Intellectual

Intellectual Property
Property
Rights
Rights

MSE-415: B. Hawrylo

There are 4 types of intellectual

property rights that are relevant to
Product design and development.
1.
2.
3.
4.

MSE-415: B. Hawrylo

1. Patents
2. Trademarks
3. Trade Secrets
4. Copyrights

MSE-415: B. Hawrylo

1. Patents: A temporary monopoly

granted by a government to an
inventor to exclude others from using
an invention.

MSE-415: B. Hawrylo

2.Trademark: An exclusive right

granted by a government to a
trademark owner to use a specific
name or symbol in association
with a class of products or
services. Has unlimited life time.

MSE-415: B. Hawrylo

3.Trade Secret: Information used in

a trade or business that offers its
owner a competitive advantage
and that can be kept a secret. Not
granted by the government but
maintained by the company.

MSE-415: B. Hawrylo

4.Copyright: An exclusive right by

a government to copy and distribute
an original work of expression.
Literature
Graphics
Music
Art
Software

Lasts for up to 95 years!

MSE-415: B. Hawrylo

Why
Why
Patent?
Patent?

Patenting is Prestigious

I did it and I was first!

Licensing possibilities.
Return on investment spent on R&D
Commercial advantage over competitors
Assure freedom to operate

MSE-415: B. Hawrylo

What
What cant
cant be
be
Patented?
Patented?
Only a few limitations:
An algorithm
A theory or scientific principle, e.g. the Theory of
Relativity

MSE-415: B. Hawrylo

Overview of Patents
1. Design Patent
Prevent someone from producing or selling
a product with the same ornamental design.

MSE-415: B. Hawrylo

Overview of Patents
2. Plant Patent
A type of US patent providing protection for
new varieties of plants produced by genetic
modifications/Hybrids.
Raspberry Sundae
Crapemyrtle Lagerstroemia indica 'Whit I' Cultivar
U.S. Plant Patent # 10297

MSE-415: B. Hawrylo

Overview of Patents
3.Utility Patent
Protects patentable inventions such as
processes, machines, compositions of
matter and improvements
Must be:
Useful Useful to someone.
Novel Not known publicly.
Nonobvious Would not be clearly evident.

MSE-415: B. Hawrylo

Planning
Planning for
for
Successful
Successful
Patent
Protection
Patent
Protection
and maintain
good laboratory

Keep
notebooks
Routinely sign and date your notebook
even prior to actually accomplishing your
objective
Have records witnessed with signature
and date by an objective witness a noninventor

MSE-415: B. Hawrylo

Preparing a Disclosure/Patent
1.
2.
3.
4.
5.
6.
7.

Formulate a strategy and a plan

Study prior inventions
Outline claims
Write the description of the invention
Refine the claims
Pursue application
Reflect on the results

MSE-415: B. Hawrylo

Step 1: Formulate a strategy and a plan

Timing
Inventors should file a patent application PRIOR to any
public disclosure.
Delay application until just before disclosure. This
ensures that the design is as complete as possible.
The U.S. patent system grants priority among competing
patent applications based upon the date of invention.
This is done by describing an invention in a bound
notebook and having a witness sign and date each page.

MSE-415: B. Hawrylo

Step 1: Formulate a strategy and a plan

Type of Application
Regular or Provisional?
Regular: Only option until 1995. Full patent.
Provisional: Needs only fully describe the invention.
Less cost and less effort to prepare and file.
Results in patent pending. Valid for only 1 year.

MSE-415: B. Hawrylo

Step 1: Formulate a strategy and a plan

Scope of Application
Which elements are most likely to be patented?
Typically the process of reviewing a product results in
several elements that the team considers novel or
nonobvious.
Who are the inventors?
Personnel who participate in concept generation and
the subsequent design activities could be
considered inventors.
Failure to name a person who is an inventor can result
in the patent being declared not valid.

