Tech Transfer - University of Michigan

Improving Our Quality of Life

Patents and Other Legal Protection

Patent Issues

What is “intellectual property”?

Intellectual property means slightly different things to different people, but generally it is thought of as material that may be protected under the patent, trademark and/or copyright laws.

What is a patent?

In the U.S., a patent gives the holder the right to exclude others from making, using, selling, offering to sell, and importing any patented invention. Thus, as a right to exclude, a patent does not necessarily provide the holder any affirmative right to practice a technology. Instead, it provides the right to exclude others from practicing it. Patent claims are the legal definition of an inventor's protectable invention.

What type of subject matter can be patented?

Patentable subject matter includes processes, machines, compositions of matter, articles, some computer programs, and methods (including methods of making compositions, methods of making articles, and in some cases methods of performing business). For more information, see www.uspto.gov/web/offices/pac/doc/general/what.htm.

Can a naturally occurring substance be patented?

A natural substance that has never before been isolated or known may be patentable in some instances, but only in its isolated form (since the isolated form had never been known before). A variation of a naturally occurring substance may be patentable if an inventor is able to demonstrate substantial advantages of using the variant.

What is the United States Patent and Trademark Office (PTO)?

The PTO is the federal agency, organized under the Department of Commerce, that administers patents on behalf of the U.S. government. The PTO employs patent examiners skilled in all technical fields in order to appraise patent applications. The PTO also issues federal trademark registrations.

What is the definition of an inventor on a patent and who makes that determination?

Under U.S. law, an inventor is a person who takes part in the conception of the ideas in the patent claims of a patent application. Thus, inventorship of a patent application may change as the patent claims are changed during prosecution of the application. An employer or person who furnishes money to build or practice an invention is not an inventor. Inventorship may require an intricate legal determination by the patent attorney prosecuting the application.

What is the patenting process?

Patent applications are generally drafted by a patent attorney or a patent agent (a non-attorney with a science education licensed to practice by the PTO). UM Tech Transfer will engage a patent law firm approved by the University's Office of the General Counsel to prosecute an application covering your invention in the U.S. Patent and Trademark Office as well as the associated foreign offices if foreign protection is available. Throughout the drafting process you should expect to have several telephone conversations or meetings with the attorney and several exchanges of documents. The patent attorney generally will ask you to review the application before it is filed and will also ask you questions about inventorship of the application claims. At the time an application is filed, the patent attorney will ask the inventor(s) to sign an Inventor's Declaration and an Assignment, which evidences the inventor's duty to assign the patent to the University.

In about one to two years, depending on the technology area, the patent attorney will receive written notice from the PTO as to whether the application and its claims have been accepted in the form as filed. More often than not, the PTO rejects the application because either certain formalities need to be cleared up, or the claims are not patentable over the “prior art” (anything that workers in the field have made or publicly disclosed in the past). The letter sent by the PTO is referred to as an Office Action or Official Action. If the application is rejected, the patent attorney must file a written response, usually within three to six months. Generally the attorney may amend the claims and/or point out why the PTO's position is incorrect. This procedure is referred to as patent prosecution. Often it will take at least two PTO Official Actions and two responses by the patent attorney, and sometimes more, before the application is resolved. The resolution can take the form of a PTO notice that the application is allowable; in other words, the PTO agrees to issue a patent. During this process, input from the inventor(s) is often needed to confirm the patent attorney's understanding of the technical aspects of the invention and/or the prior art cited against the application. The PTO holds patent applications confidential until published by the PTO, 18 months after initial filing.

What is “prior art”?

Prior art is defined by statute (35. U.S.C. 102). In general, prior art is anything in the relevant field that was publicly available before a given patent application is filed. Prior art may include printed publications, conference handouts (and sometimes even presentations within a university), books, newspaper articles - regardless of where the material was published and in what language it was published. Prior art may also include orally presented material, such as discussions at conferences, disclosures to competitors, certain disclosures to colleagues, online publication of meeting abstracts, and other public statements.

