Background on Intellectual Property

How do patents and copyrights protect ideas?

 

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ost nations in the world provide a formal system of protection for ideas, be they useful ideas or creative ones. These laws grant to owners exclusive rights to an idea – such as to use an invention or copy a creative work. Those who own the idea can use these rights to deny or limit others, creating a limited monopoly. In the U.S., ownership over these ideas is known as "intellectual property" (IP).

Managing the protection and commercialization of IP is a large part of the TTO’s role at the university. Making use of intellectual property produced by campus resources is further complicated by the unique characteristics of university research.

Want to learn more about what the TTO does with San Diego State University intellectual property? See TTO Services and the Path to Commercialization.

Disclose an Invention or Creative Work Here

 Patents

A patent is an exclusive right to practice an invention. An invention is a potentially protectable new (or novel), useful, and non-obvious scientific discovery. Patents are the most well-known intellectual property (IP) used in university technology transfer. Patents provide the owner the right to exclude others from practicing an invention for 20 years in exchange for the owner providing a written enabling disclosure of the claimed invention.

An interesting aspect of intellectual property is that – unlike tangible, physical property – an idea is only valuable if there is a governing body to enforce those rights. The "bargain" is that in exchange for sharing how an invention works and advancing science, governments will grant a limited monopoly to the owners of the invention. Patents are an integral part of the U.S. economy, and important enough to American ideals that they are provided in Article 1 of the U.S. Constitution.

Many of the laws related to patenting inventions are in Title 35 of the United States Code. Section 101 provides that inventors can only obtain patents for processes, machines, manufactures, compositions of matter, and their improvements. Further sections require that patentable inventions be new (or novel), useful, and non-obvious. It is important to note that patents protect only the functional aspects of inventions. Creative ideas are protected by other forms of intellectual property, such as copyrights.
 

Patents are obtained by a process called “patent prosecution,” in which the invention is disclosed to the protecting body (such as the government), and the invention is rejected, accepted, or argued about between the government the party seeking the patent. In the United States, the government rejects an invention in an “office action,” after which the inventors or owners may abandon or amend the claims of the invention. In the United States, a vast majority of patent applications are rejected at least once for being not new or obvious.

It is important to note that one does not have an enforceable patent until the claims are granted by the government. Patent applications are merely that – applications for full-blown enforceable patents. However, owners may still license pending patents or recover damages for infringement once a patent is granted. 

Patents can be very expensive, because of both the filing fees for each country and the time spent by patent attorneys drafting patent claims and responding to rejections from the patent office. The cost of patents varies greatly based on the number of rejections, the countries in which applications are filed, the amount of prior art in the field, the subject matter or technical area, and the expertise required to prosecute them.

Because patents are so expensive, the TTO cannot prosecute every potential patent to issuance.

A provisional patent application notifies the government of a potential invention, and provides a filing date for an invention. They are temporary, unexamined, and unpublished. In the United States, a provisional patent application lasts 12 months, at which point a non-provisional application (either a U.S. non-provisional or Patent Cooperation Treaty application) must be filed.

Provisional patent applications may be filed relatively affordably, while non-provisional applications can be extremely expensive.
Because of the prohibitive costs of non-provisional applications, the TTO may file a provisional patent application but allow it to lapse (expire) at the end of the year unless there is demonstrated commercial potential. 

The TTO directs and finances the attainment of patent protection of University-owned inventions. The TTO can grant a license (permission) to others to use University patents and pending patents. 

Most licensees typically look for patents when deciding whether to license technology, as patents are well-defined property rights that allow potential users to understand and evaluate a technology. The TTO negotiates and drafts all licenses for most University-owned IP.

Contact the TTO if you are a co-inventor on University IP interested in commercializing IP, or a potential licensee interested in using University IP.

Recently, the America Invents Act (AIA) changed patent law in the United States to a “first inventor to file” country. So, even if you are the first to make a useful scientific discovery, someone else can invent and file an application first to obtain the patent.

The AIA redefined how patent case law will shape the American economy and technology. Unfortunately, how these sweeping changes impact patent prosecution, licensing, and infringement are not yet concrete and will not be for years to come, as patent law traditionally moves slowly.

Yes, software is potentially patentable in the United States as a process. However, since the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International, it has become much more challenging to patent software.

Software is also potentially protectable by copyrights, and could be commercialized by way of a copyright license.

The TTO can help inventors obtain patent protection for University intellectual property. The TTO directs and finances the attainment of patent protection of University-owned inventions. The TTO provides other services, such as prior art searches, patentability analyses, market assessments, and commercialization planning.

