What is "intellectual property"?
Intellectual property means slightly different things to different
people, but generally in the legal sense it is thought of
as material that may be protected under the patent, trademark
and/or copyright laws.
Q. What is UM's policy on ownership
basic policy is stated in Regents' Bylaw 3.10. A copy of that
Bylaw can be found at the following website: http://www.techtransfer.umich.edu/inventors/reglaws.html.
is the UM policy concerning technology transfer and the out-licensing
of inventions made at UM?
policy can be found at www.techtransfer.umich.edu/inventors/policies.html.
Other resources can be found that the website of the Office
of Technology Transfer, www.techtransfer.umich.edu.
What type of subject matter can be patented?
United States law, at least one aspect of an invention may
be patentable. Patentable subject matter includes processes,
machines, compositions of matter, articles, some computer
programs, and methods (including methods of making compositions
or methods of making articles and even methods of performing
business). For more information, see http://www.techtransfer.umich.edu/inventors/patents.html
May someone patent a naturally occurring substance?
though a natural substance that has never been isolated or
known may be patentable, but only in its isolated form (since
the isolated form has never been known before). Even a slight
variation of naturally occurring substances may be patentable
if an inventor is able to demonstrate advantages of using
What is a patent?
idea of a modern patent system dates back to at least 15th
Century England. The United States Constitution provides for
the U.S. patent system, and the U.S. Congress defines the
patent laws in Title 35 of the United States Code. In the
U.S., a patent provides the holder the right to exclude others
from making, using, selling, offering to sell, and importing
any patented invention. Thus, a patent does not necessarily
provide the holder any affirmative right to practice a technology
- it provides the right to exclude others from practicing
it. See http://www.uspto.gov/web/offices/pac/doc/general/index.html#patent
legal definition of an invention is found in the "claims"
of a patent -- the numbered paragraphs at the end of an issued
patent. The claims define the scope of an invention just as
a property deed defines the scope of land ownership of real
estate. Thus, the term patent claim differs from the term
"claim" as it is used in the context of advertising
and FDA. Other sections typically found in a U.S. patent include:
Abstract, Summary, Detailed Description, Examples, and Figures,
all of which must together describe the invention in sufficient
detail so that other people skilled in the field to which
the invention pertains are able to understand what the invention
is and practice the invention in a general sense. A patent
need not provide mundane production details or information
that would relate only to commercialization of the invention,
but the patent must describe the inventor or inventors' preferred
manner (if there is a preference) of practicing the invention.
What is the United States Patent and Trademark Office ("PTO")?
PTO is the federal agency, organized under the Department
of Commerce, that administers patents on the part of the government.
(A part of the PTO also issues federal trademark registrations.)
A description of the PTO may be found at http://www.uspto.gov/web/offices/pac/doc/general/index.html#uspto.
Although the PTO issues patents, patents must be enforced
in the federal court system of the United States.
How does the patenting process generally work?
applications are generally drafted by a patent attorney (or
patent agent, a non-attorney with a science education licensed
to practice at the PTO) and filed by mail with the PTO in
Arlington, Virginia. Generally, the patent attorney will need
the inventor(s) to sign an Inventor's Declaration (which states,
among other things that the inventor made the invention claimed
in the application) and an Assignment (which evidences the
inventor's duty to assign the patent to the inventor's employer
(such as the University)). Patent applications are required
to be held confidential by the PTO during the time of their
within a few months, a patent applicant will receive written
notice back from the PTO as to whether the application and
its claims have been accepted in the form in which they were
filed. More often than not, however, the PTO, represented
by a Patent Examiner, rejects the application because either
certain formalities need to be cleared up, or on the basis
that the claims are not patentable over the "prior art"
(see the definition below). The letter sent by the patent
examiner is referred to as an Office Action or Official Action.
the application is rejected, the patent attorney will then
need to file a written response (generally within three to
six months) to any rejections. In such cases, generally the
attorney will 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 two PTO Official Actions and
two responses by the patent attorney (and sometimes more)
before the application is resolved. The resolution is hopefully
in the form of a PTO notice that the application is allowable
(meaning that the PTO agrees to issue a patent). During this
process, the patent attorney will often need the input of
the inventor(s) in order to confirm the attorney's understanding
of the technical aspects of the invention and/or the prior
art cited against the application.
the average patent application is pending for just over two
years, though inventors in the biotech and computer fields
should plan on their applications taking longer. Once a patent
is issued, it is enforceable until the date 20 years from
the initial filing of the application that resulted in the
patent, assuming that PTO-mandated maintenance fees are timely
to an international treaty, the Paris Convention, foreign
patent applications must be filed within a year of the filing
of the U.S. application in order to receive the filing date
of the U.S. application.
What is "prior art"?
art is defined by statute (35. U.S.C. 102), but it may generally
be thought of as anything that prior workers in the field
have made or disclosed in the past. Prior art may include
printed publications, conference handouts (and sometimes even
presentations within a university), books, newspaper articles
- often regardless of where the material was published, where
it 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 in a field, and other public statements.
an inventor may under certain circumstances create prior art
against herself (thereby jeopardizing patent rights) by publicly
disclosing an invention prior to the filing of a patent application.
Who is an inventor of a U.S. patent application?
inventor is a person that takes part in the conception of
the patent claims (discussed above) 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 that furnishes money to build or practice
an invention is not an inventor. Inventorship is a sometimes
intricate legal determination that is made by the patent attorney
prosecuting the application. See, for example, http://www.uspto.gov/web/offices/pac/doc/general/faq.htm#a5.
