What is a patent?

A US patent is a right to prevent others from making, using, selling, offering for sale, or importing their invention, within the US, for a certain period of time - usually 20 years from the filing date. 

Patent rights enable the inventor or owner of the patent to have a time constrained monopoly to profit from their invention. In exchange for this right, the inventor must publicly disclose the details of their invention. 

Patents are enshrined in the US constitution; the founders of the US understood the value of IP rights to help advance knowledge by incentivizing the creation of new and useful inventions.

What is a trademark?

A trademark is a symbol, word, phrase, or design that identifies and distinguishes the goods or services of one company from those of another.

It is possible to own and use a trademark and not seek legal protections for that trademark.  However, registering a trademark with the U.S. Patent and Trademark Office gives an owner the right to prevent others from using the same or similar mark in a way that might confuse or mislead customers.  Trademarks can last indefinitely as long as they continue to be used and are properly registered and maintained. 

Trademarks are especially important for companies and organizations that must rely heavily on brand recognition.  WSU has many registered trademarks, such as the beloved WuShock and WSU logo.

What is a copyright?

A copyright is a legal protection that gives the creator of an original work the exclusive right to control how that work is used and distributed.

Copyright applies to a wide range of creative works, including books, music, photographs, movies, and software. Copyright protection usually lasts for the life of the author plus a certain number of years after their death. During this time, no one else is allowed to use or profit from the copywritten work without the copyright owner's permission. 

While an owner of creative work has basic and passive protections under the law, registering for copyright protection with the U.S. Copyright Office makes it easier for an owner to block infringement and receive compensation from those who may copy their work.

What are trade secrets and proprietary information?

Trade secrets and proprietary information refer to confidential and valuable information that is not publicly disclosed and gives an organization a competitive advantage.

This information could include formulas, processes, designs, or other knowledge that has been kept secret, and is not in the public domain. Unlike patents, trademarks, or copyrights, trade secrets are not protected by registration with the government but instead by keeping the information confidential.

Many WSU employees have signed confidentiality agreements as part of the hiring process. The confidentiality agreement requires them to protect the University’s confidential information and the confidential information of the companies and organizations in which they may be exchanging information with in the course of their work. 

Companies use legal means such as non-disclosure agreements (NDAs) to prevent employees, contractors, and others from revealing or using their trade secrets. Misappropriation or unauthorized use of trade secrets can lead to legal action and financial damages.

Understanding the Patent Process

The patenting process is a lengthy endeavor. On average, it takes about three years from the filing date for a patent to be granted.  The majority of this time period is spent waiting for examination and responses to arguments related to the application.  At WSU, an outside law firm prepares and files applications with the assistance of WSU students participating in the Gateway to IP training program. 

A patent application must have drawings, a detailed description of the invention, and claims.  The claims become the legal right to exclude others from practicing the invention after the patent has been granted.  The claims are the primary focus of examination and argumentation with the patent office. 

The filing date is the day the patent application is submitted to the patent office, and serves as the basis for the term of the future patent.  For many months, possibly years, the patent application waits in line to be examined.  Within a year of the filing date, it is necessary to file any corresponding foreign patent applications.  Patent protection is only granted in individual countries.  Filing for foreign patents is decided on a case-by-case basis, balancing the benefits of foreign protection with the expense of filing and maintaining patents in other countries.

While it may be easier to enforce patent rights in the country where the invention is being manufactured or sold, the U.S. has laws against the importation of infringing products, so having a U.S. patent could be sufficient to dissuade potential infringers who intend to sell their products in the U.S. markets.

Once the patent application is reviewed by a patent examiner at the patent office, the examiner will decide if the claimed invention is novel and non-obvious.  This process is called “patent prosecution.”  Typically, some or all claims are rejected in the first communication.  This type of communication from the patent office is called an “office action.” 

The examiner assesses novelty and non-obviousness by comparing the invention to other similar technologies in the public domain, which are referred to as “prior art.”  This could include published patents, scholarly articles, and any other public information.  In the office action, the patent examiner will explain why the claims have been rejected or accepted and list the prior art.  Then we will have a chance to present our arguments and possibly make claim amendments to try to get the application to become a granted patent with a sufficient scope of protection for the invention.

During this process, the Office of Tech Transfer and Commercialization may contact the inventor for guidance on the subject matter found in the prior art and how it relates to the invention.  This back-and-forth process with the Patent Office may continue for at least one more round, possibly more if additional fees are paid and proceedings are undertaken.  Most of the time, some claims are allowed, or the claims are modified and approved, resulting in a granted patent.  However, there are times when it’s not possible to overcome the rejections and convince the examiner.  In those cases, the patent application does not become a granted patent, but it remains a part of the public record after publication.

Patent applications are published 18 months after the filing date or when the patent is granted.  All the communications with the Patent Office are recorded and can be viewed by anyone on the USPTO’s Patent Center website - https://patentcenter.uspto.gov/ .

It is common to file “continuing” applications on the same invention, and like foreign filing, is done as part of an overall protection strategy with careful consideration of the costs and benefits. Foreign filings and continuing applications can quickly scale the costs incurred in drafting, prosecuting and maintaining the patent families.  A “patent family” is all applications that relate to one invention, including foreign filings and continuing applications.

Once a patent has been granted, the owner has the right to enforce it.  To keep the patent in effect, WSU must pay maintenance fees at regular intervals as required by the patent office.  It is important to note that the fees increase as the patent ages, which disincentivizes maintaining the patent for the entire term.  Therefore, the decision to pay maintenance fees is made at certain renewal periods, taking into account factors such as the potential for commercialization.

