Patents, Copyrights, & Trademarks

Patent Issues

Intellectual property means slightly different things to different people, but generally it is thought of as material that may be protected under the patent, trademark and/or copyright laws.
In the U.S., a patent gives the holder the right to exclude others from making, using, selling, offering to sell, and importing any patented invention. Thus, a patent does not necessarily provide the holder any affirmative right to practice a technology. Instead, it provides the right to exclude others from practicing it. Patent claims are the legal definition of an inventor’s protectable invention.
Patentable subject matter includes processes, machines, compositions of matter, articles, some computer programs, and methods (including methods of making compositions, methods of making articles, and in some cases methods of performing business). For more information, see www.uspto.gov/web/offices/pac/doc/general/what.htm.
A natural substance that has never before been isolated or known may be patentable in some instances, but only in its isolated form (since the isolated form had never been known before). A variation of a naturally occurring substance may be patentable if an inventor is able to demonstrate substantial advantages of using the variant.
The PTO is the federal agency, organized under the Department of Commerce that administers patents on behalf of the U.S. government. The PTO employs patent examiners skilled in all technical fields in order to evaluate patent applications. The PTO also issues federal trademark registrations.
Under U.S. law, an inventor is a person who contributes in the conception of the patentable idea (i.e., the claims). Thus, inventorship of a patent application may change as the patent claims are changed during prosecution of the application. An employer or person who furnishes money to build or practice an invention is not an inventor. Inventorship may require an intricate legal determination by the patent attorney prosecuting the application.
Patent applications are generally drafted by a patent attorney or a patent agent (a non-attorney with a science education licensed to practice by the PTO). OTT will engage a patent law firm approved by the University’s Office of the General Counsel to prosecute an application covering your invention in the U.S. Patent and Trademark Office as well as the associated foreign offices if foreign protection is available. Throughout the drafting process you should expect to have several telephone conversations or meetings with the attorney and several exchanges of documents. The patent attorney generally will ask you to review the application before it is filed and will also ask you questions about inventorship of the application claims. At the time an application is filed, the patent attorney will ask the inventor(s) to sign an Inventor’s Declaration and an Assignment, which evidences the inventor’s duty to assign the patent to the University.

In about one to two years, depending on the technology area, the patent attorney will receive written notice from the PTO as to whether the application and its claims have been accepted in the form as filed. More often than not, the PTO rejects the application because either certain formalities need to be cleared up, or the claims are not patentable over the “prior art” (anything that workers in the field have made or publicly disclosed in the past). The letter sent by the PTO is referred to as an Office Action or Official Action. If the application is rejected, the patent attorney must file a written response, usually within three to six months. Generally the attorney may amend the claims and/or point out why the PTO’s position is incorrect. This procedure is referred to as patent prosecution. Often it will take at least two PTO Official Actions and two responses by the patent attorney, and sometimes more, before the application is resolved. The resolution can take the form of a PTO notice that the application is allowable; in other words, the PTO agrees to issue a patent. During this process, input from the inventor(s) is often needed to confirm the patent attorney’s understanding of the technical aspects of the invention and/or the prior art cited against the application. The PTO holds patent applications confidential until published by the PTO, 18 months after initial filing.

Prior art is defined by statute (35. U.S.C. 102), but it may generally be thought of as anything that prior workers in the field have made or disclosed in the past. Prior art may include printed publications, conference handouts (and sometimes even presentations within a university), books, newspaper articles – regardless of where the material was published and in what language it was published. Prior art may also include orally presented material, such as discussions at conferences, disclosures to competitors, certain disclosures to colleagues, online publication of meeting abstracts, and other public statements.

Thus, an inventor may under certain circumstances create prior art against his or her invention (thereby jeopardizing patent rights) by publicly disclosing an invention prior to the filing of a patent application.

