US Intellectual Property Management

Key Implications and Best Practices

The pressure on innovative organizations and countries are many and variedpolitical, economical, societal and technological. Leaders of the public sector or private organizations have limited control in most of these areas. But a leader of any entity, public or private, can exercise a high degree of control over the entitys own intellectual property (IP) through sound IP management and critical tools to accelerate innovation. IP rights is a critical tool for fostering innovation. Managed properly, they balance private rights and public necessity in a manner that, overall, encourages innovation and proves to be essential for achieving public benefits and f the public sector does not effectively utilize the IP system, it will neither be serving its own interests nor the interests of those it has promised to serve. Without effective IP management skills, the public sector risks squandering the rights, powers, and opportunities that the IP system provides. Intellectual property is a tool, and, like all tools, its impact depends on how it is used, who uses it, and for what purpose. IP strategies can serve to either restrict or expand access to innovations; its all a matter of capacity, management, and context. For IP management to efficiently function within a larger framework of innovation, best practices need to be documented. The list given below can serve as a starting point that may be adapted based on the needs and circumstances. For Government Policymakers. The ability for protected intellectual property to speed and support innovation has been globally recognized and accepted. Therefore, do not discourage the potential for foreign investment by erecting restrictive barriers to technology transfer and assimilation. Intellectual property is an important facet of trade and has in many circumstances become the preferred currency in foreign affairs. To help achieve a competitive stance in the global economy, develop a fair and balanced system for protecting intellectual property. Be aware of obligations regarding intellectual property that attach to becoming a member of WTO. For Senior Management (university president, R&D manager, etc) The term intellectual property embraces much more than just patented technology and that, therefore, the transfer of technology can be affected by many seemingly disparate laws and regulations. Highly trained, creative, and imaginative technology transfer personnel, or ready access to them, are an essential ingredient for a successful technology transfer program. Think globally and strategically when considering IP protection. This will then, ideally, influence how an institutions IP policies, infrastructure and implementation proceed. For Scientists Your research can generate valuable intellectual property. Strive to imagine the practical commercial applications of this research.

Understand the obligations that attach to government funding, as well as its impact on co-mingled financial support from other sources, for example corporate and government funding sources. If collaboration is international, know the national laws and regulations that attach to technology export and import.

For Technology Transfer Officers Inform any scientists that you work with about the obligations that attach to any sponsorship of their particular research programs or endeavors. If collaboration is international, seek counsel about restrictions applying to the exportation or importation of technology, and be sure that collaborating scientists understand their respective obligations. In addition, collaborative arrangements should be drafted so that the IP rights of all parties are preserved. Insure compliance with all laws and regulations governing sponsored research, especially in relation to the effect of co-mingled funds from different sources on the research and the dissemination of research results. Be aware of potential or actual conflicts of interest that might arise or exist. Realize that even where actual legal conflict does not exist, the perception of conflict can be damaging. Keep in mind the possible incursion and effect on a contractual relationship that ancillary laws or regulations may have. Be alert to changing laws and regulations that may affect technology transfer arrangements.
Krattiger A, RT Mahoney, L Nelsen, JA Thomson, AB Bennett, K Satyanarayana, GD Graff, C Fernandez and SP Kowalski. 2007. Editors Summary, Implications and Best Practices (Chapter 3.9). From the online version of Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices. MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

Patents
International Protection Providing information on patent programs and agreements dedicated to improving worksharing and international cooperation among various worldwide Intellectual Property Offices.
Patent Cooperation Treaty (PCT) - International patent application filing system. The Office of PCT Legal Administration is comprised of two branches: PCT Special Programs and PCT Legal Affairs . PCT Special Programs Branch The function of the PCT Special Programs Branch is to educate and assist the patent community with respect to the Patent Cooperation Treaty . Provides training courses to help patent applicants and practitioners file PCT applications Provides instruction to patent examiners at the United States Patent and Trademark Office (USPTO) concerning the search and examination of PCT applications. Provides direct assistance regarding PCT applications via the PCT Help Desk . PCT Legal Affairs Branch

