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Patents and Other Legal Protection

A patent gives the holder the right to exclude others from making, using, selling, offering to sell and importing any patented invention. Note, however, that a patent does not provide the holder any affirmative right to practice a technology, since it may fall under a broader patent owned by others; instead, your patent only provides the right to exclude others from practicing it. Patent claims are the legal definition of an inventor’s protectable invention.
An invention is patentable if it is novel, non-obvious and useful (novel meaning new). Non-obviousness is achieved if someone who is skilled in the art would not have thought of the idea easily. A new and useful process, machine, manufacture or composition of matter, or any new and useful improvement may be eligible for patent protection. Methods making use of concepts and ideas may be eligible for patent protection. On the other hand, problems, concepts and ideas are not patentable.
Patentable subject matter includes processes, machines, compositions of matter, articles, some computer programs and methods (including methods of making compositions, methods of making articles, and even methods of performing business).
No; not in its natural state. However, a natural substance that has never been isolated or known may be patentable in some instances, but only in its isolated form (since the isolated form had never been known before). A variation of a naturally occurring substance may be patentable if an inventor is able to demonstrate substantial non-obvious modifications that offer significant advantages in using the variant.
The USPTO is the federal agency, organized under the Department of Commerce, which administers patents on behalf of the government. The USPTO employs patent examiners skilled in all technical fields in order to appraise patent applications. The USPTO also issues federal trademark registrations.
Under U.S. law, an inventor is a person who takes part in the conception of the ideas in the patent claims of a patent application. Thus, inventorship may change as the patent claims are changed during prosecution of the application. An employer or person who furnishes money to build or practice an invention is not an inventor. Inventorship may require an intricate legal determination by the patent attorney prosecuting the application.
Technology Commercialization Services (TCS) is responsible. Its staff includes a Patent Agent and TCS also contracts with outside patent counsel for patent protection, thus assuring access to patent specialists in diverse technology areas. Inventors work with the patent counsel in drafting the patent applications and responses to patent offices in the countries in which patents are filed.
In the United States, one can file a provisional patent application to cover an invention. A provisional patent establishes a priority date with the USPTO, but the USPTO does not begin the examination process. It gives the inventor, via UConn, a one-year window in which to file a non-provisional patent application. During this time the inventor can further develop the invention and with TCS, determine marketability, acquire funding or capital or seek licensing agreements. If a non-provisional patent is not filed within one year of the provisional application, then this application and priority date are abandoned.
A patent attorney or a patent agent generally drafts patent applications. The patent attorney generally will ask you to review an application before it is filed and will also ask you questions about inventorship of the application claims. At the time an application is filed, the patent attorney will ask the inventor(s) to sign an inventor declaration and an assignment under which the inventor(s) assigns his or her rights in the patent to the University of Connecticut.Within 18-36 months, depending on the technology, the patent attorney will receive written notice from the USPTO as to whether the application and its claims have been accepted as patentable in the form as filed. More often than not, the USPTO rejects the application because either certain formalities need to be cleared up or claims are not patentable over the prior art. The letter sent by the USPTO is referred to as an office action.If the application is rejected, the patent attorney must file a written response, usually within three to six months. Generally the attorney may amend the claims and/or point out why the USPTO position is incorrect. This procedure is referred to as patent prosecution. Often it will take two USPTO office actions and two responses from the attorney before the application is resolved. The resolution can take the form of a USPTO notice that the application is allowable (and they issue a patent). During the prosecution process, input from the inventors is often needed to confirm the patent attorney understands the technical aspects of the invention and/or the prior art cited against the application.
The USPTO holds patent applications confidential until published by the USPTO, which is 18 months after initial filing.
Generally patents are issued within several years after application, though inventors in the biotech and computer fields should plan on a longer waiting period. During this period a patent is pending.
Typographical errors may be corrected by filing a certificate of correction. When a patent is defective in certain aspects, the patentee may apply for a reissue patent. New matter cannot be added to the invention. A reissue patent is granted following the examination of the changes made to the invention. It replaces the original patent and is granted only for the remaining years left from the unexpired term.
Yes. Between USPTO filing fees and associated attorneys costs, obtaining a patent in just the United States can cost between $10,000 and $30,000. International patent filings are even more expensive as they cover a larger number of countries and often involve foreign attorneys and translators. Patent Cooperation Treaty (PCT) filings, plus filings in major industrialized nations, have been known to cost well over $100,000. Additionally, there are annual maintenance fees for all patents, pushing the cost over the lifetime of a patent even higher.
All United States utility patents issued are subject to the payment of maintenance fees that must be paid to maintain the patent in force. These fees are due at 3.5, 7.5, and 11.5 years from the date the patent is granted.