Thus, an inventor may under certain circumstances create prior art against his or hers invention (thereby jeopardizing patent rights) by publicly disclosing an invention prior to the filing of a patent application.

How Might Publishing or Otherwise Making an Invention Public Affect Patentability?

In most countries, any public disclosure, verbal or in print, can immediately eliminate the potential to file a patent application. In some countries, simply telling one person not under an obligation of confidentiality might impact the right to seek patent protection, so preferably UM inventors will contact the Office of Tech Transfer before sharing inventions with others.

What is the "Grace Period"?

In the United States, we have a so-called "grace period" for filing patent applications after an inventor makes a public disclosure of, or relating to, her invention. Specifically, U.S. law states that an inventor's own public disclosure is not prior art against her application, as long as the application is filed within one year of the disclosure. However, even though we have this grace period, if an invention is published before filing an application there is a risk that a third party could review the publication and be led to make other public disclosures related to the publication - and such secondary publications will be prior art against the patent applicant. Because this grace period is the subject of new statutory language, the law will further develop in the future.

For example, assume (a) Researcher A publishes on an invention on December 29, 2012 (e.g., in an on-line journal), (b) there is no further publication relating to the idea, and (c) Researcher A files a related patent application on December 1, 2013. Researcher A's December 2012 publication is not prior art as to his 2013 patent application, and while the application will have to distinguish over any earlier publications, there is nothing in this scenario that is on its face is problematic. The grace period protects A from her earlier publication in the United States (though foreign rights have been lost).

In another example, (a) Researcher B publishes on an invention on February 20, 2013 in an on-line journal, (b) Researcher C reads the journal and on March 20, 2013 makes a posting on line with an idea that came to her mind when reading B's publication, and (c) Researcher B files a related patent application on June 20, 2013. Researcher C's posting generally will be prior art to the B's patent application, and could cause problems for the application. The grace period protects A from her earlier publication, but generally provides no protection as to B's publication.

In a third example, (a) Researcher A publishes on an invention on December 29, 2012, (b) Researcher A files a related patent application on December 28, 2013, but (c) in the meantime on November 1, 2013 Researcher D (who has never seen A's publication or invention) files a patent application for the same invention. Researcher A's December 2012 publication is not prior art as to her 2013 patent application, but Researcher D's application is prior art and (assuming it is for the same invention) prevents Researcher A from receiving a patent.

Is there such a thing as a provisional patent?

No. However, there is a provisional patent application, which is described below.

What is the difference between a provisional patent application and a regular (or "nonprovisional") patent application?

In certain circumstances, U.S. provisional patent applications can provide a tool for preserving patent rights while temporarily reducing costs. This occurs because the application is not examined during the year in which it is pending and claims are not required. A regular U.S. application (sometimes referred to as a "utility" or "nonprovisional" application) and related foreign applications must be filed within one year of the provisional patent application in order to receive its early filing date. However, an applicant only receives the benefit of the earlier filing date for material that is described and enabled in the provisional application. As a result, the patent attorney may need your assistance when an application is filed as a provisional.

How may I review patent literature?

Patents may be searched at no cost on the website of the United States Patent and Trademark Office (www.uspto.gov, more particularly www.uspto.gov/patft/index.html - and see http://www.uspto.gov/main/profiles/acadres.htm, and http://www.uspto.gov/main/faq/). On that web page, searching “Issued Patents” will uncover patents issued (i.e., approved) in the United States since 1976. “Patent applications” are unissued (i.e., unapproved) patents, and are generally published 18 months after they are filed. Since applications have only been published since 2001, searching “Patent Applications” will uncover a different (and limited number) of documents. Searching may also be performed at www.wipo.int/ipdl/en/search/pct/search-adv.jsp.

How many patent applications are filed each year?

More than 500,000 U.S. patent applications are filed each year by inventors and companies from all over the world. They are handled by a corps of about 7,000 patent examiners. The U.S. government has issued more than 8,300,000 patents. (The current patent numbering system began in 1836.) More than 240,000 patents are issued each year in the United States.