In most countries, any public disclosure, verbal or in print, can immediately eliminate the potential to file a patent application. In some countries, simply telling one person not under an obligation of confidentiality might impact the right to seek patent protection. In the United States, there is a grace period, and one can file a patent application up to one year after the subject matter has been published. Even a suggestion of the invention without full details might be enough to start the clock in the United States, or eliminate the potential for foreign protection.
No. However, there is a provisional patent application, which is described below.
In certain circumstances, U.S. provisional patent applications can provide a tool for preserving patent rights while temporarily reducing costs. This occurs because the application is not examined during the year in which it is pending and claims are not required. A regular U.S. application and related foreign applications must be filed within one year of the provisional patent application in order to receive its early filing date. However, an applicant only receives the benefit of the earlier filing date for material that is described and enabled in the provisional application. As a result, the patent attorney may need your assistance when an application is filed as a provisional.
Patents may be searched at no cost on the website of the United States Patent and Trademark Office (www.uspto.gov, more particularly www.uspto.gov/patft/index.html – and seehttp://www.uspto.gov/main/profiles/acadres.htm, and http://www.uspto.gov/main/faq/). On that web page, searching “Issued Patents” will uncover patents issued (i.e., approved) in the United States since 1976. “Patent applications” are unissued (i.e., unapproved) patents, and are generally published 18 months after they are filed. Since applications have only been published since 2001, searching “Patent Applications” will uncover a different (and limited number) of documents. Searching may also be performed athttp://www.wipo.int/patentscope/search/en/search.jsf

If you are to disclose your invention to The University of Alabama, we will conduct a patent and literature search as part of our assessment. Some commercial databases that we use to conduct these searches are Relecura and PatSnap.

More than 400,000 U.S. patent applications are filed each year by inventors and companies from all over the world. They are handled by a corps of more than 6,000 patent examiners. The U.S. government has issued more than 7,600,000 patents (the current patent numbering system began in 1836). More than 150,000 patents are issued each year in the United States.
Foreign patent protection is subject to the laws of each individual country, although in a general sense the process works much the same as it does in the United States. In foreign countries, however, an inventor will lose any patent rights if he or she publicly discloses the invention prior to filing the patent application. In contrast, the United States has a one-year grace period.
Although an international patent does not exist, an international agreement known as the Patent Cooperation Treaty (PCT) provides a streamlined filing procedure for essentially all industrialized nations. For U.S. applicants, a PCT application is generally filed one year after the corresponding U.S. application (either provisional or regular) has been submitted. Later, the PCT application must be filed in the national patent office of any country in which the applicant wishes to seek patent protection, generally within 30 months of the earliest claimed filing date.

PCT provides two advantages. First, it delays the need to file costly foreign applications until the 30-month date, often after an applicant has the opportunity to further develop, evaluate and/or market the invention for licensing. Second, the international preliminary examination can allow an applicant to simplify the patent prosecution process by having a single examiner speak to the patentability of the claims which can save significant costs in prosecuting foreign patent applications.

An important international treaty called the Paris Convention permits a patent application filed in a second country (or a PCT application) to claim the benefit of the filing date of an application filed in a first country. However, pursuant to this treaty, these so-called ”convention applications“ must be filed in foreign countries (or as a PCT) within one year of the first filing date of the U.S. application (either provisional or regular).

