Intellectual Property (ip) 101

"Intellectual Property (IP) 101"an invention for up to one year. Within one year
IP includes patents, trademarks, and copyrights. Aof the filing date of the provisional application, it
patent provides an exclusive right to an invention.must be followed by filing a more formal US
A trademark provides an exclusive right to anapplication and any foreign applications in foreign
indication of source of a product. A copyrightcountries in which protection is sought. If the
provides an exclusive right to an original work. Aformal applications are not filed, the benefit of the
service mark provides an exclusive right to aearly filing date of the provisional application is lost.
service or origin of a service.Who Owns Your Invention?
United States copyrights accrue automatically, butWho owns your invention? Who owns your
a work must be registered with the United Statesemployee’s invention? Invention ownership
Copyright Office to perfect the federal copyright.disputes occur all too frequently. However,
Trademark rights can also accrue without ainvention ownership disputes are easily avoidable
federal registration, but those rights are weaker,with the proper foresight and knowledge.
and a federal registration is preferred in almost allOur legal system presumes that the inventor is
situations.the owner of the exclusive rights in his or her
United States patents and trademarks areinvention. How then, does someone other than
obtained by filing an application in the Unitedthe inventor obtain the rights to the
States Patent and Trademark Office (USPTO). Aninventor’s invention? The answer to that
examiner in the USPTO examines the applicationquestion is by an assignment. The assignment can
for compliance with all statutory requirements.be an express assignment, which is typically a
The USPTO issues complying applications andwritten document evidencing a contract between
rejects non-complying applications. Often, athe inventor and the assignee in which the
non-complying application can be amended,inventor sells the rights to the invention to the
thereby placing it in condition for allowance. It isassignee. However, that type of assignment is not
helpful to discuss possible amendments with thewhat leads to ownership disputes. Ownership
examiner in charge of the application prior to filingdisputes occur when there is no express
an amendment. Discussions with the examiner onassignment and both the inventor and his or her
how best to amend an application increase theemployer think that they own the invention. This
chance that the amendment will result inis because the presumption that the inventor
allowance.owns the invention is incorrect in certain situations,
Trademarks and service marks identify youreven without an express assignment.
business to the purchaser of your product orAn employer of one who is "hired to invent" owns
service. Your mark allows a consumer to comethe rights to the inventor’s inventions. The
back to you if he or she likes what you provide.Supreme Court came to that conclusion in the
If you have a trademark right, using yourStandard Parts Co. v. Peck case in 1924.
trademark prevents someone else from using aHowever, that is the extreme case, since the
similar mark that is likely to confuse the public intovast majority of employees are not employed to
buying goods from them instead of you.invent. What about an employee employed to
Patents provide a limited monopoly on yourdesign or construct, such as an engineer? An
company’s product or process. Monopolyemployee employed in a field of endeavor in
translates into high profit margins due to exclusionorder to design or construct is not equivalent to
of competition. Patents can be obtained on anyan employee employed for the purpose of
invention that complies with the statutoryinvention. That was the conclusion reached by the
requirements, which are that the invention isSupreme Court in U.S. v. Dubilier Condenser Corp.
useful, novel, and non-obvious. The prevailing casein 1933. However, that conclusion leaves open the
law allows patents on just about anything, forquestion of who owns the invention made by the
example, it allows patents on computerengineer. The outcome in each ownership case
implemented methods of calculating useful results,depends on the relationship between the
and on computer implemented methods of doingemployee, the employer, and the circumstances
business.of the invention.
Obtaining United States patents and trademarkEven if it turns out that the employee owns his
rights is expensive, primarily due to the amountor her invention, if the employee used the
of high hourly rate attorney time required toemployer’s materials or equipment during
prepare an application and guide it through theworking hours to make the invention, the law
USPTO. For patents, part of that cost can begrants the employer a nonexclusive license to the
deferred by initially filing a relatively simpleinvention. That has been the law ever since the
provisional patent application. The filing date of aSupreme Court Lane & Bodley Co. v. Locke case
provisional application is prima facie (evidencein 1893.
legally sufficient to establish a fact unlessIt should be apparent that the best way to avoid
subsequently disproved by additional evidence)an ownership dispute is to reduce to a written
proof of the date of invention. A provisionalcontract between the employee and the
patent application protects for one year the rightemployer who owns the rights to any inventions
to pursue patent protection on the novel aspectsmade by the employee, and that agreement
of a product or process at a very low cost.should be defined as early as possible in the
However, provisional applications do not issue intoemployee employer relationship.
patents. They simply preserve the filing date for