This document provides an overview and summary of an "Inventing 101" presentation about developing and protecting inventions. It discusses the different types of intellectual property including patents, copyrights, trademarks, and trade secrets. For patents, it covers the basic requirements, types of patentable subject matter, the examination process, and costs associated with obtaining a patent. It provides guidance on developing an invention through prototyping, testing, and market research. It also discusses the importance of properly disclosing an invention through an invention disclosure form.
6. Patents: Practical Inventions
Patentable Subject Matter Includes…
“Anything under the sun that is made by man”
Exclusions: laws of nature, physical phenomena,
abstract ideas
Statutory classes: processes, machines, manufactures,
compositions of matter
Compositions, devices, techniques, new
combinations, software, new uses of an old thing
7. Basic Requirements
Novel: loosely means that the invention is
new and is non-identical to the previous
work of others. (35 USC § 102)
Non-obvious: means that the invention
must not be an obvious extension of what
has gone before. (35 USC § 103)
- Obviousness is measured by what one
of ordinary skill in the subject area of the
patent would have known at the time of the
invention.
9. Technology Rights
Ownership
By virtue of being the inventor or being the Assignee of the
technology
Control of the IP, subject to any encumbrances
Can be joint or sole ownership
Joint inventors have an undivided interest in the “whole” invention.
Don’t be shy about requiring a written agreement with your co-
inventors
License
The right to use the IP (typically granted by contract)
Exclusive License
Licensor agrees to not provide licenses to any third party.
Non-Exclusive License
Licensor reserves the right to provide licenses to third parties, or
reserves the right to practice the invention itself.
10. Technology Assessment
“Maturity” of technology?
What is the stage of the technology?
What additional research or development is necessary to
refine technology?
What needs to be done to reach market?
Patentability?
Can the technology be protected under IP?
Cost/benefit analysis of pursuing IP protection.
Market opportunities?
Is there commercial merit to the technology?
What is the cost/benefit of pursuing? (cost of goods vs.
return on investment)
Is there a buyer for this technology?
11. Technology Development
Document your idea
Write down all of the details about your invention
What is it?
How does it work?
What’s it used for?
How will it be made?
Have you run any experiments?
Use a journal and have it signed by a confidential witness.
Any bound notebook whose pages are numbered
consecutively and can't be removed or reinserted can be
used for this purpose.
Date your records and keep them in a confidential place
12. Technology Development
Research your idea
Just because you have never seen your idea in a store
doesn’t mean someone else hasn’t already thought of it.
Search for your idea
You can perform a rudimentary patent search for free
at www.uspto.gov as well as at
www.google.com/patents
Don’t forget about general internet searching
(“Google” it)
Research your market: costs, logistics, licensees, or
potential commercial partners
Consider to what extent you can push development on
your own, or if you need to “sell early” to have a larger
company further development.
13. Technology Development
“Prototype” It/File for IP Protection
Can work on these simultaneously.
Balance IP filing strategy/timing with the “stage” of your
invention.
Sketches, computer-generated models, 3-D mock-ups,
working examples/experiments help further your inventive
idea, but will also be used in the IP filing process.
Note: You will almost always discover a flaw in your
original design or think of a new feature you would like to
add. Ideally, you want to work out these kinks before filing
the patent application – once the application is filed, it is
generally too late to include them.
14. Technology Development
Market It
How will you sell it?
To whom will you sell it?
End user/customer
Intermediate party
Can you market it on your own?
Do you need a larger industry partner?
Do you already have contacts in that industry?
15. Getting Started:
The Invention Disclosure
The Invention Disclosure Form
Naming Inventors:
Inventors – who else helped you develop the
invention?
Inventors must play a role in conception of invention
Brief description of invention
Prior public disclosures?
Known “prior art”?
Dates of conception/reduction to practice
(inventor’s journal)
Supplemental Materials
16. The Invention Disclosure
What to disclose?
Your disclosure needs to enable and describe the
invention.
Identification of full scope of invention
Explore metes & bounds; alternative or non-
optimized versions
Any proposed presentations should be included
with disclosure form
Materials and methods for any working examples
– very important
Drawings, flow diagrams, etc.
