What Is an Invention?

What is an invention, and who owns the inventions made by UD faculty, staff, or students?

The University of Delaware Policies and Procedures Manual defines an invention as follows:

"An invention shall constitute any discovery, machine, new and useful process, article of manufacture, composition of matter, life form, design, algorithm, software program, or concept that may have commercial value. University faculty, staff, or students employed by the University who discover or invent or develop a device, product, plant variety, method, or work while associated with the University must cooperate with the University in defining and establishing the rights to such inventions, works, materials, and data."

It is the policy of the University of Delaware that "all inventions and discoveries, together with any tangible research materials, know-how, and the scientific data and other records of research including any related government protections (collectively "Intellectual Property"), which are conceived or reduced to practice or developed by University faculty, staff, or students in the course of employment at the University, or result from work directly related to professional or employment responsibilities at the University, or from work carried out on University time, or at University expense, or with the substantial use of University resources, shall be the property of the University."

The University of Delaware is required by law to report its inventions made under Federal grants/contracts to the Agency, and may elect to own and promote them for commercialization. If you are a UD researcher with an invention to protect, please review these policies and forms and contact the Intellectual Property and Technology Transfer Office of the UD Research Office for more information.

How do I find out if I need patent, trademark and/or copyright protection?

Patents protect inventions and improvements to existing inventions. Copyrights cover literary, artistic, and musical works. Trademarks are brand names and/or designs which are applied to products or used in connection with services. For more information, contact the Intellectual Property Center staff.

 

What Is a Patent?

A patent for an invention is the grant of a property right to the inventor, issued by the U.S. Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell, or import, but the right to exclude others from making, using, offering for sale, selling, or importing the invention. Once a patent is issued, the patentee must enforce the patent without the aid of the U.S. Patent and Trademark Office.

The Patenting Process

Patent Timeline

Throughout the world the first party responsible for filing a patent application is the undisputed owner of the invention. The United States has a one-year time period to file a patent application. This period begins at the formal presentation of the invention. A formal presentation of an invention includes any publication, journal, conference presentation, poster session, newspaper article, Internet publication on a Web page, blog, listserve, etc. In most other countries, you are banned from obtaining patent protection once an invention has been publicly disclosed.

You must file in the United States within one year of the first disclosure of the invention — filing of a provisional application may protect international rights.

It takes an extended period of time to obtain a patent. The patent application can be kept secret while it is pending if you request it; otherwise, it is published by the U.S. Patent and Trademark Office 18 months after filing.

See Policy 6–6 — "Intellectual Property Protection, Ownership, and Commercialization" — in the University of Delaware's Policies and Procedures Manual for detailed information on patent procurement costs and the division of patent income.

For more information, contact the Intellectual Property Center staff.

 

 

What Is a Copyright?

Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the Library of Congress.

As defined by the U.S. Copyright Office, copyright is a form of protection provided by U.S. law to the authors of "original works of authorship" fixed in any tangible medium of expression. The manner and medium of fixation are virtually unlimited. Creative expression may be captured in words, numbers, notes, sounds, pictures, or any other graphic or symbolic media. The subject matter of copyright is extremely broad, including literary, dramatic, musical, artistic, audiovisual, and architectural works. Copyright protection is available to both published and unpublished works.

Under the 1976 Copyright Act, the copyright owner has the exclusive right to reproduce, adapt, distribute, publicly perform, and publicly display the work. In the case of sound recordings, the copyright owner has the right to perform the work publicly by means of a digital audio transmission. These exclusive rights are freely transferable and may be licensed, sold, donated to charity, or bequeathed to the copyright owner's heirs. It is illegal for anyone to violate any of the exclusive rights of the copyright owner. If the copyright owner prevails in an infringement claim, the available remedies include preliminary and permanent injunctions (court orders to stop current or prevent future infringements), impounding, and destroying the infringing articles.

The exclusive rights of the copyright owner, however, are limited in a number of important ways. Under the "fair use" doctrine, which has long been part of U.S. copyright law and was expressly incorporated in the 1976 Copyright Act, a judge may excuse unauthorized uses that may otherwise be infringing. Section 107 of the Copyright Act lists criticism, comment, news reporting, teaching, scholarship, and research as examples of uses that may be eligible for the fair use defense. In other instances, the limitation takes the form of a "compulsory license" under which certain limited uses of copyrighted works are permitted upon payment of specified royalties and compliance with statutory conditions. The Copyright Act also contains a number of statutory limitations covering specific uses for educational, religious, and charitable purposes.