What's different about foreign patent protection?

Foreign patent protection is subject to the laws of each individual country, although in a general sense the process works much the same as it does in the United States. In foreign countries, however, an inventor will lose any patent rights if he or she publicly discloses the invention prior to filing the patent application. In contrast, the United States has a one-year grace period.

Is there such a thing as an international patent?

Although an international patent does not exist, an international agreement known as the Patent Cooperation Treaty (PCT) provides a streamlined filing procedure for essentially all industrialized nations. For U.S. applicants, a PCT application is generally filed one year after the corresponding U.S. application (either provisional or regular) has been submitted. Later, the PCT application must be filed in the national patent office of any country in which the applicant wishes to seek patent protection, generally within 30 months of the earliest claimed filing date.

PCT provides two advantages. First, it delays the need to file costly foreign applications until the 30-month date, often after an applicant has the opportunity to further develop, evaluate and/or market the invention for licensing. Second, the international preliminary examination can allow an applicant to simplify the patent prosecution process by having a single examiner speak to the patentability of the claims which can save significant costs in prosecuting foreign patent applications.

An important international treaty called the Paris Convention permits a patent application filed in a second country (or a PCT application) to claim the benefit of the filing date of an application filed in a first country. However, pursuant to this treaty, these so-called ”convention applications“ must be filed in foreign countries (or as a PCT) within one year of the first filing date of the U.S. application (either provisional or regular).

What is the timeline of the patenting process and resulting protection?

Currently, the average U.S. utility patent application is pending for about two to three years, though inventors in the biotech and computer fields should plan on a longer waiting period. Once a patent is issued, it is enforceable for 20 years from the initial filing of the application that resulted in the patent, assuming that PTO-mandated maintenance fees are paid.

Why does U-M protect some intellectual property through patenting?

Patent protection is often a requirement of a potential commercialization partner (licensee) because it can protect the commercial partner's often sizable investment required to bring the technology to market. Due to their expense, patent applications in all countries are not possible for all U-M intellectual property. We carefully review the commercial potential for an invention before investing in the patent process. However, because the need for commencing a patent filing usually precedes finding a licensee, we look for creative and cost-effective ways to seek early protections for as many promising inventions as possible.

Who decides what gets protected?

U-M Tech Transfer and the inventor(s) consider relevant factors in making recommendations about filing patent applications. We utilize subject experts to aid our assessments and occasionally perform a patentability analysis, always sharing these results with our inventors to guide our decision.

What does it cost to file for and obtain a patent?

Filing a U.S. patent application may cost between $7,000 and $13,000. To obtain an issued patent may require an additional $10,000 to $15,000 for patent prosecution. Filing and obtaining issued patents in other countries may cost $20,000 or more per country. Once a patent is issued in the U.S or in foreign countries, certain maintenance fees are required to keep the patent alive.

What if I created the invention with someone from another institution or company?

If you created the invention under a contract or consulting agreement with a company, the tech transfer licensing specialist will need to review that contract to determine ownership and other rights associated with the contract and to determine the appropriate next steps. Should the technology be jointly owned with another university, the licensing specialist will work with the other university under “inter-institutional” agreements that provide for one of the institutions to take the lead in protecting and licensing the invention, sharing of expenses associated with the patenting process and allocating any licensing revenues.

How are patent rights treated in my sponsored research?

UM retains ownership of the patent rights resulting from sponsored research. Sponsored research projects are handled by OVPR's (Office of the Vice-President for Research) Office of Research and Sponsored Programs (ORSP) (http://orsp.umich.edu). Often, sponsored research contracts provide the sponsor an option for a limited time to negotiate a license to any patent rights developed as the result of the research. If you have questions about sponsored research, please see the website above or contact the ORSP Project Representative responsible for the sponsor (described at http://orsp.umich.edu/contacts/orsp/staff.html). For more information, you may call 734-764-5500.

What do the terms “patent pending,” “patent pend.” and “patent applied for” mean?

