Research Administration Operations Update

Tuesday, May 18, 2021 02:00pm, EDT

Intellectual Property 101

What is Intellectual Property?

Intellectual property is an intangible asset that has financial value and is protected through patent, copyright, trademark, and trade secret laws.  Intellectual Property refers to ideas such as inventions; creative works and software; and symbols, names and images used in commerce.  

Know-how is sometimes also included in intellectual property (licenses) and covers ideas and information that is not protected by patent, copyright, trademarks, or trade secret. 

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  • A patent is an exclusive right that provides patent owners with protection for their inventions for a limited time period, generally 20 years from the date on which the application for the patent was filed in the United States. Under certain circumstances, patent term extensions or adjustments may be available. A patent gives the owner the right to exclude others from making, using, offering for sale, or selling the invention or importing the invention.

    Criteria for Patenting

    Important criteria for patenting are that an invention be novel, have practical use and be non-obvious.   

    • Novel or new inventions are ones that have never been known to exist before. This means that there is no evidence of “prior art” that the invention was previously practiced, patented, described within a patent/patent application, described in a public document or been in use in a product, etc. The United States allows patents to be filed for inventions made public with within one year from the date a patent application is filed.
    • Practical use means that the invention must have a real-world utility - practical aspect. The invention must be able to be described and to be reduced to practice - although this does not have to have occurred in order to file a patent application. In addition, the subject matter of the invention must be considered patentable under the law. Inventions that are scientific theories, mathematical formulas, natural substances, laws of nature are not considered patentable.
    • Non-obvious means that people with ordinary skill in the technical field could not predict or conceive the invention. Typically, this means that no other existing ideas, perhaps in two existing patents when combined would lead someone to arrive at the invention.

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  • What is Copyright?

    A copyright is an intellectual property right that protects the authors of original works of authorship (e.g. written down, stored on a computer). Once the work is stored or written down, it's fixed in a tangible medium of expression and the owner of the work has a copyright for the work. Original works of authorship include literary, dramatic, musical, artistic, and certain other intellectual works, such as software. Copyright covers both published and unpublished works. The copyright protects the form of expression rather than the subject matter of the writing.

    Copyright law gives the owner of the copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works (modifications of the work), to distribute copies of the work, to perform or publicly display the work, and for sound recordings to perform the work publicly via digital audio transmission. These rights can be licensed to others who are interested in using or commercializing the works.

    Use of a copyright notice or registration of the work with the copyright office are not a requirement for copyright protection.  However, putting a notice on a work serves to inform the public that the work is protected by copyright. It means that an infringer, who uses the work without permission, is unable to claim they were unaware of the copyright’s existence. At Rutgers, all copyrighted works including software should include the following copyright notice: 

    ©YYYY Rutgers, The State University of New Jersey, All rights reserved. Do not copy or reproduce without permission. (YYYY is the date that the copyrighted work was created.)

    In general, Rutgers does not copyright university materials as it is not always necessary or appropriate. 

    What is Software?

    Software code is copyrightable Intellectual property. It can be licensed for commercialization with or without a patent. It can be very difficult to obtain patent protection for software inventions which can make licensing software, on its own, a preferred pathway for commercialization. Copyright protection is often sufficient to enable the commercialization of software.

    What is a Trademark?

    A trademark is a word, name, symbol, or device associated with goods that protects brand names and logos used on goods and services. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.

    There is no requirement that a trademark is registered with the USPTO to obtain protection. If you use your trademark and it has not been registered, you use TM to indicate that the mark is a trademark. If the mark has been registered, you can use the ® registration symbol. Regardless of whether a trademark is registered, TM or a registration symbol should be used to inform others that the word, name, symbol, or device is claimed as a trademark.

    What is a Trade Secret?

    Trade secrets can be formulas, practices, processes, designs, instruments, patterns, commercial methods, or a compilation of information which are not generally known and provide a business a competitive edge.

    Trade secrets encompass manufacturing or industrial secrets and commercial secrets. They are protected without requiring registration and for an unlimited period of time. However, the requirements and processes required to keep trade secrets as secret can be difficult and costly. 

    From a university standpoint, this would require researchers to keep their work private, never disclose to any other person, and a need to establish trade secret policy including access control and security measures.

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  • The process outlined below is primarily for utility patents.  Design and plant patents are slightly different. Please contact LM for more information and guidance. 

    • Provisional Application 

    If your invention is deemed to be patentable after the technology assessment, then Innovation Ventures will proceed to file a provisional application with the USPTO and pay the filing costs.   

    US provisional patent applications can provide a tool for preserving patent rights while temporarily reducing costs and providing extra time (1 year) to prepare a regular application.  

    Innovation Ventures contracts with outside counsel for IP protection, thus assuring access to patent specialists in diverse technology areas. Innovation Ventures will help with the selection and oversight of the outside patent counsel. Inventors work with the patent counsel in drafting and reviewing the patent applications. The filing date of the complete provisional application sets the priority date. After the filing of the provisional application, Innovation Ventures will contact inventors to execute assignments to Rutgers with notarization.  

    • Regular US Application or Patent Cooperation Treaty (PCT) application 

    The provisional application must be converted to a regular US application or PCT by the 1-year anniversary from the priority date to receive the benefit of the priority date of the provisional application.  

    Licensing Managers will perform another technology assessment at least three months before the conversion date to review market interest, additional data from inventors after the provisional filing, and any additional prior art. The Innovation Ventures triage committee reviews the assessment and provides suggestions. 

    The technology assessment can lead to the following outcomes: 

    Convert to PCT 

    Innovation Ventures will proceed to file a PCT application if there is considerable interest from commercial entities in licensing the technology and if foreign jurisdiction should be covered. A PCT application cannot be filed if the invention has been publicly disclosed before the filing of the provisional application. 