Is there such a thing as a provisional patent?
However, there is a provisional patent application, which
is described below.
What is the difference between a provisional patent application
and a regular (or "utility") patent application?
provisional patent applications provide a tool in the right
circumstances for preserving patent rights while keeping costs
to a minimum. Provisional applications must name an inventor,
but do not require an inventor's declaration or claims. Governmental
filing fees for a provisional application are now $80 for
a small entity (such as a university), compared to $375 for
a regular (utility) application. In order to claim the priority
date of a provisional application, a regular U.S. application
(and foreign, e.g. PCT, applications) must be filed within
1 year of the provisional. However, an applicant only receives
the benefit of the earlier filing date for material that is
described in the provisional application. A provisional application
is not examined during the one year in which it is pending,
while a regular application typically will receive its first
examination within the first year it is pending.
How may I review patent literature?
may be searched at no cost on the website of the United States
Patent and Trademark Office (http://www.uspto.gov/,
more particularly http://www.uspto.gov/patft/index.html
- and see http://www.uspto.gov/main/profiles/acadres.htm
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, which 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 http://www.wipo.int/ipdl/en/search/pct/search-adv.jsp.
How many patent applications are filed each year?
than 300,000 U.S. patent applications are filed each year
by people and companies from all over the world. The U.S.
government has issued more than 6,500,000 patents. (The current
patent numbering system began in 1836.) Roughly 170,000 patents
are issued each year in the United States.
Is there such a thing as an international patent?
there is no such thing as an "international patent."
important international treaty called the Paris Convention
permits a patent application filed in a second country (or
a PCT application, as discussed above) 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, as described below) within one year of the first
filing date of the U.S. application.
an international patent does not exist, another international
treaty called the Patent Cooperation Treaty ("PCT")
provides a streamlined filing procedure for most of the industrialized
nations of the world. (See http://www.uspto.gov/web/offices/pac/dapps/pct/index.html.
Lists of member countries are found at http://www.wipo.org/pct/en/texts/pdf/time_limits.pdf
For U.S. residents, a PCT application is generally filed one
year after the corresponding U.S. application (either provisional
or regular ) is filed (since U.S. residents generally file
in the U.S. first). The PCT application must later 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. (Patent attorneys
refer to this as "nationalization" of a PCT application.)
Each national patent office thereafter handles the application
according to its own laws and procedures.
example, if an applicant files an application in the U.S.
on January 1, 2003, she must file any corresponding PCT application
by January 1, 2004 (under the Paris Convention). This PCT
application "designates" any PCT-member country
in which the applicant wishes to preserve the right to file
a corresponding national application. National applications
generally must then be filed in the desired countries by 30
months from January 1, 2003, i.e. by July 1, 2005.
applicant may request examination ("international preliminary
examination") of the PCT application by a PCT examiner
(physically located at either the U.S. Patent Office or the
European Patent Office), and this examination will result
in the examiner issuing an International Preliminary Examination
Report ("IPER"), which is the examiner's opinion
on the patentability of the PCT application. This IPER is
later shared with national patent offices where the application
is later filed, and although the IPER is not binding upon
those patent offices, many patent offices may view a positive
IPER as persuasive evidence that an application/invention
PCT provides two main advantages. First, PCT provides the
opportunity to delay the need to file (generally very expensive)
foreign applications until the 30-month date, often after
an applicant has the opportunity to further develop, evaluate
and/or market her invention. Second, the international preliminary
examination procedure often allows 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.
What do the terms "patent pending," "patent
pend." and "patent applied for" mean?
are terms placed on products or product packaging to inform
the public that the manufacturer or seller has applied for
patent protection in the U.S. Once a patent has issued, a
patent holder is supposed to place the patent number on its
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
How are patent rights treated in my sponsored research?
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) Division of Research
Development and Administration (DRDA) (http://www.research.umich.edu/contacts/drda/drda_contact.html).
Often, sponsored research contracts provide the sponsor an
option of 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 DRDA Project Representative responsible
for the sponsor (described at http://www.research.umich.edu/contacts/drda/sponsor.html)
For more information, you may call 734-764-5500.
Where can I find more information concerning conflict of interest
management as it concerns research and intellectual property?
concerning conflict of interest relating to UM research may
be found at the following webtsite: http://www.research.umich.edu/policies/um/conflict_procedures.html.
Is UM liable for patent infringement of third-party patents
by virtue of work by UM researchers?
researchers have at time been accused of patent infringement.
If you are accused of infringement, you should immediately
contact the Office of the General Counsel (see the contact
information in this website). The United States Constitution
may provide that state universities have immunity from lawsuits
for these types of actions. However, patent holders often
are not likely to accuse universities of patent infringement
due to the non-commercial nature of the research and the public
benefits that the research provides.
How does patent law affect the generic drug industry?
so-called "Waxman-Hatch Act of 1984" (also known
as the "Drug Price Competition and Patent Term Restoration
Act of 1984") provided a compromise between pioneering
drug companies and generic drug manufacturers (and their customers).
The act provides a series of checks and balances for both
the first marketer of a new drug and manufacturers that wish
to produce a generic version of a drug. This is a complicated
issue, but for a summary of the act, see http://library.lp.findlaw.com/articles/file/00553/007032/title/subject/topic/administrative%20law_federal%20agencies/filename/administrativelaw_2_13.