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eMaterials Newsletters

 

Monday, October 17, 2005Volume 5, Issue 6

 

Researchers Need to Protect Intellectual Property

The role of the university in protecting intellectual property has undergone a considerable sea change in the past quarter century. Until the 1970s, the pursuit of patents on publicly funded university research was generally discouraged by universities and some scientists as being against the spirit of open science, which held that scientific progress was best served by the free and open exchange of basic discoveries and techniques internationally.

 

During the decade of the seventies, Congress realized that federal ownership of sponsored university research was a major bottleneck in the transfer of new discoveries and inventions into the public sector. Of the 28,000 patents owned by the federal government in 1980, fewer than 5 percent were licensed to industry for commercialization.

 

In the Bayh-Dole Act of 1980, Congress actively encouraged universities to retain the property rights to inventions made under federal funding. By giving universities the ability to license their research directly, the federal government anticipated the U.S. economy would grow as companies brought new products and improved processes to the public.

 

In response, universities across the nation set up licensing and technology transfer offices on their campuses, most for the first time. Licensing activity surged, both nationwide and at Penn State. In the decade of the nineties, license royalties increased at Penn State from a few thousand dollars annually to well over $3M in 2004. As well as protecting the ability of scientists to benefit from their research, the retention of title to discoveries ensures that the university will have the rights to accept funding for future research in the same field.

 

Some of the recent discoveries that have been or are in the process of being patented by Penn State's Intellectual Property Office (IPO) include: a new use for ultrasound to kill bacteria, including anthrax spores; software to design miniature multitasking tools for minimally invasive surgery; and a method of using wastewater to boost hydrogen production for use in fuel cells. Each year approximately 200 invention disclosures are filed with Penn State's Intellectual Property Office by both faculty and students.

 

What is intellectual property (IP)?

From its creation in 1790 under the leadership of Secretary of State Thomas Jefferson, the mission of the U.S. Patent Office has been "to promote the progress of science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries."

 

IP includes trademarks, patents, copyrights, and trade secrets. In recent years intellectual property protection has been afforded to such new classes of IP as software programs, computer icon displays, and genetically modified organisms, including transgenic animals. In 1980, the U.S. Supreme Court upheld the patentability of a genetically modified bacterium, quoting a 1952 Congressional report that stated that "anything made by man under the sun" should be patentable.

 

What can be patented?

However, there are restrictions to what may be patented. According to patent law, "A patent cannot be obtained upon a mere idea or a suggestion." Other areas that are generally unavailable for patent protection include laws of nature, physical phenomena, and abstract ideas. In some instances techniques and procedures may be protected; for instance, some business methods are patented. Societal issues may trump individual property rights in some cases; for example, discoveries involving atomic weapons are not protected, and, although the Patent Office will grant a patent for a new surgical technique, other physicians cannot be excluded from using that technique.

 

Other countries have different ideas on what cannot be patented, including most types of software, business methods, and medicines that the U.S. protects. The recent widespread debate over whether underdeveloped countries should be allowed to manufacture their own generic HIV drugs gives, according to the United Nations Bioethics Commission, "a foretaste of the controversies that will arise over the conflict between the rights to health and life for millions compared to the right to protect intellectual property." The patenting, by an Australian researcher, of the so-called "junk DNA" that comprises 95 percent of the human genome is a case that speaks directly to the unresolved issue of the public good versus individual property rights.

 

Novel and Useful

In addition to the above limitations on patentability, other criteria may be used to determine whether or not an invention is patentable. According to the patent office, the invention or design must be novel: "The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable." Although open to wide interpretation, this means that an obvious addition or alteration to something that is already known or that already has been invented is not considered novel for the purpose of patent protection.

 

Furthermore, a discovery has to be useful, meaning that not only should it have a useful purpose, but it also has to work. (At least that's the idea. Between them, the British and U.S. patent offices have issued more than 100 patents for some type of free energy or perpetual motion machine.) Frivolous inventions are not generally considered for patents, though there are occasional questionable calls in that area as well. In 1977, for instance, a patent was awarded for the hair style known as the "comb over," a technique for covering a bald spot with hair combed from the back and sides.

 

The curious thing about patents

Contrary to logic, a patent does not give you the right to the use of your discovery, only the right to keep anyone else from using it. To understand the distinction, consider a case in which an inventor makes a novel and nonobvious improvement on an existing process or device, say by attaching a helicopter rotor to a riding lawn mower to trim tall hedges. Because of one or more prior patents on the lawnmower or the components thereof, the hedge mower inventor may be unable to license his invention. By the same token, the mower inventor may not use the patented improvement. If the hedge mower looks commercially feasible, the lawnmower patent holder could negotiate a deal with the hedge mower inventor.

 

Protecting a patent against infringement takes a considerable amount of vigilance and the resources and commitment to pursue legal action. You may have the right to protect your patent, but not the means. Fortunately, the University takes an active role in pursuing patent violators.

 

Who owns the rights to your discoveries?

