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Now you’ve got a product… what next? Next steps in IPWhat are options for your next step?!Commercialize it yourself!License IP to entity!Do nothing!Further research and development alone!Further research and development with entity!Things you “own”!Idea and implemention for how to solve a problem!“Know how” for your product!Name for product!Logo design!Slide presentations about product!Brochure/handouts about product!Possible Kinds of IP protection!Patents and trade secrets!Idea and implemention for how to solve a problem!“know how” for your product!Trademarks!Name for product!Logo design!Copyrights!Logo design!Slide presentations about product!Brochure/handouts about product!To obtain IP protection!Patents!File patent application with U.S. Patent and Trademark Office (USPTO) and get patent application granted.!Trade Secret!Keep information secret with guidelines for preserving secrecy.!Trademarks!File trademark application with USPTO and get application granted.!Copyrights!Embody information in a tangible form (e.g., brochure, slides, book, video, music, logo).!Copyright registration also available.!IP protection is generally on a per-country basis!Benefits of IP ownership!Exclude others from use of the IP!License use of the IP to others!Prevent importation of products that use the IP!Get damages (and sometimes attorneys fees) from others that use the IP without a license!Do you need a patent?!Alternatives!trade secrets!Good for things that can be kept secret for longer than the typical life of a patent (~17 yrs)!first to market, market maker with no patent protection!Good for goods with a short lifespan ! (less than the typical time to get a patent, currently about 3-5yrs) that are easy to copy!Should you pursue a patent?!Considerations!How strong are the grounds for IP protection?!How easy is it to copy the IP?!What is the lifespan of the IP?!Who are your competitors?!What is the time to market?!What is your budget for obtaining protection?!What is your budget for enforcing IP rights?!Ultimately, this is a business decision.!What kind of patents are available?!Utility Patents (35 U.S.C. 101)!• process: method; series of steps for carrying out a task!• machine: apparatus; generally has moving parts!• composition of matter: chemical composition; mixture of substances!• manufacture: human-made objects without moving parts!• improvements of the items in the above four categories!Design Patents (35 U.S.C. 175)!• ornamental design for an article of manufacture!Plant Patents (35 U.S.C. 161)!• asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state!What can be patented?!Statutory Subject Matter for Utility Patents (35 U.S.C. 101)!• process: method; series of steps for carrying out a task!• machine: apparatus; generally has moving parts!• composition of matter: chemical composition; mixture of substances!• manufacture: human-made objects without moving parts!• improvements of the items in the above four categories!Judicial Exceptions!• laws of nature!• natural phenomena!• abstract ideas!• unapplied mathematical algorithms!• product of nature!What are the requirements for patentability?"Statutory requirements!Invention, as described in the claims, must be! Novel (35 U.S.C. 102)!• Not novel if a single prior art reference discloses every element of the invention, arranged as described in the claim.! Nonobvious (35 U.S.C. 103)!• Obvious if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.!• Obviousness can be established by combining multiple prior art references.! Useful (35 U.S.C. 101)!• Not useful if there is not a specific, substantial, and credible utility.!• Not useful if it does not work (e.g., contravenes generally accepted scientific principles)!By when must the patent application be filed?"Statutory bars!Goals of patent system:!• promote prompt and widespread disclosure of new inventions to the public.!• limit period of exclusivity to the statutory patent term.!1-year grace period*: the following events may not occur more than a year before the application for the patent is filed !• filing for a patent in a foreign country!• describing the invention in a printed publication (e.g., journal article)!• public use of the invention (e.g., public disclosure)!• any person has use of the invention without limitation or restriction!• offering the invention for sale!! !35 U.S.C. 102!* in the U.S. Most foreign patent systems do not have a 1-year grace period.!Types of U.S. utility patent applications!Provisional patent application (PPA)!• Fewer requirement for filing than non-provisional patent application!• Not published!• Not examined!Non-provisional patent application!• “Regular” patent application!• Usually published within 18 months!• May lead to grant of patent after examination.!Filing either type of application satisfies the statutory bars.!U.S. Provisional Patent Application!What is it?!A provisional application for a patent in the U.S.!Benefits!Satisfies statutory deadlines for filing a patent application in the U.S. (e.g., one year from public disclosure)!Filing date establishes a date of invention!Fewer requirements than a nonprovisional patent application (e.g., no oath or claims needed)!Less expensive than a nonprovisional patent application!Allows one to mark a product “patent pending”!Preserves the option to file a nonprovisional patent application for a year (giving you time to further develop the idea and find investors, capital for the patent application process)!U.S. Provisional Patent Application!What is it?!A provisional application for a patent in the U.S.!Benefits!Satisfies statutory deadlines for filing a patent application in the U.S. (e.g., one year from public disclosure)!Filing date establishes a date of invention!Fewer requirements than a nonprovisional patent application (e.g., no oath or claims needed)!Less expensive than a nonprovisional patent


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MIT 2 009 - Study References

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