Also, it is important to let the TTO know of an invention before public disclosure, as a public disclosure can bar patent rights in most countries.

SDSU faculty are required to disclose inventions produced with institutional support or in the area of their employment by the terms of their employment, Faculty Senate policy, the terms of receiving funding from the Research Foundation, federal regulations, and the terms of federal agency grants.

The Research Foundation shares royalties with University inventors according to University Royalty Sharing Guidelines, which  provide for a 50-50 split of net royalties between inventors and University entities.

The general rule is that the Research Foundation owns inventions produced with “significant institutional support.”  Ownership of inventions disclosed to the TTO is determined by the University Copyrights & Patents Committee, a group of faculty and staff peers. The UCPC usually meets on the first Tuesday of every month.

The TTO does not own or manage inventions created by students unless they are related to faculty research or produced with significant institutional support.

Disclose inventions to the TTO here.

Intellectual Property produced through sponsored research administered by the Foundation is assigned to the Foundation to comply with federal law and adhere to best practices. Read this document for a detailed explanation as to why assignment of IP to the Foundation is necessary.

Inventors should disclose an invention to the TTO when an invention is created through University research or using institutional resources. 

Faculty inventors should disclose a potentially patentable invention to the TTO as soon as possible before an imminent public disclosure, such as a publication or presentation at a conference. This is necessary because a public disclosure acts as a bar to patenting in most countries, and triggers a one-year window to file a patent application in the United States.

The TTO can, if necessary, evaluate patentability and whether filing a patent is necessary in advance of a public disclosure. The TTO ordinarily requests 30 days in advance of a public disclosure to properly evaluate and attend to filing a patent application for an invention. Contact the TTO with questions regarding patentability and public disclosures of University inventions. Disclose inventions here.

 Copyrights

A copyright is a form of intellectual property that protects uses of creative ideas, in particular reproducing (or “copying”) the expression. Not everything is copyrightable: but virtually any type of creative expression can be protected as long as it has “a modicum of originality.”

There is no exhaustive list of what can be protected by copyrights, but examples include literary works (books, novels, screenplays, manuscripts, computer code), musical works, dramatic works, pictorial works, sculptural works, and even other expression such as architectural works and fashion designs. The key to copyright law is creative expression.

Any creative expression is afforded copyright protection as soon as it is first rendered in a tangible medium. For example, a blog post is instantly copyright-protected upon posting, and elements of a novel are copyright-protected once the author puts pen to paper.

Although everything copyrightable is protected upon publication, claimed protection can be overcome upon a showing that the idea is unoriginal. 

Authors and owners may register a copyright, although there are few reasons to do so. Copyright registration does not provide sufficient benefits to justify registration of all University copyrights, though it may be warranted in some circumstances.

The TTO handles protection for intellectual property produced through research and significant institutional support, including the management of copyrights. The TTO can grant a license (permission) to others to use University copyrights and copyright-protected material. The TTO negotiates and drafts licenses for most University-owned copyrights.

Contact the TTO if you are a co-author on University IP interested in commercializing IP, or a potential licensee interested in using University IP.

One of the major advantages of copyrights are that protection is automatic upon publication. For this reason, a public disclosure is not a bar to rights like it is for patentable inventions.

Maintaining protection of copyrighted work is also much less expensive than patent protection, since registration is not required. Finally, copyrights last a very long time: for the length of the last surviving author plus 70 years.

The TTO can help authors manage copyrights for University intellectual property. The TTO provides important services related to copyrights, such as market assessments and commercialization planning. Many ideas are protectable by patent rights and copyrights, and the TTO can evaluate the patentability of creations that may be protectable by both forms of intellectual property.

SDSU faculty are required to disclose copyrightable works produced with institutional support or in the area of their employment by the terms of their employment, Faculty Senate policy, the terms of receiving funding from the Research Foundation, federal regulations, or the terms of federal agency grants. The Research Foundation shares royalties with University inventors according to University Royalty Sharing Guidelines, which currently provide for a 50-50 split of net royalties between inventors and University institutions.

Disclose creative works to the TTO here.

Intellectual Property produced through sponsored research administered by the Foundation is assigned to the Foundation to comply with federal law and adhere to best practices. Read this document for a detailed explanation as to why assignment of IP to the Foundation is necessary.

No. The general rule of thumb is that the Research Foundation owns creative works produced with “significant institutional support.” There are also significant carve-outs for some “traditional scholarly works,” which do not need to be disclosed to the TTO.