At Penn State, all employees are required to sign an intellectual property agreement through which they "assign their inventions, discoveries and any resulting patents developed with significant use of University facilities or resources, or in their field of expertise, or within the scope of employment responsibilities, to Penn State."

 

Non-employees have a different set of rules and generally own the rights to their own work. This includes undergraduate students and professional students such as those in medicine and law. In some cases, these students may wish to participate in special projects or sponsored research that require them to sign a Special Student Intellectual Property Agreement.

 

Not all discoveries have commercial potential, and because of the expense, typically $20,000 or more for a U.S. patent and $100,000 up for international patents, not all discovery disclosures will be considered by the IPO as candidates for patents. You may be able to attain the rights to your intellectual property if all of the criteria are satisfied and you pay the expense of attaining patents yourself.

 

Rewards and services

Penn State invests in the research of its faculty, staff and graduate researchers in a number of ways. First, the University invests in the start-up funds for its new faculty, provides substantial infrastructure support, and bears the considerable expense of obtaining and maintaining a U.S. patent, as well as international patents. In many cases, Penn State will try to find an industrial sponsor or licensee to share or take on the cost of patenting. Penn State also pursues licensing opportunities for the discovery, negotiates contracts, and is able to defend against patent infringement. Finally, Penn State incurs the cost of marketing the invention.

 

University policy stipulates that after expenses for direct legal fees resulting from prosecution or infringement and for cost to maintain the patent, Penn State distributes royalties and license fees as follows:

 

 

Protecting your intellectual property

For students and faculty, the commercial implications of their research may be an afterthought at best. Basic research often takes decades to reach commercial application, while the demands of publication and the pursuit of funding are immediate and ongoing. However, the potential benefits of some discoveries are so great that it is worthwhile to think about protecting your intellectual property.

 

If you feel that you might have made a patentable discovery, the best first step is to file an intellectual property disclosure with the Intellectual Property Office. This disclosure will require some research on your part. You will need to explain how your discovery is novel and unobvious in light of similar existing devices or methods (prior art). To do this, you will need to search a patent database to familiarize yourself with patents that cover prior art in your field. The U.S Patent Office provides a searchable database broken down by category and subcategories. In addition, Penn State University Libraries maintain a Patent and Trademark Depository Library in the Schreyer Business Library. As an official depository of the United States Patent and Trademark Office (USPTO), they will provide assistance to the public in the use of patent and trademark resources. The library staff is familiar with search resources and can show you how to use computerized databases, collections, and other resources for searching. However, you will have to do the research on your own.

 

Enabling Public Disclosure: How you can lose the rights to your discovery

When a detailed enough description of your invention or process is made public, the clock begins to tick on the time you have to apply for a U.S. patent. The U.S. Patent Office allows a one year grace period from the time of a written enabling publication, meaning a publication, web-posting or written abstract that is sufficiently detailed to allow someone familiar with the field to duplicate or use your discovery. The criteria for publication are wide and include poster presentations, journal articles, abstracts of lectures, articles in newspapers or newsletters, and printed dissertations that are available to the public or other researchers, even if only one copy exists on a library shelf. Oral presentations are not considered to be publications in the U.S. If you want to protect your right to patent your intellectual property, consider filing an invention disclosure with the IPO before you hang a research poster outside your office or publish your research in a journal. Though an invention disclosure in itself offers no legal protection, it can help you decide if your intellectual property is worth the time and expense of protecting.

 

In foreign countries, there is no grace period after enabling publications. Foreign countries also have more stringent rules on what constitutes enabling publication, including any enabling oral, visual, or written public disclosure. Assuming all of these pitfalls have been avoided, the IPO has one year from the time it files for a provisional or non-provisional patent with the U.S. Patent Office or a foreign country's patent office to file a PCT (Patent Cooperation Treaty) patent application.

 

First to invent

In the U.S., unlike the rest of the world, the patent is awarded to the first to create a process or invention, rather than the first one to file for a patent. (Current legislation before Congress seeks to change this to a first-to-file model.) If a conflict should arise about the date of an invention, a well kept laboratory notebook will be the best means of proving your priority. It may also help when it comes to fairly determining the fair division of royalty rights among contributors. Write down the details of when your discovery was conceived and the steps that were taken to reduce the invention to practice. Your unsupported word, even in writing, won't be of much help, so take as many precautions as possible to prove the validity of your claim, including using a bound rather than a loose leaf notebook, writing in nonerasable ink, and having credible witnesses sign your lab notebook.

 

Patent Trivia -

Alexander Graham Bell is widely believed to be the father of the telephone, but the first working telephone was invented almost thirty years earlier by an Italian immigrant to the United States by the name of Antonio Meucci. Meucci, who made his initial discovery while living in Cuba, later settled on Long Island, where he greatly improved his invention. Unable to afford a regular patent, which cost about $250 at the time, he filed for a less expensive preliminary patent that he allowed to lapse one year before Alexander Graham Bell took out his own telephone patent. In June 2002, the U.S. House of Representatives officially credited Meucci as the telephone's inventor.

 

Sources and further reading:

 

Thanks to Matthew Smith in the Penn State Intellectual Property Office.