Currently, the average U.S. utility patent application is pending for about two to three years, though inventors in the biotech and computer fields should plan on a longer waiting period. Once a patent is issued, it is enforceable for 20 years from the initial filing of the application that resulted in the patent, assuming that PTO-mandated maintenance fees are paid.
Patent protection is often a requirement of a potential commercialization partner (licensee) because it can protect the commercial partner’s often sizable investment required to bring the technology to market. Due to their expense, patent applications in all countries are not possible for all UA intellectual property. We carefully review the commercial potential for an invention before investing in the patent process. However, because the need for commencing a patent filing usually precedes finding a licensee, we look for creative and cost-effective ways to seek early protections for as many promising inventions as possible.
UA’s Intellectual Property Committee with input from the inventor(s) considers relevant factors in making decisions regarding protections.
Filing a U.S. patent application may cost between $7,000 and $13,000. To obtain an issued patent may require an additional $10,000 to $20,000 for patent prosecution. Filing and obtaining issued patents in other countries may cost $20,000 or more per country. Once a patent is issued in the U.S or in foreign countries, certain maintenance fees are required to keep the patent alive.
If you created the invention under a contract or consulting agreement with a company, OTT will need to review that contract to determine ownership and other rights associated with the contract and to determine the appropriate next steps. Should the technology be jointly owned with another university, OTT will work with the other university under an “inter-institutional” agreement that provides for one of the institutions to take the lead in protecting and licensing the invention, sharing of expenses associated with the patenting process and allocating any licensing revenues.
UA typically retains ownership of the patent rights resulting from sponsored research. Sponsored research projects are handled by OVPRED’s (Office of the Vice-President for Research & Economic Development) Office for Sponsored Programs (osp.ua.edu). Often, sponsored research contracts provide the sponsor an option for a limited time to negotiate a license to any patent rights developed as the result of the research. If you have questions about sponsored research, please see the website above or contact the representative responsible for the award.
These are terms placed on products or product packaging to inform the public that the manufacturer or seller has applied for patent protection. Once a patent has issued, a patent holder is supposed to place the patent number on products covered by the patent (and remove the “patent pending” markings). This is referred to as patent marking. A manufacturer or seller is not permitted to falsely mark its products.
Often the University accepts the risk of filing a patent application before a licensee has been identified. After University rights have been licensed to a licensee, the licensee generally assumes the patenting expenses and participates in the prosecution. At times we must decline further patent prosecution after a reasonable period (often a year or two) of attempting to identify a licensee.

Copyright Issues

Copyright is a form of protection provided by the laws of the United States to the authors of “original works of authorship.” This includes literary, dramatic, musical, artistic, and certain other intellectual works as well as computer software. This protection is available to both published and unpublished works. The Copyright Act generally gives the owner of copyright the exclusive right to conduct and authorize various acts, including reproduction, public performance and making derivative works. Copyright protection is automatically secured when a work is fixed into a tangible medium such as a book, software code, video, etc.
Although copyrightable works do not require a copyright notice, we do recommend that you use one. The notice should contain all of the following three elements: the symbol © (or the word “Copyright,” or the abbreviation “Copr.”); the year of first publication of the work; and the name of the owner. Additional information may be added afterwards to clarify origination of the work.

For example:

© (INSERT YEAR HERE) NAME OF OWNER

For information, questions, or permission requests please contact:

(INSERT CONTACT INFORMATION, UNIT NAME, UNIT ADDRESS, PHONE, ETC.)

How can I learn more about University copyright policies?

We recommend that you begin by reviewing material in Appendix H of the Faculty Handbook. If you have additional questions, please contact OTT.

What legal rights does a copyright provide?

A copyright owner has the exclusive right to do and authorize any of the following with the copyrighted work:

  • reproduce the work
  • make derivative works
  • distribute copies of the work
  • perform and display the work publicly
Copyright automatically applies as soon as the work is fixed in a tangible form, assuming the work is copyrightable. Registration is not required for the rights described above to apply. However, a copyright must be registered with the U.S. Copyright Office before a legal suit for alleged infringement can be filed in a United States court. The copyright owner is eligible for statutory damages and attorney’s fees if registration is done prior to infringement.

Trademark Issues

A trademark includes any word, name, symbol, device, or combination, that is used in commerce to identify and distinguish the goods of one manufacturer or seller from those manufactured or sold by others, and also to indicate the source of the goods. In short, a trademark is a brand name. A service mark is any word, name, symbol, device, or combination that is used, or intended to be used, in commerce to identify and distinguish the services of one provider from those of others, and to indicate the source of the services.
Trademark registration is a procedure in which the United States Patent and Trademark Office (PTO) provides at least initial determination of rights based upon legitimate use of the mark. However, it is not necessary to register a trademark or service mark in order to prevent others from infringing upon the trademark. Trademarks generally become protected as soon as they are adopted by an organization and used in commerce, even before registration. With a federal trademark registration, the registrant is presumed to be entitled to use the trademark throughout the United States for the goods or services for which the trademark is registered.