-
to-file” system, you may need to prove that you are the inventor. In addition, logbooks are also good
practice because they help document and verify development activities for your own reference as you
move through the development and commercialization process.

To create a logbook, obtain a notebook that is bound with pre-numbered pages. Your first dated, signed
entry should be a description of your idea, and you should be the only person writing in your logbook. All
your notes, drawings, and any information regarding your invention from the date of conception onward
should be placed in this notebook. The logbook’s initial entries should be read, signed, and dated by at
least one, preferably two individuals whom you trust and who are not relatives or co-inventors. It is also
important to ensure that this notebook remains confidential. Remember that anyone who reviews your
entries should first sign a non-disclosure agreement to protect your concepts.

14
The Book Factory, a company that sells laboratory notebooks, provides general information on how to
create a logbook.

Your logbook should include:

• Date of project conception
• Details regarding your idea and the information that led to its formation
• An explanation of how your idea will be reduced to practice (prototype)
• Information on the structure and operation of your invention
• Results of any testing and evaluation completed
• Chronology of the process from idea to product
• Other working notes17

17
Book Factory LLC, 2005. http://www.bookfactory.com/special_info/lab_notebook_guidelines.html 15
Guidelines on how to ensure that your logbook is treated as a legal document:
• Ensure that all entries are kept sequentially starting at the top of the first page and continuing
to the bottom of the last page. Leave no open space.
• Legibly sign and date each page before continuing onto the next page
• Never erase or tear out pages in your logbook, simply cross-out erroneous entries with a single line.
• Permanently attach all supportive material to your logbook in its chronological order.
• Include references and important notes for all secondary sources in the text of your logbook as well.18

For specific questions regarding your invention or development and its associated logbook, please contact
your intellectual property attorney for legal advice. An intellectual property attorney will be able to help
customize your logbook to satisfy any legal requirements specific to your development.

If you are a university-based researcher/developer, check with your University Technology Transfer office
for approved agreements for you to use. If you are an independent inventor, you should contact an intellec-
tual property attorney to have a non-disclosure agreement drafted specifically for your invention or concept.

Important Note about Disclosure and Patents: Disclosing enabling information concerning your in-
vention at a conference presentation or in written materials activates the one-year time bar discussed in
the “Patent” section. Enabling information is the pertinent information on how to build or replicate your
device or what functions your device performs. If you do not file a patent application within one year of
your disclosure, your work is no longer patentable. If you choose to discuss your idea at a conference or
in written materials, do not provide any enabling information.

18
Book Factory LLC, 2005. http://www.bookfactory.com/special_info/lab_notebook_guidelines.html 16
 OTHER INTELLECTUAL PROPER TY CONSIDERATIONS
Prior Art Searching
Since novelty is very important for patentable inventions, prior art searching can be very important. If
someone else has previously invented your device or has written about it in a publication, you may not
be able to patent that device. As a result, it is critical to complete a prior art search to ensure that your
concept isn’t already in the marketplace prior to moving forward with your project. It can save you a sig-
nificant amount of time and money that would have been spent developing your concept even though you
would not be able to patent it. Guidelines for conducting a patent search can be found at Basic Patents.
com (http://www.basicpatents.com/homepage.htm) and include:
• Use generic terms that describe the function of your invention, yet are sufficiently descriptive to
avoid thousands of unrelated hits. For example, consider the Alphasmart – an easy-to-use educational
keyboard. The inventors of the Alphasmart would not use only the key word, “keyboard,” to search
for prior art, but may use “portable keyboard” or “alternative keyboard” instead to search for similar
products.
• Limit the field by using additional descriptive terms (i.e. “portable keyboard with LCD display” or
“portable alternative keyboard K-12”)
• Where possible, add defining characteristics of your product that make it unique (i.e. Portable key-
board with file storage capacity and wireless connectivity).19

Conducting a search
You can begin this effort by searching the World Wide Web, catalogs, and stores that offer similar prod-
ucts or who you envision making similar products. Visit retailers and professionals to learn how individu-
als currently address the function or need that your device addresses through products already in the mar-
ket. Contact prospective users of your device to seek information about how they currently address that
function. If you are contacting parties outside the scope of your project, your conversations with individu-
als or companies should focus on the function or need your product addresses and not design information
regarding your invention. For example, if you were inventing the first calculator, your information search
would have focused on how prospective users are currently performing the mathematical calculations you
envision your device performing. The responses you would have received were adding machines, slide
rules, and pencil and paper.

Searches can be extremely important because they may help you avoid investing large amounts of money
to invent something that already exists. An existing invention review program for the field of assistive
technology has found that over 60% of the device submissions received from inventors were re-inventions
of existing products.20 It is best for an inventor to spend time and effort prior to device development to
ensure that his/her product does not exist in the marketplace, rather than expending resources on proto-
type development and attempted patenting of something that already exists.