18. The Invention Disclosure
Major requirements:
Written Description
Enablement
Best Mode
Definiteness
Inverse relationship to the level of
“predictability” of the field of the invention
and amount of information necessary for full
disclosure
19. The Invention Disclosure
Written Description
Description of invention that demonstrates possession
of invention as of filing date
Enablement
Describe how to make and use invention
Working examples, Prophetic examples
Figures
Some experimentation permitted…must not be undue
Best mode of carrying out the invention
Definiteness: clarity and precision in terminology
20. Disclosure considerations
Patent application disclosure must enable one skilled in
the art to practice the invention without undue additional
experimentation
“show your work”
Use drawings where helpful or essential (picture worth a
thousand words)
Best mode must be disclosed
Patent application must adequately describe the invention
(sufficient species to claim a genus)
Important that disclosure/application is as comprehensive
as possible.
21. Disclosure considerations
Once the application is filed there is virtually no
possibility to add to it or update it*
* Added material is considered “new matter” and gets
a new filing date.
Patent application will and should be more
comprehensive than a manuscript (the patent attorney will
help with this)
Patent application should be submitted BEFORE public
presentations, disclosures, meetings, etc.
22. The Drawings
Drawings helpful to understanding the
invention
Process flows, machinery schematics,
blue prints, etc.
23. How/when to disclose?
Begin process somewhere between idea
stage and “prototype” stage.
Consider any impending public disclosures
you plan to make.
WSU has specific protocols and an invention
disclosure form that can be used.
24. Process Overview
Consider this timeline in planning when to file a
provisional, when to submit a manuscript, etc.
Estimated time when
proof of concept may be
close to finished (major
questions answered)
Work backwards
so that provisional
filing isn’t
premature
26. Examination process
Patent examiner will do a search based upon the application
claims to see if there is any “prior art” related to the invention
Claims describe the metes and bounds of protection
“A method of…” “A composition comprising…”
Claimed invention must be: new, non-obvious as compared to
one or more prior art references located by Examiner.
Examiner issues an “Office Action” – patent attorney will have
a back and forth exchange with the Examiner regarding the
prior art and the claims.
Inventor input can be helpful – “person skilled in the art”
Often Examiner is misinterpreting the claims, the prior art, or both
27. America Invents Act
Went into effect March 16, 2013
The AIA significantly encourages early
(and often) filing of patent applications
U.S. patent laws are now based on “first-
inventor-to-file” rather than “first-to-invent”
28. America Invents Act
File patent applications before any public
disclosure, use, presentation, commercial
activity, sale, etc. involving the invention
Limited “grace period” still available
Balance of filing too early vs. waiting too long to
file on invention.
Use Non-Disclosure Agreements
consistently, but do not rely on NDAs to fully
protect invention
29. America Invents Act
Invention Disclosure forms and
streamlined protocol for submitting and
evaluating inventions becomes even more
important under the AIA
30. How long does it take to get a patent?
Technology Dependent
Computer/Software/Electronic Business Method
3 - 5 years (typical)
Electrical
2 - 4 years (typical)
Chemical
1.5 - 3 years (typical)
Mechanical
1.5 - 3 years (typical)
31. What does it cost?
Provisional application ~$1,000-$4,000
Preparation and filing of a non-provisional
application ~ $8,000-$10,000
Examination ~ $5,000-?? – depends on your
examiner!
Issuance ~ $1,000-$2,000 fees
Maintenance fees are due periodically during
life of patent or it will expire.
32. What does it cost?
International protection?
Depends on the country
$2,500-$10,000 just for filing in certain countries
(including translation costs)
Prosecution adds another $5,000-??? per country
International portfolios cost tens of thousands of
dollars to pursue.
33. Is getting a patent worth it?
Some Factors to Consider
1. Commercial Value
Market size and acceptance
Profit margin attributable to exclusivity
Likelihood of copying (Barriers to entry: capital,
physical, legal, technical)
1. Patentability
Novelty and nonobviousness
Breadth of protection available
1. Licensing Possibilities
2. Defensive Use in Litigation and Cross-licensing
34. Protecting an Invention
Consult with a patent attorney
Beware - Invention Promotion Firms:
http://www.uspto.gov/inventors/scam_prevention/index
www.ftc.gov
www.bbb.org
35. Common Patent Misconceptions
A patent gives you the right to use or make the
invention.
Patented products are better than unpatented
products.
If I find a new use for an old product, I can get
a patent on the product.
38. Trademarks
Trademarks
- Assets of a Business – Both as property
and as goodwill
- family of marks
- slogans
- designs/icons
- product configuration
Marked item must be used in commerce
41. Trademarks
You should always use a TM symbol with all
trademarks whenever possible. TM may be
used for any mark used in commerce.