MSE-415: B. Hawrylo

Step 2: Study Prior Inventions

Three key reasons for studying prior inventionsprior art.
1. Teams can learn whether an invention may infringe on
existing unexpired patents.
2. Teams can get a sense of how similar their invention is
to prior inventions and therefore how likely they will be
granted a broad patent.
3. Teams will develop background knowledge enabling
the members to craft novel claims.

MSE-415: B. Hawrylo

Step 2: Study Prior Inventions

References
1.
2.
3.
4.

Existing and historical product literature.

Patent searches.
Technical trade publications.
On-line resources

A file containing prior art must be kept and turned into the
patent office shortly after filing the application.

MSE-415: B. Hawrylo

Step 3: Outline the Claims

1. Claims describe certain characteristics of the
invention.
2. Written in formal legal language and adhere to some
rules of composition.
3. Make a list of the features and characteristics that the
team believes are unique and valuable.
4. Worry about formal language later.

MSE-415: B. Hawrylo

Step 4: Write the Description of the Invention

Description = Specification
1. Written in a way that someone with basic skills in the
art could implement the invention.
2. Should also be a marketing document promoting the
value of the invention and the weakness in existing
solutions.

I short, the inventors must convince the

patent examiner that they have developed
something
useful,
different
and
nonobvious.
MSE-415: B. Hawrylo

Step 4: Write the Description of the Invention

The description/specification must be written
in a way that teaches, with enough detail,
someone skilled in the art to practice the
invention.
This is the trade-off for granting an
exclusive monopoly to exclude anyone else
from practicing.

MSE-415: B. Hawrylo

Step 4: Write the Description of the Invention

A typical description includes the following elements.
1. Title: Short descriptive label.
2. List of inventors: All inventors must be listed.
3. Field of invention: Type of device, product, machine,
or method this invention relates to.
4. Background of invention: State the problem the
invention solves. Explain context and what is wrong
with existing solutions, why a new solution is needed
and what the advantages are.
5. Summary of invention: Substance of the invention in
summary form.

MSE-415: B. Hawrylo

Step 4: Write the Description of the Invention

6. Brief description of the drawings: List the figures in
the description along with a description of each.
7. Detailed description:
Usually the most detailed,
contains detailed descriptions of embodiments of the
invention along with an explanation of how they work.

MSE-415: B. Hawrylo

Step 4: Write the Description of the Invention

Figures
Formal figures for patents must comply with a variety of
rules about labeling, line weight, and types of
graphical elements.
Reference Numerals

MSE-415: B. Hawrylo

Step 4: Write the Description of the Invention

The detailed description will reference the numbers.
Figure 1
A preferred embodiment of the invention
is shown in figure 1. The seeing eye 5
Allows the vehicle to sense distances
In front of it. The wheel 6 allows the
vehicle to move as powered by the fan 34.

And so on

MSE-415: B. Hawrylo

Step 4: Write the Description of the Invention

Defensive Disclosure
Puts an innovation into the public domain. Since it
becomes prior art anyone else is prevented from
patenting it.

MSE-415: B. Hawrylo

Step 5: Refine Claims

Defensive Disclosure
Claims are a set of numbered phrases that precisely define
the essential elements of the invention.
Claims are expressed verbally but must adhere to strict
mathematical measurements
X=A+B+C, where A=u+v+w
An X comprising of an A, a B, and a C wherein A is
comprised of a u, a v, and a w and wherein B is

MSE-415: B. Hawrylo

Step 6: Pursue Application

1. File a provisional patent application.
<$100
Allows for patent pending
Option to pursue a patent.
2. File a regular patent application
About $500.00 + legal fees for patent attorney.
3. PCT (Patent Cooperation Treaty) application
Allows a single patent application to initiate the
process of pursuing international patent protection.
4. Defer application indefinitely (potentially a trade
secret)

MSE-415: B. Hawrylo

Step 7: Reflect on the Results of the Process

Some things to consider:
Are the distinct features of the invention reflected in
the claim?
What is the timing of future actions?
What went smoothly? What didnt?
What did you learn that could improve the next
process.

MSE-415: B. Hawrylo