19
http://www.basicpatents.com/homepage.htm (“Searching” Page)
20
Leahy, James A. “Critical Factors for Evaluating and Commercializing Inventions.” Proceedings of the RESNA ’99 Annual Conference.
Arlington: RESNA Press, p. 133-135. 17
However, it may be best to have your patent attorney perform the prior art search. A patent attorney will
have specialized knowledge on how to best search previous patents and prior art to give you very specific
advice regarding your invention and any prior art that exists. A patent attorney will also be able to pro-
vide legal advice regarding your invention and how it may be patented to avoid the claims of any existing
patents. This can be especially helpful if your detailed market research indicated a need for the invention
in the marketplace.

An example of this scenario is the Lids Off™ Automatic Jar Opener that was transferred to Black &
Decker through the RERC on Technology Transfer (T2RERC). At the time the Lids Off was in devel-
opment, several automatic jar openers had already been patented. However, in-depth market research
conducted by the T2RERC had indicated that the automatic jar openers currently in the marketplace
were not meeting consumers’ needs. Had the prior art search stopped at the point where several patents
for automatic jar openers were found, the opportunity for the Lids Off would have been lost. However,
the claims (the legally protected aspects of the invention) in each patent did not cover the design of the
Lids Off. As a result, the Lids Off could still be patented and released into the marketplace by Black &
Decker. Only a patent attorney would have the skills necessary to interpret claims of existing patents and
provide an opinion as to whether your invention would be patentable. If you know there is a need for
your device in the market after conducting in-depth market research, it may be in your best interest to
contact your patent attorney to have him or her provide you with a patentability opinion to see if you can
protect your device.

Intellectual Property Ownership Issues

There are very different and distinct paths an inventor or researcher/developer will take depending on
whether she is acting independently or through her place of employment. Intellectual property ownership
issues are very different for university employees that are working under a federal grant and independent
inventors or technology developers working with their own personal or company funds.

University Employees
The University and Small Business Patent Procedures Act of 1980, also known as the Bayh-Dole Act,
set the guidelines for ownership and licensing or transferring technologies developed at universities with
federal funds. Some principal tenets of the law include:
• Stipulations that a University must disclose “all inventions conceived or reduced to practice
(prototypes) during the performance of a federal grant, contract, or cooperative agreement” to
their funding agencies.
• Rights of the U.S. Government to non-exclusive, non-transferable, irrevocable rights to use the
patented technology developed with government funds. [Note: The university or company retains
the right to enter into license agreements with companies outside of the government.]
• Obligation of a University to contract written agreements with its faculty and staff requiring
disclosure of inventions developed within the confines of the University. It also specifies that the
Universities must share a portion of the revenue received from licensing the invention with the
inventor/developer. All remaining revenue must be used to support scientific research or education
(Council on Government Relations, 1999).

18
As indicated by the Bayh-Dole Act, if you are a university researcher and you developed your invention
as part of your employment at a university using university resources, you do not have exclusive owner-
ship rights to your development. The law states that legal rights to any invention generated through your
occupation at the university belong to your university and to any funding agency that may be helping to
pay for the development. This information should have been included in the terms you agreed to upon
being hired at the University. However, you will remain eligible for some royalties from your invention.

If the invention was developed through your work under a federal grant, there are three things you
should understand:
1. The grant is awarded to the university, not to the Principal Investigator, the Project Director,
or anyone who works on the grant. The university is the entity responsible for ensuring that the
grant activity complies with all federal guidelines.
2. Since the money comes from the federal government, the government has the right to future
use of any invention resulting from their funding, should they choose to pursue it.
3. If the government decides not to pursue the development and returns ownership of the
development to the university, the university has the right to either take ownership of any
invention or to decline ownership since it is the actual grant recipient. Therefore, the person
(or people) who brought the development to fruition is the third in line to claim ownership for
that development. However, if the university claims ownership, they may share the royalties
from the development with the actual inventors or developers.

Role of the University Technology Transfer Office

If you are working at a University and receive federal grant money from a government agency for your
work, the product or invention you develop will have to be disclosed to your University’s Technology
Transfer Office (TTO). Universities are required to have invention disclosure forms, confidentiality
forms, and an ownership policy in place regarding concepts developed by university employees. For
example, Case Western University provides a form to their university based researchers that they must fill
out when disclosing their development efforts to the Case Western Technology Transfer Office
(http://ora.ra.cwru.edu/techtransfer/forms/InventionDisclosure.doc). No specific guidelines are provided
for when this information should be disclosed. However, it is better to disclose your concept to your TTO
earlier so that it can provide you with advice to guide you through the development process so that your
intellectual property is fully protected.

19
Your university also has a right to claim the majority of ownership and some of the subsequent royalties
generated from licensing any invention or product you develop. While this may not seem reasonable
given that the initial effort and idea were yours, it is important to remember that you have already been
compensated for your work through your salary. In addition, the University will bear all the costs and risk
associated with protecting and commercializing the invention. Therefore, they should (and do) receive
the majority of the royalties.