The PCT Legal Affairs Branch resolves legal issues relating to the Patent Cooperation Treaty. Such issues most often arise through petitions to the Commissioner in PCT international applications and in U.S. national stage applications submitted under 35 U.S.C. 371 . Interprets and/or suggests changes to patent laws and rules and studies their effect on the Patent Cooperation Treaty. Deals with other aspects of international patent law such as harmonization, the Patent Law Treaty , and electronic filing . Patent Prosecution Highway - Fast track examination of corresponding applications filed in USPTO and various Intellectual Property Offices around the world. Under the Patent Prosecution Highway (PPH), an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF. PPH will leverage fast-track examination procedures already available in the OSF to allow applicants in the OSF to obtain corresponding patents faster and more efficiently Common Application Format - Simplified and streamlined patent application filing requirements for EPO, JPO and USPTO. During the November 2007 Trilateral Conference, the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the Japan Patent Office (JPO) agreed on a common application format. This format, which was developed in consultation with users from the three regions, will simplify and streamline application filing requirements in each Office to allow applicants to prepare a single application in the common application format for acceptance in each of the three Offices. New Route - Work-sharing pilot between the USPTO and JPO. The United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) have been considering a proposal for work-sharing called the New Route. Under the New Route framework, a filing in one office that is party to this arrangement would be deemed a filing in all member offices. The first office and applicant would be given a 30-month processing time frame in which to make available a first office action and any necessary translations to the second office(s), and the second office(s) would exploit the search and examination results in conducting their own examination. The first office would also be responsible for 18-month publication of the application. If the language of the first office is not English, an English language abstract and bibliographic data would be published together with the application. By allowing the second office to exploit the search and examination results of the first office, the New Route would help offices reduce overall workload, minimize duplication of search efforts, and increase examination quality. While the New Route is in many respects similar to the Patent Cooperation Treaty (PCT) (a 30-month processing period, a single filing treated as a filing in several countries, a search report available to designated offices, etc.), it may further offer significant advantages to applicants, in particular, lower costs and more targeted filings. Because the New Route, as envisioned, would require changes in law in the USPTO and the JPO, the USPTO and the JPO agreed, at the May 2007 Trilateral Technical Meeting, to commence a pilot project to test the New Route concept based on limited filing scenarios currently available under existing law in both offices. The start date for the pilot project will be January 28, 2008. A notice

regarding the requirements/procedures for participating in the New Route pilot project will be posted on the USPTO website on or about January 14, 2008 Triway - Search sharing pilot between EPO, JPO, and USPTO. The United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the Japan Patent Office (JPO) have been considering a search sharing proposal, entitled Triway that would leverage the searching expertise of each of the Trilateral Offices (EPO, JPO, and USPTO) to the benefits of both applicants and the Offices. The basic concept behind the Triway proposal is to promote worksharing by eliminating certain timing issues, while at the same time providing applicants and the Offices with the benefit of search results of the Trilateral Offices being available within a certain short time period in order to give applicants and Trilateral Offices an opportunity to share and consider all of the Trilateral search results. This would help improve the resulting quality of any patents issued on the corresponding applications by each of the Trilateral Offices. The Triway proposal would complement other worksharing efforts such as the Patent Prosecution Highway Program. Under the Triway proposal, each Office would conduct searches on corresponding applications filed under the Paris Convention in each of the Offices in a sufficiently early time period. The search results from each of the Offices would then be shared among the Offices in order to reduce the search and examination workload in each of the Offices.

Patent Process Overview

Step 1, Applicant - Has your invention already been patented? o Search the Patent Full-Text and Full-Page Image Databases If already patented, end of process If not already patented, continue to Step 2 Step 2, Applicant - What type of Application are you filing? o Design Patent (ornamental characteristics) o Plant Patent (new variety of asexually reproduced plant) o Utility Patent (most common) (useful process, machine, article of manufacture, composition of matter) Step 3, Applicant - Determine Filing Strategy o File Globally? Need international protection? o File in U.S.? - continue to Step 4 Step 4, Applicant - Which type of Utility Patent Application to file? o Provisional or o Nonprovisional Step 5, Applicant - Consider expedited examination o Accelerated Examination Program o First Action Interview o Patent Prosecution Highway Step 6, Applicant - Who Should File? o File yourself (Pro Se) o Use a Registered Attorney or Agent (Recommended)

