Intellectual property encompasses all forms of creativity, such as inventions, processes, unique materials, discoveries, improvement on existing technology, know-how, software, and creative or artistic works. Intellectual property is covered under law through patent, copyright, trademark, and trade secret protections. Further, Intellectual property is protective through use of agreements which control access and use of such intellectual property.
An invention is anything made by man, as long as it is new, useful, and non-obvious. The U.S. Constitution recognizes the economic value of innovation and provides the owner of a patent with a time-limited monopoly of 20 years. Patent protection stops others from exploiting the invention and rewards investment spent toward the creation of inventions. In exchange for this exclusive right, the patent document, which is published, must fully describe the invention so others can reproduce it and learn from it. In that way, the patent monopoly provides the incentive to share advances with the public and thereby contribute to growth in the field.
A patent application must be filed in the names of the true inventors. The legal criterion for inventorship does not equal those used for authorship. In U.S. patent law, an inventor is one who alone, or together with others, conceived of the ultimate working invention. Inventorship is not given for hard work to someone who only worked under direction. Inventorship is tied to the claims in a patent application, and is determined at the time the patent application is filed. As the claims in an application change, so may inventorship.
Inventorship does not equal ownership. Organizations almost always own inventions developed by their employees. A patent is property and may be sold, leased, or rented to others for royalties. Patent rights are often transferred to others for commercialization through licensing rather than outright sale. The patent owner can decide how to allow others to use his property and can divide up rights.
Standard Tests of Patentability
New or Novel: The invention must be distinguishable from all known inventions, products, and published ideas. The entire invention does not need to be novel. Any novel aspect of an invention meets requirements needed to pass this test.
Non-Obvious: The invention can’t be obvious or a logical extension of known ideas. The invention can’t be apparent to a person skilled in the field of the invention.
Useful: The invention must work and have practical application or utility.
Publication and Public Disclosure
Publication and other public disclosure of an invention by anyone, including the inventor, made before a patent application is filed may prevent the ability to obtain a patent. A public disclosure for patent purposes is any oral or written communication to others outside the University that is not confidential and either teaches the invention completely or provides sufficient information needed to make the invention obvious. In the U.S., a public disclosure is any written document accessible by others. Such documents include manuscripts, abstracts, websites, meeting notes, or presentations. If essential elements are planned to be discussed for any purposes, a Non-Disclosure Agreement should be made through the Office of Technology and Commercialization.
Defining the First Inventor
Not infrequently, two entirely different groups invent the same or similar inventions. In the U.S., the inventor who can document he/she was the first to invent and was diligent in putting the invention into practical form and filing a patent application obtains rights. Written documentation and records are essential in defining the first inventor. Such documentation should include written record of all experiments, results (even if the significance is unclear), conversations made, future directions of investigation, signatures, dates, and preferably witnessed records. Without sufficient proof of date of inventorship, the first inventor may lose rights to others who have more complete documentation and records.
The following are several areas where University research can lead to patentable inventions:
Engineering: laboratory instruments, machinery, semiconductors & chips, manufacturing techniques, process improvements, nanotechnology, circuits, sensors, lighting, filtration, micro-devices, improvements over existing technology
Agriculture: germplasm and plant varieties, grain and food processing, equipment and devices, and transgenics
Biotechnology: new genes and their functions, promoters, genetic markers, gene transfer methods, expression vectors, and microorganisms
Chemistry: new compounds, new drugs, drug targets, drug design, separation methods, coatings, additives, superconductors, metals, polymers, and fuel cells
Software and Algorithms: methods and processes in computer programs, operating systems, networking, data mining and storage, security, and supercomputing
Inventions that are not patentable include laws of nature, theories, scientific principles, pure algorithms, and perpetual motion machines.
Copyright is the form of intellectual property that protects the expression of creative ideas that are contained in a tangible form. "Copyright" is literally the right to copy, which includes the right to copy (display, perform), distribute copies, and make changes to the original copyrighted work in the form of derivative works. Copyright provides the owner with the right to determine how the work is copied and distributed to others, through sale, lease, or lending.
Unlike patentable inventions, copyrighted works are automatically protected under U.S. copyright laws without the need for a formal registration process. However, it is still important to affix the appropriate copyright notice to make others aware that others are not able to utilize the work without approval. Works owned by the University should contain the following notice: 20XX The Board of Trustees of South Dakota State University. All rights reserved. There is also a formal registration process to document copyrights in the Library of Congress.
For scientific writings, copyrights do not protect the procedures, systems, process, concepts, formulae, discoveries, or devices described in the work.
A copyright lasts longer than patents. Author owned copyrights last for 70 years. Employer owned copyrights last for 100 years from the creation or 95 years from publication.
What is copyrightable?
Literary Works: books, poems
Computer Software: object code, source code
Music: notes, sound recordings
Plays: dances, pantomimes
Art: paintings, graphics, sculptures
What is not copyrightable?
Ideas of Concepts
Listings without Originality (phonebook)
Titles or Short Phrases
Public Domain Information
Trademarks and service marks are distinctive words or symbols used to identify the brand or origin of goods/services. The trademark is not the name of the specific product but distinguishes the product from others and identifies quality. Trademarks and service marks are suggestive, descriptive, and arbitrary, but not generic. The trademark must be used consistently in order to become eligible. However, if the mark becomes used to the point when it becomes generic, it loses the ability to identify the source of a product and thus no longer entitled to trademark protection.
A registered mark is valid for 10 years and is renewable as long as the mark is used commercially.
For more information on patents, copyrights, and trademarks, go to the United States Patent and Trademark Office website.