Patents

A patent is a grant from the federal government (through the U.S. Patent and Trademark Office) to the inventor(s) to prevent others from making, using, or selling an invention for 20 years from the date the application is filed with the U.S. Patent and Trademark Office.

Disclosure to OSU should be made as soon as possible after the discovery or completion of the invention process so steps can be taken to protect the inventor’s work. See the Our Process link of this Web site.

Inventors are cautioned to safeguard their potential patent rights by avoiding inadvertent disclosure to outsiders through describing the work in a grant proposal without marking it "Proprietary," reporting results in a publication more than one year before the patent application is filed with the U.S. Patent and Trademark Office, and other actions. See the Avoiding Loss section below.

OSU's patent policy is set forth in OSU Policy and Procedures No. 1-0202. For information concerning this policy or the Invention Record and Report form, contact the Office of Technology Commercialization. Specific instructions for proceeding through the OSU patent and copyright process can be found in the Our Process link of this Web site.

Download an Invention Record and Report Form for submission to our offices.

Copyrights

A copyright is a form of protection provided by federal law to the author(s) of "original works of authorship," including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. Computer programs are considered literary works.

Copyright is automatically gained when the work exists in tangible form. The creation does not have to be registered in order to be copyrighted, but there are advantages to registration, the most notable of which is the ability to fend off infringement.

Use of the copyright notice is not required, but it is useful because it notifies the public that the work is copyrighted, identifies the owner, and indicates the year of first publication. Example: © 2002 Jill Doe

For works created on or after January 1, 1978, copyright protection begins at the moment of creation in tangible form, continues throughout the creator's life, and extends 70 years past his/her death.

OSU's Intellectual Property ppolicy governing copyright is stated in OSU Policy and Procedures No. 1-0202. For more information concerning this policy, contact the Office of Technology Commercialization. Steps in the OSU copyright and patent process can be found in the Our Process section of this Web site.

Fill out a Disclosure of Copyright Form for submission to our offices.

Complete instructions for submitting a copyright application to the U.S. Copyright Office, as well as other details pertaining to copyrights, can be found at their Web site.

Avoiding Loss

Many inventors know that if they disclose information about an invention more than one year before filing a patent application, patentability is barred because the invention is no longer new or "novel." However, some inventors may not be aware that certain common practices within academic institutions can constitute disclosure and thereby prevent patent awards. With awareness and attention, these pitfalls can be avoided.

One-Year Bar

Certain activities occurring more than one year before a patent application is filed will negate the validity of the claim and therefore bar an award. These include: making the invention available for sale, placing it in the public domain (for public use), and disclosing it in a printed publication either in the United States or a foreign country. The latter, although it seems straightforward, can occur-in the view of the court-without the inventor intending to do so.

The Patent Act states: "...if an inventor discloses his invention to another in any manner, without securing a promise of confidentiality, communication of the knowledge of the invention to the public results because the knowledge thereof is no longer controlled by the inventor, and thus is considered an irrevocable dedication to the public." (Emphasis added.)

Inclusiveness of “Printed”

"Dissemination" is really the crux of the matter, rather than the physical form of the transmission of information. Courts have construed "printed" to include microfilm, slides, drawings, blueprints, and photographs as well as words on a page.

Theses and Dissertations

One copy of a thesis, properly indexed and shelved in a library, constitutes dissemination because the information regarding the essence of the invention is accessible. If a graduate student's thesis describes the invention, is available in the library, and the student's professor files a patent application thirteen months thereafter, the claim can be invalidated by a challenger. Some universities place a hold on cataloging and shelving of a thesis or dissertation if the document describes the subject of a soon-to-be-filed patent application.

Presentations at Professional Meetings

If the description of the invention is limited in scope such that a person of ordinary skill in the art would not be able to glean enough information to duplicate the invention and no handouts are provided, no harm is done. Slides can be shown without loss of patent protection, but no handouts should be distributed, and the oral description should not be detailed. The key is whether a person of ordinary skill in the art could take what was presented and create an identical product or process.

If handouts are provided and the material presented is of sufficient detail that an interested person with ordinary skill in the art could make the invention, then publication would have occurred, according to the court. MIT has lost at least one patent in this manner.

Drawings and Photographs

Drawings and photographs can contribute to the loss of a patent if no restriction of confidentiality is placed on them at the time of distribution. The same principle applies to drawings, photographs, and brochures as indicated above.

Ensuring Confidentiality

An inventor must take care to ensure confidentiality by either:

Using a confidentiality agreement if disclosed in detail, or
Taking precautions to reveal only minimal details and avoid providing documentation of any kind that would aid a person of ordinary skill in the art to make or use the invention

Research Proposals

With reasoning similar to that involved in the ruling that a cataloged and shelved thesis or dissertation constitutes a printed publication because the information is accessible, the court has held that a grant proposal is a printed publication. This is so because it is indexed and available to the public through the Freedom of Information Act (FOIA).