These are terms placed on products or product packaging to inform the public that the manufacturer or seller has applied for patent protection. Once a patent has issued, a patent holder is supposed to place the patent number on products covered by the patent (and remove the “patent pending” markings). This is referred to as patent marking. A manufacturer or seller is not permitted to falsely mark its products.

Will the University initiate or continue patenting activity without an identified licensee?

Often the University accepts the risk of filing a patent application before a licensee has been identified. After University rights have been licensed to a licensee, the licensee generally assumes the patenting expenses and participates in the prosecution. At times we must decline further patent prosecution after a reasonable period (often a year or two) of attempting to identify a licensee.

Copyright Issues

What is a copyright and how is it useful?

Copyright is a form of protection provided by the laws of the United States to the authors of “original works of authorship.” This includes literary, dramatic, musical, artistic, and certain other intellectual works as well as computer software. This protection is available to both published and unpublished works. The Copyright Act generally gives the owner of copyright the exclusive right to conduct and authorize various acts, including reproduction, public performance and making derivative works. Copyright protection is automatically secured when a work is fixed into a tangible medium such as a book, software code, video, etc. In some instances, the University registers copyrights, but generally not until a commercial product is ready for manufacture.

How do I represent a proper University copyright notice?

Although copyrightable works do not require a copyright notice, we do recommend that you use one. For works owned by the University, the notice should contain all of the following three elements: the symbol © (or the word “Copyright,” or the abbreviation “Copr.”); the year of first publication of the work; and the name of the owner (in all cases "The Regents of the University of Michigan"). Additional information may be added afterwards to clarify origination of the work.

For example:
© (INSERT YEAR HERE) The Regents of The University of Michigan
For information, questions, or permission requests please contact:
(INSERT CONTACT INFORMATION, UNIT NAME, UNIT ADDRESS, PHONE, ETC.)

How can I learn more about University copyright policies?

We recommend that you begin by reviewing material on the University's copyright website. If you have additional questions, please contact the University's Office of General Counsel.

What legal rights does a copyright provide?

A copyright owner has the exclusive right to do and authorize any of the following with the copyrighted work:

How might copyright affect me even if I'm not yet ready for tech transfer?

Faculty and researchers sometimes contract for services with outside consultants or contractors. It may be necessary or desirable that the University has broad rights which needs to be clearly defined in the contract.

Contracts should expressly require that the full ownership of any works delivered under the contract, including software and multimedia, be assigned to the University.

You should discuss this issue with Purchasing (734) 764-9204 when arranging such contracts, or contact Tech Transfer at (734) 763-0614 or techtransfer@umich.edu.

How does one copyright a work?

Copyright automatically applies as soon as the work is fixed in a tangible form, assuming the work is copyrightable. Registration is not required for the rights described above to apply. However, copyright must be registered with the U.S. Copyright Office before a legal suit for alleged infringement can be filed in a United States court. The copyright owner is eligible for statutory damages and attorney's fees if registration is done prior to infringement.

Trademark Issues

What is a trademark or service mark and how is it useful?

A trademark includes any word, name, symbol, device, or combination, that is used in commerce to identify and distinguish the goods of one manufacturer or seller from those manufactured or sold by others, and also to indicate the source of the goods. In short, a trademark is a brand name. A service mark is any word, name, symbol, device, or combination that is used, or intended to be used, in commerce to identify and distinguish the services of one provider from those of others, and to indicate the source of the services.

What is trademark registration?

Trademark registration is a procedure in which the United States Patent and Trademark Office (PTO) provides at least initial determination of rights based upon legitimate use of the mark. However, it is not necessary to register a trademark or service mark in order to prevent others from infringing upon the trademark. Trademarks generally become protected as soon as they are adopted by an organization and used in commerce, even before registration. With a federal trademark registration, the registrant is presumed to be entitled to use the trademark throughout the United States for the goods or services for which the trademark is registered.

What are the University's policies regarding use of the University of Michigan name?

Click here for information on policies for use.

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