Patents and Other Legal Protection

An invention is patentable if it is novel, non-obvious, and useful.  Novel, of course, means new.  Non-obviousness is achieved if someone who is skilled in the art would not have thought of the idea easily.  Therefore, a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement, may be eligible for patent protection.  Conversely, concepts and ideas per se are not patentable.

A naturally occurring substance is not patentable in its natural state.  However, a natural substance that has never been isolated or known may be patentable in some instances, but only in its isolated form.  A variation of a naturally occurring substance may be patentable if an inventor is able to demonstrate substantial non-obvious modifications that offer significant advantages in using the variant.

The final authority on patents resides with the United States Patent and Trademark Office (USPTO).  Organized under the Department of Commerce, the USPTO is a federal agency that administers patents on behalf of the government.  The USPTO employs patent examiners skilled in all relevant technical fields to appraise patent applications.  The agency also issues federal trademark registrations.

Discussions with the USPTO will require input from the inventor on the patent.  Under U.S. law, an inventor is a person who takes part in the conception of the ideas in the patent claims of a patent application.  Due to this distinction, inventorship may change as the patent claims are changed during prosecution of an application.  An employer or person who furnishes money to build or practice an invention is not an inventor; as such, inventorship may require an intricate legal determination by the patent attorney prosecuting the application.

The IDEA Center works as an intermediary between inventors and patent counsel.  The Center contracts with outside patent counsel for patent protection, thus ensuring access to patent specialists in diverse technological areas.  Inventors then work with patent counsel in drafting the patent applications and responses to patent offices in the countries in which patents are filed.  Per University policy, all IP is assigned to the University of Notre Dame Research Foundation.

Inventors should also be aware of the availability of provisional patents.  In the United States, inventors can file a provisional patent application to cover their invention.  A provisional patent establishes a priority date with the USPTO, but does not begin the examination process.  It gives the inventor a one year window in which to file an application with the relevant agencies in the U.S. or foreign countries.  During this time, the inventor can further develop the invention, determine marketability, acquire funding or capital, or seek licensing agreements.  If a non-provisional patent is not filed within one year of the provisional application, the application and priority are abandoned. 

Patent applications are typically drafted by a patent attorney or a patent agent.  The patent attorney will ask the inventor to review an application before it is filed, and will also ask questions concerning inventorship of the application claims.  At the time an application is filed, the patent attorney will ask the inventor to sign an Inventor Declaration and an Assignment, under which the inventor assigns his or her rights in the patent to the University of Notre Dame.  In turn, the University will assign its rights to the University of Notre Dame Research Foundation.

Depending on the technology, the patent attorney should receive written notice from the USPTO within 12-24 months as to whether the application and its claims have been accepted as patentable in the form as filed.  The USPTO often rejects the application because certain formalities need to be cleared up or claims are not patentable over the prior art.  The letter sent by the USPTO is referred to as an “office action.”  If the application is rejected, the patent attorney must file a written response, typically within three to six months.  Generally, the attorney may amend claims and point out why the USPTO position is incorrect.  This procedure is referred to as patent prosecution.  Oftentimes, it will take two USPTO office actions and two responses from the attorney before the application is resolved.  The resolution can take the form of a USPTO notice that the application is allowable; in other words, they issue a patent.  During the prosecution process, input from the inventors is often required to confirm the patent attorney is understanding the technical aspects of the invention and, if relevant, the prior art cited against the application.  In all cases, the USPTO holds patent applications confidential for 18 months before publishing them.

Patents are usually issued within 18 to 36 months after application, though inventors in the biotech and computer fields should plan on a longer waiting period.  During this waiting period, a patent is considered “pending.”  Utility patents are granted for a term which begins on the date of the grant and ends 20 years from the date the patent application was first filed.  Inventors can lose their rights if periodic maintenance fees are not paid, or when the term expires.

After a patent is granted, inventions may be corrected for typographical errors by filing a certificate of correction.  When a patent is defective in certain aspects, the patentee may apply for a reissue patent.  However, it is important to note that new matter cannot be added to the invention.  A reissue patent is granted following the examination of the changes made to the invention.  It replaces the original patent and is granted only for the remaining years left from the unexpired term.

Unfortunately, it is not free to file a patent.  Between USPTO filing fees and associated attorney costs, filing a patent in just the United States can cost between $10,000 and $30,000.  International patent filings are even more expensive as they cover a larger number of countries and often involve foreign attorneys and translators.  A PCT filing, plus filings in major industrialized nations, have been known to cost well over $100,000.  Additionally, there are annual maintenance fees for all patents, pushing the cost even higher over the lifetime of a patent.  Maintenance fees are due in three separate installments: 3 ½, 7 ½, and 11 ½ years from the date the patent is granted. 

After a patent has expired, anyone may make, use, offer for sale, sell, or import the invention without permission of the patentee, provided that matter covered by other unexpired patents is not used.  Since the patent is expired, this does not constitute infringement of the patent.  Infringement consists of the unauthorized making, using, offering for sale, or selling of any patented invention within the covered country during the time of the patent. A patentee can sue the infringer and ask for an injunction to prevent the continuation of infringement as well as an award for damages.  If an inventor believes their patent is being infringed upon, they should contact the Licensing Manager at the IDEA Center responsible for their technology.  They will work with the inventor and possible infringer to resolve the matter. 

Another area of IP protection inventors should be familiar with is trademarks or service marks.  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.  Trademarks also 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.  Service marks also indicate the source of the services.  It is not necessary to register a trademark or service mark to prevent others from infringing upon the trademark or service mark.  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 goods or services for which the trademark is registered.  To illustrate the concept, the University has some trademark protection on items such as sports logos, mascots, emblems, and images of University events.  The Licensing Department maintains University trademarks. 

The last form of IP protection inventors should familiarize themselves with is the copyright.  A copyright is a form of protection provided by the laws of the United States and other countries 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 usually gives the owner of the copyright the exclusive right to conduct and authorize various acts, including reproduction, public performance, and the making of derivative works.  Copyright protection is automatically secured when a work is fixed into a tangible medium, such as a book, software code, video, or other form.  In the United States, copyright protection lasts the lifetime of the author plus 70 years. 

In some instances, the University registers copyrights, but generally not until commercial product is ready for manufacture.  All new software and source code should be disclosed, just as any new invention is, and processed and managed by the IDEA Center.  Although copyrightable works do not require a copyright notice, the University recommends that inventors use one.  For works owned by the University, inventors should use the following notice: "© 201X University of Notre Dame. All rights reserved."