University TTO’s offer many benefits for employees developing technologies under a federal grant.
TTO’s may offer some of the following benefits:
• Familiarity with the process necessary to protect your concept
• Confidentiality and non-disclosure agreement templates already drafted for use
• Experience in completing prior art searches to ascertain whether the product you develop is
new and unique
• Assignment of value to your invention (projecting the target market and potential sales) to
determine if patent protection is fiscally prudent
• When it is proven to be a prudent course of action, your University may bear the costs for a
patent and will do all the paperwork necessary to apply for a patent
• Will address ownership issues with your funding sponsor
• Development of a commercialization package to present to potential licensing companies
• Handle the negotiations and draft the license agreement with an interested company
• Once your invention or product is licensed, the TTO will be your “watch dog” for product sales
and royalty payments

While it is advisable to notify the TTO as early in the development process as possible, keep in mind that
the provision of legal and other commercialization services by your university’s TTO is based on an evalu-
ation of the market potential of your prototype product. If they determine that the sales of the invention
will be low (which correlates to low royalties for the university for the license of the invention), they can
and will refuse to pursue activities toward commercialization of your technology. This decision is based
on the university’s projected return on investment for your invention – if the university will make less
money than it spends to commercialize your invention (or if it estimates it will make insufficient profits
from your invention), then it is not worthwhile for the university to pursue it. However, if the TTO finds
that your technology offers an acceptable return, the benefits of working with them are well worth shar-
ing the royalties for your future product. By virtue of their experience, the university’s TTO will help to
ensure that your invention is protected by securing intellectual property rights and enforcing your rights if
someone may infringe those rights. Your intellectual property protection (e.g., patent or copyright) is only
as good as your ability to protect it. You may need “deep pockets” to defend your claim. If a company
infringes your intellectual property, the university has its own attorneys to enforce it, whereas if you were
the sole holder of rights, you would have to find and hire legal representation yourself. In the competitive
world, a company may not hesitate to infringe patents held by an individual, but it may think twice about
the cost of legal action that could be taken by a university.

20
However, the university’s partial ownership can act to thwart the commercialization process of your idea.
Universities may lack knowledge regarding the identification of business partners and appropriate com-
mercialization processes for your specific technology. Therefore, it is important that university-based
developers work closely with their TTO to ensure that companies approached are appropriate for the
specific technology application that they are attempting to commercialize.

Assistive Technology Development

In cases related to assistive technology, the expected returns on your invention may be very low since
the potential market size for most assistive technologies is very small. In these cases, your university may
decide that it is not worth investing time and resources to bring your technology to market. This often
causes a great deal of frustration for the researcher/developer as the process often stalls here.

If your funding agency and your university’s TTO are not willing to pursue a license agreement on your
behalf, you can ask your TTO and your funding agency to waive all ownership rights to the invention.
While this waiver would give you the intellectual property rights in the development and the right to pur-
sue commercialization opportunities independently, you may find that the potential return on investment
is insufficient to warrant the investment of your personal resources. You also may not have the institutional
expertise and resources to protect and commercialize the invention. At this point, you have to consider all
of the findings to determine if you think it is worth your time and effort to continue independently.

In some cases, the university will decline the offer to waive rights back to you and may not take any fur-
ther action to commercialize your technology application. Unfortunately, in these situations there is very
little recourse that the developer can take other than seeking market information and possible partner-
ships on behalf of the TTO. These additional efforts may entice the University TTO to move forward
with a technology. One of the major pitfalls of working with your TTO for technology applications with
a small market is the ability of the University to determine whether the development merits further work
toward commercialization. While this is very frustrating for the researcher/developer, it is a fact of life
when pursuing commercialization of devices with small market sizes.

Independent Inventor
If you are an independent inventor using your own resources, you don’t have to worry about sharing own-
ership of your invention with another agency. Conversely, you also don’t have a resource rich partner to
help bring your invention to the marketplace. As an independent inventor, you will chart your own course
and travel down your own path. Therefore, an important consideration before building a prototype of
your technology is to do preliminary research to ensure that a similar product in the marketplace does not
already exist.

If a similar product exists, you should conduct market research to determine whether your device will
be directly competing with the pre-existing product for sales. If so, it may be difficult to find a company
to license your device, even if it is patentable. If a similar product does not exist, it still would be wise to
conduct market research. If people will not be willing to purchase your product, then it would be point-
less to spend thousands of dollars to patent and commercialize a device that few people will buy. Keep
in mind that you should use confidentiality agreements throughout the market research process any time
you disclose your concept to others. Ultimately, if you determine that your invention will provide you with
an acceptable return on your research and development investment (including any costs related to obtain-
ing a patent on the development), then you should contact your patent attorney to discuss the patentabil-
ity of your device as well as the most appropriate ways to protect your device as you progress through the
development process.
21