Step 7, Applicant - Prepare for electronic filing o Determine Application processing fees o Apply for a Customer Number and Digital Certificate Step 8, Applicant - Apply for Patent using Electronic Filing System as a Registered e-Filer (Recommended) o About EFS Web Step 9, USPTO - USPTO examines application o Check Application Status o Allowed? Yes, go to Step 12 No, continue to Step 10 Step 10, Applicant - Applicant files replies requests for reconsideration, and appeals as necessary Step 11, USPTO - If objections and rejection of the examiner are overcome, USPTO sends Notice of Allowance and Fee(s) due Step 12, Applicant - Applicant pays the issue fee and the publication fee o USPTO Grants Patent Step 13, Applicant - Maintenance fees due 3 1/2, 7 1/2, and 11 1/2 years after patent grant Download the Utility Patent Application Guide

http://www.uspto.gov

Copyrights
Protection
Copyright protects original works of authorship that are fixed in a tangible form of expression. The fixation need not be directly perceptible so long as it may be communicated with the aid of a machine or device. Copyrightable works include the following categories: literary works musical works, including any accompanying words dramatic works, including any accompanying music pantomimes and choreographic works pictorial, graphic, and sculptural works motion pictures and other audiovisual works sound recordings architectural works These categories should be viewed broadly. For example, computer programs and most compilations may be registered as literary works; maps and architectural plans may be registered as pictorial, graphic, and sculptural works. Several categories of material are generally not eligible for federal copyright protection. These include among others: Works that have not been fixed in a tangible form of expression (for example, choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not been written or recorded) Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration Works consisting entirely of information that is common property and containing no original authorship (for example: standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources)

International Copyright Protection

There is no such thing as an international copyright that will automatically protect an authors writings throughout the planet. Protection against unauthorized use in a particular country depends, basically, on the national laws of that country. However, most countries do offer protection to foreign works under certain conditions, and these conditions have been greatly simplified by international copyright treaties and conventions. For further information and a list of countries that maintain copyright relations with the United States, see Circular 38a, International Copyright Relations of the United States.

Registration Procedures
Option 1: Online Registration Online registration through the electronic Copyright Office (eCO) is the preferred way to register basic claims for literary works; visual arts works; performing arts works, including motion pictures; sound recordings; and single serials. Advantages of online filing include a lower filing fee fastest processing time online status tracking secure payment by credit or debit card, electronic check, or Copyright Office deposit account the ability to upload certain categories of deposits directly into eCO as electronic files Note: You can still register using eCO and save money even if you will submit a hard-copy deposit, which is required under the mandatory deposit requirements for published works. The system will prompt you to specify whether you intend to submit an electronic or a hard-copy deposit, and it will provide instructions accordingly. Basic claims include (1) a single work; (2) multiple unpublished works if they are all by the same author(s) and owned by the same claimant; and (3) multiple published works if they are all first published together in the same publication on the same date and owned by the same claimant. To access eCO, go to the Copyright Office website at www.copyright.gov and click on electronic Copyright Office. Option 2: Registration with Fill-In Form CO The next best option for registering basic claims is the new fill-in Form CO. Using 2-d barcode scanning technology, the Office can process these forms much faster and more efficiently than paper forms completed manually. Simply complete Form CO on your personal computer, print it out, and mail it along with a check or money order and your deposit. To access Form CO, go the Copyright Office website and click on Forms. Do not save your filled-out Form CO and reuse it for another registration. The 2-d barcode it contains is unique for each work that you register. Option 3: Registration with Paper Forms Paper versions of Form TX (literary works); Form VA (visual arts works); Form PA (performing arts works, including motion pictures); Form SR (sound recordings); and Form SE (single serials) are still available. They are not available on the Copyright Office website; however, staff will send them to you by postal mail upon request. Remember that online registration through eCO and fill-in Form CO (see above) can be used for the categories of works applicable to Forms TX, VA, PA, SR, and SE.

http://www.copyright.gov/

Trademarks

Benefits of federal trademark registration

Owning a federal trademark registration on the Principal Register provides several advantages, including: Public notice of your claim of ownership of the mark A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/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 The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods The right to use the federal registration symbol and Listing in the United States Patent and Trademark Offices online databases.

