The US Patent and Trademark Office (USPTO) describes Intellectual Property (IP) as imagination made real; the ownership of a dream, an idea, an improvement, an emotion that we can touch, see, hear, and feel. It is an asset just like a home, your car, or your bank account.
Intellectual property rights are the ways by which OTL protect innovations. In academic settings, patents, copyrights and trademarks are the three major forms of intellectual property rights used to protect an invention. Trade secret is another form of intellectual property; however, it is not commonly found in open academic environments.
A patent is a set of exclusionary rights which allows the patent holder to exclude others from making, using, offering for sale or selling the invention in the country the patent was issued for a certain amount of time in exchange for the public disclosure of the invention. Three types of patents are granted in the United States, which are:
- Utility patents – new and useful process, machine, article of manufacture or composition of matter, or any new and useful improvement thereof;
- Design patents – new, original and ornamental design for an article of manufacture;
- Plant patents – asexually reproducing plants, any distinct and new variety of plant.
For a patent to be granted, a patent application is examined by the patent office for the invention’s novelty, usefulness, and non-obviousness. Patents are the most frequently used IP protection tool at the OTL and we file primarily utility patent applications. Patent prosecution often takes 3-5 years and costs about $30,000 to $50,000 for the prosecution of one US patent application. Foreign patent applications are filed very selectively as it accumulates costs 10 times that of a US application.
In an academic environment, patents can help the investigator protect their early stage inventions and garner interest from the industry to further develop or use a technology. We advise our inventors to notify us of any potential public disclosure of new research results, which may include publications, oral presentations, and communications with third parties. Any of these public disclosures may jeopardize some patent rights. Please contact us and we will help you devise a strategy to best protect any potential IP. We are not here to prevent publications, in fact we understand how critical publications are for scientists and with advance notice we can work in the background to protect the IP without any interference.
A copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. For example, a published journal article is copyrighted material, and most publishers require the purchase or subscription to the journal in order to obtain a paper.
Copyright protection is not as common at City of Hope, however, from time to time, we do receive inventions that may require copyright protection, including software, where the source code is considered copyrighted material. In addition some software may benefit from further patent protection of its utility and functions.
Trademarks and Service Marks
According to the USPTO, the simplest description for a trademark is that it is a brand name. A trademark includes any word, name, symbol, device, or any combination, used or intended to be used, in commerce to distinguish the goods of one manufacturer or seller from goods of another manufacturer or seller, and to identify the source of the goods. A service mark is any word, name, symbol, device, or any combination, used or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.
For example, one of the most successful advertisements at City of Hope was the “Canswer” campaign, which in itself is a registered service mark with the USPTO. Trademarks and service marks do not protect or exclude others from selling a product but it prevents others from stealing the identity or brand a company has built upon a trademark or service mark.
Trade secrets consist of information and can include a formula, pattern, compilation, program, device, method, technique or process. To meet the most common definition of a trade secret, it must be used in business, and provides the holder of the trade secret to have an opportunity to obtain an economic advantage over competitors who do not know or use it. Trade secrets are very uncommon at academic institutions as it is part our mission to disseminate information. Sometimes we may receive trade secrets from a company that is interested in partnering. When that is the case, we have the obligation to maintain that trade secret.