Intellectual Property FAQ

 

What is intellectual property?

Intellectual property is intangible property such as ideas, expressions, formulas, or any other creation of the mind. Intellectual property, like tangible real or personal property, may be bought, sold, or leased. The major types of intellectual property include patents, copyrights, trademarks, and trade secrets.

What is a patent?

A patent is a right to exclude others from making, selling, or using the patented invention for a limited term (20 years after June 8, 1995). A patent is essentially a legally recognized monopoly that the government grants in exchange for a disclosure of how to make and use an invention There are three different types of patents: design patents, plant patents, and utility patents. Design patents protect non-functional, novel design for an article of manufacture. Plant patents protect new and distinct asexually reproducible plant varieties. Utility patents are the most common form of patent protection. Utility patents protect any new, useful process, machine, manufacture or composition of matter or any new or useful improvement thereof.

A patent is obtained by applying with the United States Patent and Trademark Office. The application is examined to determine whether the invention meets the requirements of usefulness, novelty and nonobviousness. The application must provide an enabling description of the invention so that one skilled in the relevant art could practice the invention. The "best mode" of practicing the invention must also be disclosed.

What is patentable?

U.S. patent law specifies that a patent can be obtained for any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof. To be patentable, inventions must satisfy three criteria: utility, novelty, and non-obviousness.

Utility requires that the invention have some beneficial use. If the invention is a machine, it must work. If the invention is a chemical, it must have a specific use. An invention has novelty if it is new. In other words, novelty is lost if the invention has been known or used by others in the U.S. or patented or published by others anywhere in the world before the date of the invention. A new use of an old invention can be novel.

Lastly, an invention must not be "obvious" to "one of ordinary skill in the art." Since these are subjective terms, there is frequent disagreement about the fulfillment of this requirement, particularly between the patent applicant (typically through a patent attorney) and the U.S. Patent and Trademark Office. This criterion must be assessed on a case-by-case basis and expert legal opinion is essential.

What is a copyright?

A copyright protects the "original works" of an author against copying, performance, display, or use as a underlying work. It protects the form of expression rather than the subject matter or idea. Materials within the copyright protection include books, articles, musical and artistic works, computer software, and class notes. For details, see the US Copyright Office's Frequently Asked Questions about Copyright.

What is the difference between a patent and a copyright?

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. The copyright protects the form of expression rather than the subject matter of the expression. A person could convey the same subject matter of the copyrighted work in a different form of expression without infringing the copyright. For example, copyrighted software protects the actual code, but a patented code would protect the function of the software, preventing others from developing their own similar code.

How much does it cost to obtain a patent?

A "ball park" estimate of total cost to obtain a U.S. patent ranges from $10,000 to $20,000, and sometimes even higher. Costs to obtain foreign patents may be five to ten times higher, depending on the number of countries where applications are filed.

Why patent an invention?

If intellectual property is handled properly, significant benefits are available to inventors and their research groups, the university, our national and local economies, and the public. This can be accomplished when each creator of intellectual property is aware of certain critical legal issues, procedures and policies.

Patents are often the best means of developing and disseminating a technology for the widest good. Unless a patent exists it is unlikely that industry will make investments in the process of developing and commercializing a product. Without patent protection many inventions will simply "sit on the shelf" benefiting no one. This is particularly true in technology areas that are highly regulated by governmental agencies such as the Food and Drug Administration (FDA), United States Department of Commerce (DOC) and the United States Department of Agriculture (USDA) since market entry costs are generally high.

The benefits of patenting inventions are so widely held that the Federal Government and most industrial sponsors of research now, in most cases, require that patents on inventions made with their funding be pursued whenever feasible. Where governmental or industrial funding is involved, there are usually reporting and patenting requirements that must be met. Failure to do so may jeopardize future funding, not just for the inventor, but for the entire University.