Copyright Owner

Pursuant to the Copyright Act of 1976, this is a term with two meanings. First, it refers to the person or entity listed as the owner in the U.S. Copyright Office, usually the original author or developer. Second, it refers to a person or entity to which an exclusive part of the copyright has been transferred in writing.

Copyright Author

The person who creates the work is not always the author of the work. The author is either the person who creates the work, the person or business that pays another to create the work in an employment context, or the person or business that commissions the work under a valid work-for-hire contract.

What Is Not Copyrightable?

Purely factual information within a work is not protected by copyright, as well as utilitarian aspects of a work.

Fair Use Doctrine

The fair use of a copyrighted work for purposes such as criticism, comment, and teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use, the factors to be considered shall include:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work. The fact that a work is unpublished shall not itself bar a finding of fair use if such a finding is made upon consideration of all the above factors.

Works Made for Hire

Although the general rule is that the person who creates a work is the author of that work, there is an exception to that principle: the copyright law defines a category of works called “works made for hire.” If a work is prepared by an employee or prepared under a signed written contract designating it as a "Work Made for Hire," the employer, and not the employee, is considered the author. The employer may be a firm, an organization, or an individual.

Joint Authorship

For joint authortship, contribution by the author must be copyrightable. Each author must have intended to collaborate at the time the work was created. Common ownership of copyright can be Joint Exploitation or Duty to Account.

Transfer of Copyright

Any or all of the copyright owner’s exclusive rights or any subdivision of those rights may be transferred, but the transfer of exclusive rights is not valid unless that transfer is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent. Transfer of a right on a nonexclusive basis does not require a written agreement.

A copyright may also be conveyed by operation of law and may be bequeathed by will or passed as personal property by the applicable laws of interstate succession.

Copyright is a personal property right, and it is subject to the various state laws and regulations that govern the ownership, inheritance, or transfer of personal property as well as terms of contracts or conduct of business.

Transfers of copyright are normally made by contract. The Copyright Office does not have any forms for such transfers. The law does provide for the recordation in the Copyright Office of transfers of copyright ownership. Although recordation is not required to make a valid transfer between the parties, it does provide certain legal advantages and may be required to validate the transfer as against third parties. For information on recordation of transfers and other documents related to copyright, request Circular 12 Recordation of Transfers and Other Documents.

Termination of Transfers

Under the current law, termination of a grant of rights after 35 years may be made under certain conditions by serving written notice on the transferee within specified time limits.

For works already under statutory copyright protection before 1978, the present law provides a similar right of termination covering the newly added years that extended the former maximum term of the copyright from 56 to 95 years. For further information, visit the U.S. Patent and Tradmark Office Web site.

When Is a Work Copyrighted?

Upon completion of an original work in tangible form -- a process that generally takes four to five months.

• It is recommended that you include a copyright notice on the title page of your thesis or dissertation.
• You should include the copyright symbol ©.
• You should place your name next to the symbol to identify yourself, if you are the copyright owner, as the copyright owner.
• Although no longer necessary, you should also include the words "all rights reserved" below the copyright symbol and name.

Use of Other Copyrighted Works

It is not necessary to obtain permission to use works in the public domain. Works are in the public domain if the copyright on the work has expired or the work was never copyrighted at all. Although permission is not needed, the work needs to be properly acknowledged.

When using copyrighted works, it is necessary to acknowledge the source and to obtain written permission unless such use falls within the “fair use doctrine.”

The above information is provided by the U.S.For more information, see UD's policies on Copyrightable Material and on Copyright and Fair Use in Instruction or contact the Intellectual Property and Technology Transfer Office.

 

What Is a Trademark or Service Mark?

A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and service marks.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office. The registration procedure for trademarks and general information concerning trademarks is described in a separate pamphlet entitled "Basic Facts about Trademarks."

Are there federal regulations governing the use of the designations "TM" or "SM" with trademarks?