Foreign patent protection is subject to the laws of each individual country, although in a general sense the process works much the same as it does in the U.S. In most foreign countries, however, an inventor will lose any patent rights if he or she publicly discloses the invention prior to filing of the first (or “priority”) application in one country. In contrast, the U.S. has a narrowly defined one-year grace period after publication or presentation in which a patent may be filed. However, even in the U.S., it is far better to file before any public disclosure occurs.
Although an international patent does not exist, an international agreement known as the Patent Cooperation Treaty (PCT) provides a streamlined filing procedure for most industrialized nations. For U.S. applicants, a USPCT application is generally filed one year after the corresponding U.S. application (either provisional or regular) has been submitted. 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.
The PCT application provides two advantages. First, it delays the need to file costly foreign applications until the 30-month date, often after an applicant has the opportunity to further develop, evaluate and/or market the invention for licensing. Second, the international preliminary examination 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.Another important international treaty called the Paris Convention permits a patent application filed in a second country (or a USPCT application) to claim the benefit of the filing date of an application filed in a first country, provided that so-called “convention applications” are filed in foreign countries (or as a USPCT) within one year of the first filing date of the U.S. application.
Utility patents are granted for a term that begins on the date of the grant and ends 20 years from the date of the non-provisional patent application was first filed. Inventors can lose their rights when periodic maintenance fees are not paid or when the term expires.
After a patent has expired, anyone may either make, use, offer for sale, sell or import the invention. This is without permission of the patentee (provided that matter covered by other unexpired patents is not used).
Potential commercialization partners (licensees) frequently require patent protection to protect the commercial partner’s often sizable investment required to bring the technology to market. Patent applications are not possible for all UConn intellectual property, due to their expense. We carefully review the commercial potential of an invention before investing in the patent process. However, because the need for commencing a patent filing usually precedes finding a licensee, we look for creative and cost-effective ways to seek early protection for as many promising inventions as possible.
TCS and the inventor(s) together discuss relevant factors in deciding whether to file a patent application. Ultimately, TCS makes the final decision as to whether to file.
Generally, the invention will be jointly owned by UConn and the other institution or company. Each inventor will assign his or her rights to the employer. TCS will work with the other institution to decide on management of the invention. Usually, if the other institution is a university or research institution, TCS will enter into an “inter-institutional” agreement that provides for one of the institutions to take the lead in protecting and licensing the invention, sharing of expenses associated with the patenting process and allocating any licensing revenues.
TCS may accept the risk of filing a patent application before a licensee has been identified. After UConn’s rights have been licensed to a licensee, the licensee generally assumes the patenting expenses. At times TCS must decline further patent prosecution after a reasonable period (often two or three years) of attempting to identify a licensee.
Infringement of a patent consists of the unauthorized making, using, offering for sale or selling any patented invention within the covered country during the term of the patent. A patentee can sue the infringer, ask for an injunction to prevent the continuation of infringement and ask for an award of damages.
Contact TCS, where staff will work with you and the possible infringer.
A copyright is a form of protection provided by the laws of the U.S. and other countries to the authors of “original works of authorship.” This includes literary, dramatic, musical, and artistic and certain other intellectual works as well as computer software. This protection is available to both published and unpublished works. The Copyright Act usually gives the owner of copyright the exclusive right to conduct and authorize various acts, including reproduction, public performance and making derivative works. Copyright protection is automatically secured when a work is fixed into a tangible medium such as a book, software code, video, etc. In the United States, copyright protection lasts the lifetime of the author plus 70 years. In some instances, TCS registers copyrights, but generally not until the commercial product is ready for production and distribution/sale. All new software and source code should be disclosed as with any new invention and will be processed and managed by TCS.
Although copyrightable works do not require a copyright notice, we do recommend that you use one. For works owned by UConn use the following notice: “© 20XX University of Connecticut. All rights reserved.”
We recommend that you contact TCS. You can also review material at: http://www.lib.uconn.edu/copyright/.

A trademark includes any word, name, symbol, device or combination that is used in commerce to identify and distinguish the goods of one manufacturer or seller from those manufactured or sold by others, and also to indicate the source of the goods. In short, a trademark is a brand name.A service mark is any word, name, symbol, device or combination that is used or intended to be used in commerce to identify and distinguish the services of one provider from those of others and to indicate the source of the services. It is not necessary to register a trademark or service mark to prevent others from infringing upon the trademark.

Trademarks generally become protected as soon as they are adopted by an organization and used in commerce (even before registration). With a federal trademark registration, the registrant is presumed to be entitled to use the trademark throughout the U.S. for goods or services for which the trademark is registered. UConn has trademark protection on items such as sports logos, mascots, emblems and images of university events.