    Convert to regular US application 

    Innovation Ventures will proceed to file a regular US application if no interest has obtained from the marketing campaign, or the market outside of the US is not important, or there was prior public disclosure before the filing of the provisional application. 

    Refile provisional application 

    Innovation Ventures may, sometimes, opt to refile a provisional application. This is usually the case if the technology is deemed to be patentable and is commercially attractive, but there is not sufficient data or examples to convert. A provisional can only be refiled if there is no public disclosure.  

    Not to Convert 

    The invention docket is closed or returned to the inventors. If an inventor seeks ownership of the IP after the return of the invention, Innovation Ventures can assist inventors to transfer ownership from Rutgers to the inventor(s). If the inventors take ownership of the invention, they accept all financial and managerial responsibilities for patenting and commercial development. 

    • PCT national stage filing 

    Once a PCT application is filed, it is scheduled to enter the national stage at 30 months from the priority date (some countries have extended deadline, please contact your LM for more information or refer to WIPO for the most up-to-date information). Your LM will perform a third technology assessment, at least three months prior to the 30 months deadline, to decide if to proceed with the national stage filings and the countries in which to file the application. If the technology is already licensed, this decision will likely be made in conjunction with the licensee. If the technology is not licensed, and there is no vital and compelling justification to continue supporting worldwide patent filings, LM will not proceed with national stage filings. If the inventor would like to continue with patent prosecution at this stage, Innovation Ventures may license the invention back to the inventor. If the inventors take ownership of the invention, they accept all financial and managerial responsibilities for patenting and commercial development. 

    • Patent Prosecution and Office Actions 

    The patent application undergoes extensive examination after it is filed in each individual jurisdiction. Any written notice from the patent office is referred to as an “Office Action” and may cite objections to or rejection of the claims over a variety of issues. Inventors work with the patent counsel to overcome the objection/rejection raised by the examiner and amend claims if necessary. Inventor’s input in responding to Office Actions is critical to ensure successful patent prosecution. Often it will take two or more office actions and written responses before the application is resolved. 

    • Issuance and maintenance of Patent 

    On average getting a patent issued can take 3-10 years. During this time, inventors may continue to make discoveries and improve on inventions that have been filed. Please notify Innovation Venures of these improvements so that we can work to protect them with additional filings. Once a patent is issued, it is enforceable for 20 years from the filing date of the earliest non-provisional application that resulted in the patent, assuming that PTO-mandated maintenance fees are paid. 

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  • Ownership of Inventions or Software and Copyrighted Works 

    All Rutgers personnel (including but not limited to members of the faculty and staff holding appointments at or employed by the University, persons holding any form of research appointment, visiting professors or visiting scientists with or without salary, undergraduate and graduate students, graduate assistants, teaching assistants, and post-doctoral fellows)  are subject to the University Patent Policy that specifies that Rutgers owns, with some exceptions, the intellectual property rights that result from research conducted at Rutgers. The University Copyright Policy specifies the types and requirements for ownership of Software and Copyrighted Works created by Rutgers employees, faculty, and staff. By signing the Faculty Employment Agreement, the faculty employee agrees to the terms of the University Patent Policy and/or Copyright Policy, including its requirement that he or she disclose and assign inventions or Works to the University. In exchange, Innovation Ventures markets the technology, manages and licenses the patent on your behalf, provides advice on business plans, makes connections with investors, and distributes royalties and proceeds from license agreements to inventors and other Rutgers units per the patent and copyright policies.  

    If the innovation is created under a sponsored research or consulting agreement with a company, Innovation Ventures (with patent counsel as needed) will need to review the contract to determine ownership and other rights associated with the contract. If the invention is jointly developed with another academic institution, an Inter-Institutional Agreement between Innovation Ventures and said institution will determine ownership, disbursements of patent expenses and revenue sharing.  

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  • Agreements that could play a significant role in protecting IP are: 

    Confidentiality agreements (CDAs) and Non-Disclosure Agreements (NDAs) are used to protect the confidentiality of an invention or research during evaluation by potential 3rd parties such as potential licensees. NDAs also protect proprietary information of third parties that University researchers access when conducting or evaluating research opportunities. These agreements facilitate the discussions of confidential materials and protect information disclosed during discussions. 

    Material Transfer Agreements (MTAs) are used for incoming and outgoing materials. These agreements describe the terms under which University researchers and outside researchers may share materials, typically for research or evaluation purposes. An MTA ensures Intellectual property rights are not endangered when materials are used from or by another entity. 

    Inter-Institutional Agreements describe the terms under which two or more institutions (generally universities) will collaborate to assess, protect, market, license, and share in the revenues received from licensing jointly owned intellectual property. 

    Sponsored Research Agreements describe the terms under which sponsors provide research funding to Rutgers. Sponsored Research Agreements are negotiated by Rutgers Sponsored Research and Corporate Contracts teams.  Clauses relating to intellectual property are often additionally reviewed by members of the licensing team.  

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  • Rutgers University encourages its students to be entrepreneurial and to seek out new and innovative solutions to existing challenges. Rutgers will disclaim ownership for all student innovations/intellectual property unless it is conceived or reduced to practice:  

    (a) under a sponsored research agreement or other agreement with a third party;  

    (b) within the scope of faculty supervised graduate thesis or dissertation work;  

    (c) within the scope of the student’s employment with the University; or  

    (d) with the significant use of University resources. The “significant use of University resources” refers to the use of University facilities that are not commonly available to all students. 

    Any questions regarding the above should be directed to Andrea Dick at the Rutgers Innovation Ventures.