Intellectual Property Primer
Introduction
Intellectual property (IP) is a term that encompasses all forms of creativity that are protected either under statutes or by common law. It includes inventions, discoveries, know-how, show-how, processes, unique materials, copyrightable works, original data, and other creative or artistic works. IP also includes the physical embodiment of intellectual effort (e.g., models, machines, devices, apparatus, instrumentation, circuits, computer programs and visualizations, biological materials, chemicals, other compositions of matter, plans, and records of research).
IP can be protected by statute or legislation, such as patent, copyright, trademark, service mark, mask work or by plant variety protection certificate and confidentiality agreements. Often a specific technology is protected using multiple mechanisms. For example, some computer software can be protected by copyright, patent, trade secret, trademark, and contracts.
IP is an asset that could add great intellectual and/or monetary value to the university, the creators of the property, and the region. The university is required by state and federal statutes, industrial research agreements, and other research relations to manage the IP that results from the university's research programs.
Patents
See MSU Patent Handbook [PDF]
See the Patents section of our Frequently Asked Questions page
A patent can be obtained for any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. A patent excludes others from making, using, or selling the patented invention for twenty years.
Ownership of Inventions
The university has the right to own inventions made by its faculty, staff, students, or others using university resources such as facilities, equipment or funds controlled by the university.
Determination of university ownership rights in an invention requires a thorough evaluation of the facts and circumstances. Following evaluation by MSUT, the inventor receives a written statement of the university's decisions regarding its ownership interest.
Invention Disclosure
Inventors should complete an Invention Disclosure Form [Word] whenever something new and useful is conceived or developed, or when unusual, unexpected, or unobvious research results are achieved. Prompt disclosure is important to avoid possible loss of patent protection. If there are questions concerning the university's ownership interest in an invention, the invention should be disclosed.
The university uses a standard Invention Disclosure Form [Word], available directly from MSUT or downloadable here. The information requested ensures the disclosures are complete, fully documented, and properly submitted. Before submission to MSUT, the form should be routed to, reviewed, and signed by the inventor's Unit Executive Officer.
An invention disclosure form should also be used for computer software that will be protected by copyright when patent protection is not available or not necessary to commercialize the software.
Inventorship
Inventorship is explained by the USPTO in the following statements: "The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor... Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant (except for simultaneous conception and reduction to practice). One must contribute to the conception to be an inventor.”
So, not all authors of a manuscript describing the invention qualify as inventors. Supervisors and people who worked to reduce the invention to practice do not necessarily qualify as inventors either. Only those who have made essential, independent, conceptual or reduction to practice contributions to the ultimate working invention are legal inventors.
Legal inventorship is officially determined after the patent application is prepared and the scope of the invention (defined in the patent claims) is determined. Inventorship can change even during the evolution of the patent application process, as the scope of the claimed invention changes. MSUT retains outside patent counsel who make the final determination regarding inventorship.
Valuable contributions made by an individual not deemed an inventor may be recognized through a sharing arrangement.
Publications, Presentations & Patentability
Publications and other disclosures can prevent patenting. For this reason it is very important to complete an invention disclosure form prior to presenting an invention. A publication that discloses enough information to enable someone with knowledge or skill in the subject matter to make and use the invention can make it unpatentable.Under U.S. law, there is a one-year grace period after some types of publication during which a U.S. patent application can be filed. However, university Patent Policy states that all university inventions should be disclosed to the university prior to disclosing via any other form of communication (e.g., publications, presentations, or communications with third parties.)
The inventor must stake a claim to his or her invention by filing for patent protection before the invention is made known to the public. Otherwise, the published invention is free for anyone to use.
Publications under U.S. laws and most foreign laws include more than the traditional printing of manuscripts and books. Publications can include presentations, abstracts, conference proceedings, poster presentations, lecture notes, grant applications, dissertations, theses, handouts, non-confidential correspondence, e-mails, slides (in some situations), offers for sale, and information made available on the Internet.
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 that are fixed in a tangible form of expression.
In general, copyright gives the copyright owner the exclusive right to do, and authorize others to do, the following: reproduce the work; prepare derivative works; distribute copies to the public by sale or other transfer of ownership, or by rental, lease or lending; and to perform and display the work publicly.
Copyright does not protect ideas, concepts, systems, or methods of doing something. You may express your ideas in writing or drawings and claim copyright in your description, but copyright will not protect the idea itself as revealed in your written or artistic work. Others can freely use the underlying ideas and concepts in a copyrighted work.
Copyright also does not protect names. Some names may be protected under trademark law.