Understanding Patent Strategy

For those unfamiliar with patent law, it can be difficult to distinguish between patentability and infringement.  Patentability is a general term that is used when discussing whether an invention is eligible for patenting, and is determined by the back-and-forth process with the patent office during the examination of the application.  Furthermore, the validity of a patent can come into question after it has been granted and those challenges can be undertaken at the Patent Office. 

Not all patents are created equal, some may be stronger than others in terms of their enforceability and the scope of their protection. The strength and validity of a patent can depend on factors such as the scope of the claims, the relevance of the prior art cited during examination, and the potential challenges from competitors.  It can be difficult to ascertain the strength and validity of a patent until it is challenged at the Patent Office or in court.

Infringement, on the other hand, occurs when someone else makes, uses, sells or imports an invention that is covered by an existing patent without the permission of the patent owner.  Infringement is determined in court, a place where few patent owners will ever find themselves, thankfully.  A patent doesn’t grant the owner a right to do anything other than sue someone.  Infringement is a civil offense, not a criminal one.  This means that if a person or company is found to be infringing on a patent, they may be sued for damages by the patent owner in a civil court. The burden of enforcing a patent and covering the costs of litigation falls on the patent owner, who must bear the financial and logistical burden of pursuing legal action.

You may have noticed that products have patent markings on them, this is often done to inform others that the product is patent protected.  If you were to investigate the patents associated with a product, you may discover that only certain features are covered by the patents, or that many patents are involved in protecting a single product (patent families).

It can be difficult to determine infringement of a patent, which is why patent litigation is one of the most expensive types of litigation and usually avoided if possible.  The validity of a patent is often called into question during infringement litigation, so there is uncertainty surrounding both points: if the patent has been infringed upon, and if the patent that is allegedly infringed upon was valid in the first place. 

Patent litigation can be a complex and expensive process, and companies often weigh the risks and costs of litigation against the benefits of negotiating a licensing agreement with the patent owner. A license allows the licensee to use the patented invention in exchange for payment of fees or royalties to the patent owner. This approach can provide a mutually beneficial solution, allowing the licensee to use the patented invention, while also providing revenue to the patent owner.

The decision to enforce a patent or negotiate a licensing agreement is not solely made by lawyers, it is a strategic business decision made by the parties involved. Some patent owners may choose to enforce their patents aggressively, while others may be more focused on generating revenue through licensing agreements. The decision to enforce a patent can also depend on factors such as the strength of the patent, the potential market for the invention, and the resources available to the patent owner. Ultimately, the decision to enforce or license a patent involves balancing the risks and benefits of each approach and determining the most effective strategy for achieving the desired outcome.

It's important to note that the financial benefits of patents can vary greatly depending on the industry and the type of invention being patented. For example, in some industries, like pharmaceuticals, patents can provide a crucial head start in the market and generate significant revenue through exclusive sales of a new drug. In other industries, like technology, the benefits of patents may come more from licensing arrangements and royalties.

Licensing arrangements can be a great way for patent owners to generate revenue without having to invest in manufacturing and marketing the patented invention themselves. By licensing the technology to other companies, the patent owner can collect royalties, while the licensee can bring the invention to market without having to worry about patent infringement.

Overall, a good patent strategy is one that maximizes the financial benefits while minimizing the risks and costs associated with patent ownership. This may involve a combination of licensing, defensive patenting, and strategic enforcement.

Universities often have different priorities and objectives when it comes to their IP than companies do. While companies may seek to protect their inventions in order to establish a market monopoly, universities often use their inventions for research and educational purposes while also licensing out the IP to companies. Universities also have a responsibility to protect and safeguard their IP, not only to protect its value to their licensees, but also to ensure that it is being used ethically and in accordance with applicable laws and regulations.

When working with industry partners, it's important to be mindful of potential infringement issues and to take steps to ensure that all parties are respecting each other's intellectual property. If you have any questions or concerns about IP-related issues, it's always a good idea to contact the Office of Tech Transfer and Commercialization.

Ownership Versus Inventorship

A patent can be bought, sold or transferred like any other piece of property.  Patents can be owned by individuals or any legal entity such as a corporation or university.  Inventors must be human individuals, although there is now discussion among lawmakers as to whether artificial intelligence should be considered an inventor.

The inherent state of the law is that inventors are the owners of their patents.  However, it is common that an inventor is employed by a company or a university, and as a condition of their employment they must assign inventions to their employer.  The assignment means that the inventors don’t own the IP, but instead they have assigned the rights to the invention to their employer.

Determining Inventorship for a Patent Application

Determining inventorship for a patent application is very important to assure the validity of the patent.  For that reason, we will assess inventorship associated with each Intellectual Property Disclosure Form on a case-by-case basis.  You should enter all the contributors that conceived the innovation in the Intellectual Property Disclosure Form.

For your reference, these are the points that are considered when determining inventorship:

AN INVENTOR IS

• A person who conceives the subject matter of at least one claim of the patent.
• Two or more people who collaborate to produce the invention through aggregate efforts.

AN INVENTOR IS NOT

• Someone whose only contribution is reducing an invention to practice by exercising ordinary skill in the art.
• A technician who simply performs experiments or assembles the invention.
• The supervisor or department manager of the person who conceived the invention.
• Someone whose only contribution is an obvious element to the invention.
• Someone whose only contribution is participation in consultations about the invention before or after conception of the invention.
• A person who only conceives of the result to be obtained but not the idea of how to achieve it.
• A person who only discovers the problem (unless he contributes to the solution).
• A person who merely provides a suggestion or improvement but who does not work to fit the suggestion or improvement into the invention.
• A second inventor of the subject matter of the invention who did not collaborate with a first inventor of the subject matter of the invention.