Ownership of inventions disclosed to the TTO is determined by the University Copyrights & Patents Committee, a group of faculty and staff peers. The UCPC usually meets on the first Tuesday of every month.

Disclose creative works here. Contact the TTO if you have questions about ownership or whether to disclose a creative work. 

The TTO does not own or assist inventions created by students unless they are related to faculty research or produced with significant institutional support.

While some software may be patentable, software can also be protected by copyright law. Copyright law protects the creative expression in a program or the body of code. The actual code is an idea fixed in a tangible medium. New versions or add-ons to that software are generally considered derivatives of the original.

Some software might also be patentable because of what it does or what it produces, which means software can have multiple types of protection. But patenting software has become very challenging, especially in light of the Supreme Court’s decision in Alice Corp. v. CLS Bank International. As such, copyright protection for code is often sufficient or prudent given the expense of pursuing a patent that may never issue.

The TTO can also help faculty with open source licenses of University-owned software. Contact the TTO with questions on copyright protection of software and open source licenses.

 Trademarks

A trademark is a form of intellectual property identifying the source of a product or service to consumers. A trademark allows the owner to prevent others from making use of that mark. Trademarks are important because they protect consumers by allowing the consumer to trust the source of an item, and not be fooled by phony imposter goods or services.

Probably the most famous existing university license is for a trademark — Gatorade is primarily a trademark license from the University of Florida. Trademarks are valuable for a good reason: they may never expire. As long as a mark continues to be used in the stream of commerce and the owner pays the requisite fees, a mark can continue in perpetuity.

For a university, technology transfer for trademarks has two distinct avenues. First, the university might have lines of products around the university’s name and identity. The TTO is not the responsible party for SDSU’s Aztec identity and related marks. For questions about the SDSU or Aztec identity, please contact Aztec Shops.

Second, the University can trade on faculty and departments within SDSU that develop projects that build recognition over time. As these projects develop and create notoriety, brand loyalty, and a discernible reputation in communities, trademarks become valuable to help define the products and services related to these SDSU projects.

A successful example of this avenue to trademark commercialization is SDSU’s eCHECKUP TO GO trademark — it identifies the University’s product so that users can be certain that they are receiving the reputable alcohol awareness and other intervention prevention programs developed at SDSU by its faculty.

 Trade Secrets

A trade secret is a form of intellectual property that protects information with economic value because of its concealment if it is kept secret by reasonable security measures. In order to be a trade secret, the information has to be safeguarded as confidential in the normal course of business. The secret formula for the world’s largest soft drink, your grandmother’s cookie recipe, and a customer list for an existing company are all potential trade secrets.

There are a variety of ways a trade secret owner can maintain protection of a trade secret. Two common mechanisms to protect trade secret are Confidential Disclosure Agreements (CDAs) otherwise known as Non-Disclosure Agreements (NDAs), or employment agreements that require employees to keep certain information secret. 

The key is that the trade secret owner take steps to keep the information secret, and that they not publicly disclose the information (unlike patents). 

The advantages of trade secrets are that they can be kept concealed in perpetuity, and it is illegal in most jurisdictions to circumvent the security measures protecting the information.

The disadvantages of trade secrets include that there is nothing in the law preventing reverse engineering of an innovation or recipe. For example, if a company sells the desired soft drink, a competitor can buy it, analyze it, and replicate what it believes is the exact same product— and the owner of the trade secret will have no claim of impropriety.

This is why it is often much more attractive to file for patent protection to protect an invention, as opposed to relying on trade secret protection. A product can never be a trade secret and simultaneously be patented; one either keeps the invention a secret or seeks a patent and provides a written enabling description that is disclosed to the public in exchange for legal protection.

Trade secrets also require efforts to maintain the secrecy of the protected information. It is often impractical to protect trade secrets at public institutions given the desire to publicize information and the difficulties in concealing some information.

Given the difficulties, requirements, and missions of public institutions, commercializing trade secrets is often impractical at state universities.

However, the University may protect trade secrets of commercial partners under narrow circumstances. One of the key tools for trade secret protection is the confidential disclosure agreement (also known as a confidentiality agreement or non-disclosure agreement). These agreements protect secrets revealed to outsiders so that the company can retain the value of their secrets.

The TTO manages and signs CDAs and NDAs related to research on behalf of the Foundation. Contact the TTO for help with a CDA to protect either your own information or protect another party’s in relation to University research or commercial discussions.

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