You should always use the registration
symbol (®) for registered trademarks.
Removes defense of innocent infringement
42. Trademarks Must be Distinctive
Inherently Distinctive Marks
Fanciful: no other meaning than its meaning as a
trademark [STARBUCKS, LEGO, VERIZON]
Arbitrary: words with separate meaning, but nothing
to do with the associated product/service [CAMEL for
cigarettes, APPLE for computers]
Suggestive: suggest a characteristic of a good or
service without actually describing that characteristic.
[COPPERTONE for sunblock, EARTHLINK for
internet service, JETBLUE for airline service]
Picking a “good” trademark
43. Cannot be merely Descriptive:
Merely identifies a characteristic of the article or service
it marks [WORLD WATERPARK ASSOCIATION]
A descriptive mark entitled to federal protection only
if it acquires distinctiveness (aka secondary
meaning)
Shown through long-term use, advertising
expenditures, sales revenue, testimonials, etc.
Cannot be Generic:
Never entitled to trademark protection, i.e. “laptop
computer” [ASPIRIN, ELEVATOR, CELLOPHANE, YO-
YO, GOOGLE?]
Famous marks must ward against genericide
Picking a “good” trademark
44. Must Not be Confusingly Similar to Other Marks
Factors to consider:
Visually, audibly, or phonetically similar?
Starbucks Frappuccino coffee
Bar in Missouri received letter for selling a stout
beer dubbed a "Frappicino."
Are the goods/services related or competing?
Trade channels overlap?
Sophistication of consumers
Picking a “good” trademark
45. Trademark not yet used?
What if you’ve picked out a great trademark,
but aren’t yet actually using it?
An intent-to-use application may be filed with
the USPTO to “reserve” the mark without first
making use of the mark
Proof of actual use is required before the
registration will be issued
46. Federal Trademark Protection
Duration – How long does a federally registered TM last?
Potentially forever if:
(a)continuous use exists;
(b)mark does not become a generic description of the
product;
(c) maintenance between 5th
& 6th
year of registration;
(d)renewals are filed every 10 years;
(e)all licensing of the mark is done with quality control;
and
(f) there is no acquiescence to infringement.
48. REQUIREMENTS FOR COPYRIGHT
PROTECTION
Work of original creative authorship
Fixed in a tangible form of expression from
which it can be perceived, reproduced, or
otherwise communicated, directly or with aid
of a device
49. Copyrights
1. literary works - fiction and nonfiction books, manuscripts,
computer programs, manuals
2. musical works (and accompanying words) -- songs, operas,
and musical plays
3. dramatic works -- including music - plays and dramatic
readings
4. pantomimed and choreographed works
5. pictorial, graphics, and sculptural works – photos, maps,
globes, charts, technical drawings, diagrams, and models
6. motion pictures and audiovisual works
7. sound recordings and records – digital recordings, CDs,
MP3s, and tapes
50. EXCLUSIVE RIGHTS IN COPYRIGHTED
WORKS
Right to Reproduce or copy
Right to Distribute
Right to Display
Right to Perform
Right to Make Derivative Works
51. Copyright Protection
Unregistered Copyright
Author owns immediately upon creation
Registered Copyright
Author or owner may register copyright to avail itself
of statutory rights
- Ability to sue for infringement
- Statutory Damages (Requires Timely Registration)
Up to $30,000/infringing work
Up to $150,000 for willful infringement of work
Attorneys’ fees/legal expenses
52. Why Register?
Proof of ownership
If you don’t register within five years of creating
the work, the court doesn’t have to recognize the
registration you do file as self evident proof.
Access to courts
Statutory damages
Must register within 3 months of publication or before
infringement
Otherwise, only an award of actual damages and
profits is available to the copyright owner.
53. WORKS MADE FOR HIRE
Applies only to specific items – not just any
creation made by someone you hired!
Works made by an employee within the
course of employment; OR
Works specially ordered pursuant to a signed
written work for hire agreement AND if the
works are in eligible categories
54. WORKS FOR HIRE CATEGORIES
contribution to a collective work
part of a motion picture or other
audiovisual work
a translation
a supplementary work
a compilation
an instructional text
a test or answer material for a test
an atlas
55. WORK FOR HIRE
Does NOT apply to someone you hired to create a
website for your business or product.
Web developer needs to have a contract that
assigns the rights to your website and domain name
to you.
Inventor is the one with "intellectual domination”
Conception is "the complete performance of the mental part of the inventive act", and "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.”