No. Use of the symbols "TM" or "SM" (for trademark and service mark, respectively) may, however, be governed by local, state, or foreign laws, and the laws of the pertinent jurisdiction must be consulted. These designations usually indicate that a party claims rights in the mark and are often used before a federal registration is issued.

When is it proper to use the federal registration (®) symbol?

The federal registration symbol may be used once the mark is actually registered in the U.S. Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. [Note: Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.]

The above information was provided by the U.S. Patent and Trademark Office.

For more information, contact the IP Development Center.

 

 

What Is a Trade Secret?

In most states a trade secret is a a formula, pattern, physical device, idea, process, compilation of information or other information that provides a business with a competitive advantage and is treated in a way that can reasonably be expected to prevent the public or competitors form learning about it, absent improper acquisition or theft.

When determining whether information qualifies as a trade secret under this definition, courts typically consider the following factors:

• The extent to which the information is known outside of the particular business entity
• The extent to which the information is known by employees and others involved in the business
• The extent to which measures have been taken to keep the information secret
• The value of the information to the business and how difficult it would be for others to properly acquire or independently duplicate the information.

A trade secret of another cannot be disclosed in your work or verbally.

For more information, contact the Intellectual Property and Technology Transfer Office.

 

Tangible Research Materials

Tangible research materials are any materials, substances, or articles created or used in research including, for example, genes and constructs from a molecular biology program, samples of novel photovoltaic solar cell materials, or composite gaseous diffusion membranes for fuel cells. In recent years, biological materials have proven particularly valuable since they may be cumulative of past developments and be self-reproducing, providing future supplies of the material and technology. A decision to release or accept a tangible research material can have far-reaching consequences since such materials are frequently cumulative of advances in technology and carry personal property rights which can severely limit the practice of future inventions made using the materials. Premature transfer of tangible research materials can constitute disclosure and/or public use of an invention and trigger statutory bars under the patent statute. They also provide an opportunity to the recipient to quickly advance work in the area and make inventions University staff would have expected themselves. Of greatest concern, however, would be the use of materials acquired by a University researcher without a legal right, thereby blocking future commercialization of the fruits of an entire research program. Careful attention to the right to use acquired material has become critical over the last 20 years with new law being created due to developments in the biotechnology field.

Tangible research materials made by faculty, staff, or students in the course of employment at the University of Delaware, or work directly related to professional or employment responsibilities, or work carried out on University time, at University expense, or with substantial use of University resources under grants or otherwise is the property of the University. Data obtained from the use of tangible research materials in research at the University legally belongs to the University, not to the individuals who produced the data. Tangible research materials made by non-employees working with a faculty or staff member under the above conditions are also the property of the University. If the University or faculty, staff, or students wish to make such materials available to the research community, such access is under the aegis of a material transfer agreement executed by the University. Questions or requests to review material transfer agreements for signature should be addressed to the Intellectual Property Center.

The Materials Transfer Agreement form is now available as a web form. To use this form, logon to http://www.udel.edu/webforms and find 'Materials Transfer Agreement Request' under the 'Blank' forms tab. Or, follow the link below - UD Material Transfer Agreement Web Form.

 

Data

The research activities of the University may create a broad range of intellectual property and tangible research materials, defined as data acquired or generated by faculty, staff, or students in the conduct of research. Under federal regulations, data includes all recorded information, regardless of the form or medium on which it is recorded, including writings, film, sound, pictorial reproductions, drawings, designs, or other graphic representations, manuals, forms, diagrams or flow charts, data files, data processing or computer programs, statistical records, and other research data. Data includes all information and materials commonly accepted as necessary to validate research findings. Frequently, data is used to define forms of intellectual property, such as patentable inventions or copyrightable works, and on occasion may itself constitute trade secret intellectual property.

Data obtained by faculty, staff, or students in the course of employment at the University, or work directly related to professional or employment responsibilities, or work carried out on University time, at University expense, or with substantial use of University resources under grants or otherwise is the property of the University. Data obtained from the use of tangible research materials in research at the University legally belongs to the University, not to the individuals who produced the data. Ownership rights in data may be subject to the specific terms of sponsorship or other agreements.

For more information contact the Intellectual Property Center