Universities have legal, policy and contractual requirements to pursue patent protection for inventions conceived using federal and corporate funds. The issues of national competitiveness and economic growth are more pragmatic reasons for pursuing patent protection. For inventors, there may be a financial reward to them personally and their research program if their invention achieves market success. Frequently, patents are licensed to a company in return for research support so the inventor can benefit even if the patents themselves ultimately do not lead to a commercial product. Finally, patents are perhaps the best means of managing the conflicts that are inherent in academic/industrial collaboration. They permit mitigation of the inventor's potential conflict of interest and help minimize UNH's and the inventor's liability exposure. Patents are an ideal means of constructing effective collaboration with industry and allow the ORPC to ensure that industry will pursue development of UNH's technology.

How are inventors rewarded?

UNH's Intellectual Property Policy distributes net income from royalties accordingly:

30% goes to the Inventor(s) 
30% goes to the College/Department 
30% goes to the Office of the Vice President for Research and Public Service 
10% goes to the Office for Research Partnerships and Commercialization

What is the first step in starting the patenting process?

Submitting a disclosure of your invention to ORPC is the first formal step in obtaining proper intellectual property protection. Inventors are strongly encouraged to submit invention disclosures early in their invention development process to avoid any potential problems. Inventions conceived or first reduced to practice by faculty or staff in furtherance of university research should be promptly disclosed in writing to the ORPC. See Flow Chart .

Priority in the United States is given to the first to invent. As a result, it is important to document the relevant dates of the invention. In the event of a dispute between inventors, documentary evidence will help establish the first to invent. Thus, invention disclosures and well-maintained laboratory notebooks should be utilized. In most foreign countries, the first to file for patent protection gets priority, and the invention disclosure is usually the first step in this process .

How do publications affect patentability?

Inventors must be aware of certain statutory bars to patenting that are activated by publishing a description of the invention. 35 U.S.C. 102(b) describes bars to patentability. Publication can occur in a variety of forms: an article, thesis, electronic message, brochure, or powerpoint presentation at a conference can all constitute publications. Once a publication occurs, U.S. patent protection is barred if a patent application is not filed upon the expiration of one year following publication. For foreign patents, publication may constitute an automatic bar to patentability.

The University of New Hampshire strongly discourages, and in certain circumstances prohibits, agreements that withhold or unduly delay publication of research results. However, the ORPC and the inventor, if he or she chooses, can cooperate through appropriate timing of disclosure, patent filing and publication to preserve commercial value and still meet any sponsor obligations without hindering dissemination of research results.

How is my technology commercialized?

A primary goal of ORPC's licensing activity is to assure that technology will be brought to the marketplace to benefit the public. Thus, all ORPC licensees are required to diligently develop UNH's technology. UNH technology cannot be placed "on the shelf." ORPC grants two types of licenses, exclusive and non-exclusive. Exclusive licenses typically require an up-front, non-refundable license fee, running royalties (typically based on a percentage of sales) and minimum annual royalty payments. Terms of the license are negotiated by ORPC and the licensee and include a variety of factors. Non-exclusive licenses allow for licensing to multiple parties and can be less demanding on the licensee.

Commercialization may also occur in the form of entrepreneurship. A company formed in order to commercialize UNH technology usually means the inventor or a third party secures permission in the form of a license to use the technology. A company is developed with the help of the UNH, economic development organizations, and venture capital.

How do sponsored research agreements affect intellectual property rights?

Sponsorship of research generally comes with some "strings attached" to any intellectual property that may result. Exceptions are gifts and unrestricted grants. Inventors should be aware of the intellectual property clauses of their research contracts and of the sources of their funding that produced the invention.

Any research contract between UNH and a corporate sponsor has an intellectual property clause that stipulates the rights, if any, the sponsor will have in any resulting inventions. The rights licensed to a sponsor can range from none to rights so significant that it essentially precludes commercial use by anyone besides the sponsor. Inventors should consult with ORPC as well as the staff of the Office of Sponsored Research to assess these situations on a case-by-case basis.