Difference Between "TM" (Trademark) and "R" (Registered)

"TM" (Trademark) or "SM" (Service mark) can be used anytime as a means of claiming rights to a mark or symbol regardless whether an application has been filed to the United States Patent and Trademark Office (USPTO). The federal registration symbol however can only be used after the USPTO registers a mark; after the application is approved and not during the application process. Also, the registration symbol can only be used with the mark in connection with a particular set of goods and/or services listed in the registration.

Trademark Application Process

Hire an Attorney (Optional) For advice about trademarks and the USPTO registration process, you should consider hiring a private trademark attorney (not associated with the USPTO) to help you. Although not required, most applicants use private trademark attorneys for legal advice regarding use of their trademark, filing an application, and the likelihood of success in the registration process, since not all applications proceed to registration. A private attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and common law unregistered trademarks. Other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered; therefore, those trademarks will not appear in the USPTO's Trademark Electronic Search System (TESS) database. A private attorney can also assist in the policing and enforcement of your trademark rights. The USPTO only registers trademarks. You as the trademark owner are responsible for any enforcement. Select One of the Two Possible Formats An important consideration is the depiction of your mark. Every application must include a clear representation of the mark you want to register. We use this representation to file the mark in the USPTO search records and to print the mark in the Official Gazette and on the registration certificate.

Two possible mark formats are used: (1) standard character format; or (2) stylized or design format. The standard character format should be used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. The stylized or design format, on the other hand, is appropriate if you wish to register a mark with a design element and/or word(s) and/or letter(s) having a particular stylized appearance that you wish to protect. The two types of mark formats cannot be mixed in one mark; do not submit a representation of a mark that attempts to combine a standard character format and a stylized or design format. Identification of Goods and Services Once you have chosen your mark, you must also be able to identify clearly the precise goods and/or services to which the mark will apply. The identification of goods and/or services must be specific enough to identify the nature of the goods and/or services. The level of specificity depends on the type of goods and/or services. For examples of acceptable identifications, please consult the Acceptable Identification of Goods and Services Manual. Another resource is the International Schedule of Classes of Goods and Services. This is a listing, by class, of all of the headings for the international classes. It also identifies some of the most common items falling within the class, and includes explanatory notes indicating what the class specifically does and does not include. NOTE: Under U.S. Trademark law, class headings by themselves are not acceptable for registration purposes. The specific items of goods and/ or services must be listed. Searching Marks in USPTO Database You should search the USPTO database before filing your application, to determine whether anyone is already claiming trademark rights in a particular mark. You may conduct a search online for free via our TESS (Trademark Electronic Search System) database. If your mark includes a design element, you will need to search it by using a design code. To locate the proper design code(s), please consult the Design Search Code Manual. NOTE: The USPTO is NOT able to conduct a search for you or provide legal advice concerning what would be a proper search. If your search in TESS yields a mark that you think might conflict with your mark, make sure that the "Live/Dead Indicator" shows the mark to be "live." Otherwise, a "dead" mark could not be used to block your application. Selecting the Proper "Basis" for Filing a Trademark Application A trademark application must specify a "basis" for filing. Most U.S. applicants base their application on either their current use of the mark in commerce or on their intent to use the mark in commerce in the future. Under either the "use in commerce" basis or the "intent to use" basis, prior to registration you must demonstrate that you have used the mark in commerce. The types of commerce encompassed in this definition are interstate, territorial, and between the United States and a foreign country. The basic difference between these two filing bases is whether you have started to use the mark on all the goods/services identified in your application. If you have already used your mark in commerce, you may file under the "use in commerce" basis. If you have not yet used your mark, but intend to use it in the future, you must file under the "intent to use" basis. This means you have a bona fide intent to use the mark in commerce; that is, you have more than just an idea but are less than market ready (for example, having a business plan, creating

samples products, or performing other initial business activities). An "intent to use" basis requires filing an additional form and fee prior to registration that are not required if you file under "use in commerce" at the outset. Use is established by providing the date of first use of the mark anywhere and the date of first use of the mark in commerce, as well as submitting a specimen (example) showing how you use the mark in commerce. Filing a Trademark Application You may file your trademark application online using TEAS - the Trademark Electronic Application System. TEAS allows you to fill out an application form and check it for completeness, and then submit the application directly to the USPTO over the Internet. Before accessing the electronic application form, you can preview the pages, to see what information will be required before starting the process. http://www.uspto.gov