Glossary of Technology Transfer Terms
A copyright is a legal instrument that provides the owner the right to control certain aspects of how a creative work is used. For instance, it provides the owner the exclusive right to print, distribute, copy, perform and modify the work.
Intellectual property (IP)
Intellectual property refers to certain legal rights relating to creations of the mind -- artistic, functional and commercial. Owners of intellectual property have certain exclusive rights to a variety of intangible assets, such as musical, literary and artistic works; ideas, discoveries and inventions; and words, phrases, symbols and designs. The majority of intellectual property rights provide creators of original works an economic incentive to develop and share ideas through a form of temporary monopoly. Common forms of intellectual property include copyrights, trademarks, trade secrets and patents.
A patent is a set of exclusive rights granted by the government to an inventor for a fixed period of time in exchange for his disclosure of an invention. It provides the owner with the exclusive right to make, use, sell and import an invention. To qualify for patent protection, an invention must be useful, novel and non-obvious. Many different types of inventions can qualify for patent protection; in the United States, this includes, among many other things, isolated genes (native and mutant), isolated purified proteins, monoclonal antibodies, transgenic animals and plants, cell lines, diagnostic kits, methods of treatment and medical devices. Certain types of inventions are categorically unpatentable; for instance, laws of nature, abstract ideas, minerals and wild plants. Patent protection and the process one undertakes to achieve it are both complex and replete with unusual issues. The following are several examples of items that can surprise those who are new to the patent process:
- An "invention" occurs when two things happen: conception and reduction to practice. Reduction to practice can be actual (one actually builds a working version of the invention) or constructive (one is able to describe the invention in sufficient detail that someone else can readily make and use the invention).
- For purposes of patents, an inventor is one who contributes significantly to conception of the invention, even if he did not contribute significantly to its reduction to practice. Conversely, one who contributes solely to reducing an invention to practice, but not to its conception, is not an inventor. In academia, this often means that co-authors are not co-inventors.
- It is important to keep records of the events leading up to one’s invention (e.g., laboratory notebooks), as such materials can become important in establishing: (1) the true inventor(s) of an invention, (2) the dates that conception and/or reduction to practice took place, and (3) the diligence demonstrated by the inventors between the time of conception and reduction to practice.
- In the United States, an inventor may forfeit his right to patent protection if there is a public disclosure of the invention more than one (1) year prior to filing a patent application. In most of the rest of the world, there is no such grace period (an inventor loses the ability to secure patent protection if the invention is publicly disclosed at any time prior to filing a patent application).
- The life of a utility patent is generally 20 years from its filing date.
- While a patent application is pending, there is no ability to pursue legal action against an infringer.
- One can publish an invention and patent it -- patenting and publishing are not mutually exclusive. However, the decision to pursue patent protection is largely a business decision, while the decision to publish is a scientific one.
A trademark is a distinctive name, symbol, slogan or design that is associated with a company, its products or its services.
Many different items can qualify for trade secret protection, such as a formula, a process or even a customer list, so long as it provides a business with competitive advantage and the business takes appropriate steps to maintain the secrecy of the information.