Strategies for avoiding loss of a patent claim through disclosure in a research proposal include drafting the proposal so it is not enabling, marking proprietary information with a legend indicating such (research with commercial value is exempt from disclosure under FOIA), and filing a patent application within one year of the disclosure in the proposal.

Lab Notebook

Need for Notebook

A lab notebook provides evidence of an inventor’s conception of an invention and the steps taken to reduce the invention to practice. It becomes a permanent record of the date of invention, which can be invaluable in patent contests.

What to Include

Detail is critical. Record:

When the idea was formed, and whose idea it was
The problem the idea solves
A description of how the idea can be implemented
Objective and rationale of any experiment conducted
Purpose of experiment or test
What was done, when it was done, and who did it
Results (positive or negative)
Conclusions drawn
Plans for future experiments, with protocols
Key to abbreviations and special terms used-in context, in a table, or in a glossary
Related activities such as conferences and creation of test equipment
Lab meeting discussions-with record of who made what suggestions
Descriptions of tests, including
- test results and explanation
- preferred operating conditions
- control conditions
- operable and preferred ranges of conditions
- alternate specific materials
- photographs or sketches of the results or the test device
- raw data from recording instruments
- drawings
- charts
- computer printouts
- any other supporting data
- references to any document too large to include in notebook, e.g., engineering drawings. Include number, title, date, and short description of what it depicts.

Include only factual data. Avoid opinion or speculation about the usefulness, quality, etc. of the invention or the research project.

How to Manage Your Notebook

Use a bound book. If loose sheets are used, number them consecutively, then date and sign each page, and have each page witnessed.
Keep your notebook intact. Don’t remove pages or affixed material.
Make entries in chronological order-on the same day as the event. If this is impossible, enter the information and indicate when the actual work was done.
Use ink to avoid any question about alteration and to prevent tampering.
Use pages in consecutive order, and try not to leave empty spaces. If you do leave empty space, draw cross-diagonal lines through the blank area and date it.
Don’t modify previous entries later. If a new drawing or new data is required, it should be entered under a new date and cross-referenced to the earlier entry.
Make entries directly in your notebook; don’t make notes on scraps of paper to be recopied.
Sign and date every page as completed (see below for more on signatures).
Indicate the name of the person working with you in connection with each entry. If someone else makes an entry in the notebook, he or she should date and sign the entry.
Permanently affix items such as photos, small drawings, computer printouts, etc. Sign and date the attached materials so your signature crosses both the affixed item and the notebook page.

Signatures in the Notebook

Sign and date each entry in the notebook, using the complete date, including the year. On the inside front cover of the notebook, sign and enter the beginning date of the notebook.
All the contributors should sign joint work. The text should establish who is responsible for each aspect.
Following the description and illustration of an idea in the notebook, a witness who will not be named as a co-inventor and who is not working on the project should sign and date the entry. A statement similar to the following should precede the signature: “Read and understood by _________________.”
The first reduction to practice should be demonstrated to an independent witness, and he or she should sign and date a statement similar to the following: “Performance observed and understood by ______________.”
The witness should sign and date the entries as soon as possible, preferably the same day, but they can be reviewed and acknowledged on a periodic basis.

Storing the Lab Notebook

Keep notebooks in a central location while not in use-preferably in a fireproof safe or filing cabinet.
Catalog notebooks. Assign a number to each notebook-in consecutive order within the lab or consecutively to each scientist.
When complete, the notebook should be stored in a secure, central repository, along with corresponding patent applications and/or issued patents.
Keep notebooks relating to patented inventions for the life of the patent plus six years.

Grant Application as Prior Art

The vast majority of investigators are aware that public, printed, enabling documents can jeopardize successful patent filing in both the US and abroad.
Are you aware that grant applications can also serve as printed publications?
- Typically, for most federal agencies, applications are held in confidence until the grant is funded.
- However, after the grant is funded, much of the grant-related information is considered public information and is subject to information requests.
- E.g., NIH makes grant information available through its Computer Retrieval of Information on Scientific Projects (CRISP) system and NSF publishes abstracts of funded projects on its website.
- Additionally, NIH sends the project description abstract to the National Technical Information Service (NTS) at the Dept. of Commerce where it is made available to the public.
At least one US court has determined that a grant proposal was a “printed publication” because it was accessible to the public.
It is very important for the investigator to determine if confidential Intellectual Property (IP) is contained in documents (i.e., proposals, progress reports, final technical reports) provided to federal funding agencies prior to submission.
- The Freedom of Information Act (FOIA) requires federal granting agencies to release grant documents to the public. Agencies will withhold information known by them to be trade secrets or other proprietary information.
- Following a FOIA request, the agency will also contact the grantee and allow them to redact sensitive information before public disclosure.
- NIH actually discourages submission of proprietary information unless it is essential for proper evaluation of the application.

If the PI thinks there is potentially patentable technology in the grant application, the Office of Technology Commercialization should be contacted.
Investigators are urged to contact the Office of Technology Commercialization if they have any questions.

Other Resources

US Patent and Trademark Office
US Copyright Office
OSU Patent and Trademark Resource Center

Association of University Technology Managers