Why even ask about Intellectual Property?
If you have never before dealt with the concept of intellectual property, it may seem daunting. In fact though, intellectual property is simply part of your daily life. You have surely created intellectual property yourself, including nearly every journal article and email that you write. This pamphlet will briefly explain the different types of intellectual property and how they interact in the university environment.
Remember that any time you seek further answers about intellectual property in the university environment, you can call on the staff of ORSP and we will gladly help you.
What is Intellectual Property?
Intellectual property is typically divided into four major areas -- Patent, Copyright, Trademark, and Trade Secrets -- each of which provides different legal protection.
What do Patents do?
Patent law ensures protection to the inventor(s) of new and useful processes, machines, manufactured items, compositions of matter, or improvement thereon.
In some cases less common at CSU Stanislaus, patents can also be obtained on designs and on plant matter.
Essentially, federal patent law provides the owner of an issued patent with the right to exclude others from making, using, or selling an invention that is "claimed" in the patent.
- In some cases, patent law provides protection beyond the literal wording of the claims in an issued patent.
- On the other hand, you may be able to obtain a patent on an improvement of someone else's idea (e.g., by showing that the system can be wireless). In this case your patent will give you exclusive rights to the improvement only, not to the underlying invention which may either belong to someone else if under patent protection or to no one in particular if part of the "public domain."
Patent protection is not automatic. Patents are issued by the government of a country and are geographically limited to the country where issued. The relevant agency in the U.S. is the United States Patent and Trademark Office ("USPTO"). A patent issued by the USPTO is valid for twenty years from the application filing date. After that the invention becomes "public domain" and belongs to no one in particular. See, USPTO homepage: http://www.uspto.gov
- A patent applicant must apply to each country where protection is sought.
The patent application process is extremely lengthy, expensive, and complex.
ORSP manages the patent process (called "patent prosecution") for CSU Stanislaus inventions. ORSP also manages licensing of CSU Stanislaus inventions, and distributes to the inventors their fair share of any resulting royalties.
What is a Copyright?
Copyright law protects original works created in a tangible format.
- Typical examples of works you may create that are copyrightable are books, journal articles, videos, other recordings, and computer software.
Federal copyright law provides the owner of the copyright with the exclusive right to copy, distribute, perform, and make derivative works.
Ideas cannot be copyrighted. Only the actual expression of your idea in a fixed form is protected by copyright law. If someone uses your exact idea for a research project on the Battle of Normandy, and she interviews the same subjects and takes pictures of the same landscape, but does not use your words or your pictures, you may or may not have legal redress, but not under copyright law. On the other hand, if the other researcher uses some of your words or pictures but in a different format, you may have a copyright infringement claim for derivative work.
Copyright protection, unlike the patent process, is automatic upon creation of a copyrightable work. In other words, if you could have registered your copyright with the United States Copyright Office, but chose not to do so, you still own the work. On the other hand, unlike the patent process, copyright registration is inexpensive and simple. See, U.S. Copyright Office homepage: http://www.loc.gov/copyright
- Copyright registration becomes necessary if you wish to file a legal action against someone who is infringing your copyright.
Copyright, like patent, is limited by time, but the term is much longer, lasting beyond your lifetime.
A copyright owner may license its rights to others.
What is a Trademark?
A trademark is a commercial gimmick used to identify a product (or service, called a "service mark"). Trademarks include words, names, symbols, and sounds, often with particular pitches, colors, or other defining characteristics that consumers come to associate with a product (e.g., due to successful advertising by the company, the phrase "Just do it," will conjure up for the average consumer positive images of Nike products).
Trademarks are like patents in that they are granted by the government, and they are like copyrights in that they can exist even if not actually registered. Trademarks are covered both by federal and by state law.
Trademark law is applied to domain name registration. Be careful not to utilize someone else's trademark in your domain name lest you find yourself the target of a legal action.
What is a Trade Secret?
A trade secret is a concept that derives competitive economic value in the marketplace from its very secrecy and which is deliberately maintained as confidential by its owner.
Typically, a concept that can be protected by trade secret can alternatively be protected by patent. It is an either/or decision though, since patent applications are eventually published and patented inventions eventually become public domain. A trade secret may be maintained indefinitely, but is only a trade secret for as long as it is kept entirely confidential.
- A prime example of a company choice to pursue trade secret rather than patenting is the Coca-Cola formula. By maintaining the formula as top secret, the Coca-Cola company has managed to control the formula indefinitely, whereas a patent on the formula would have expired long ago.
The creation of trade secrets is rare and generally discouraged in the university environment. In most cases, a veil of secrecy is considered antithetical to our mission of bringing research to the public. Do not, however, confuse this with the common and useful practice of filing a patent application before publicly disclosing research results, since that entails only a very brief period of confidentiality before publication.
What about Software?
Occasionally your research product may be covered by more than one area of intellectual property. A typical example is software, which can be both patented and copyrighted. Again, the copyright aspect is automatic, yet it covers only the tangible expression of source and object code. To protect the algorithms, ideas, layout, or methods, you will need a patent. Due to its joint nature, software is considered first under the UC Patent Policy and should always be disclosed to OIPA.
What if you want to use someone else's Intellectual Property?
Since intellectual property law confers rights upon the owner of an invention or work, you may not be able to use it freely. There are few hard rules, but some guidelines are useful. Your department or library can help you obtain necessary permissions.
Some uses may fall within the definition of "Fair Use," a legal concept for which a court considers four main balancing factors:
- The character of your use
- The nature of the original work
- The amount of the original work that you appropriate for your use
- The effect of your use on the market for the original work
The test for using someone else's patented invention is different and more complex. Talk to your department about any questions, and feel free to contact the staff of ORSP.
What about Consulting outside CSU?
You are generally welcome to act as a private consultant in order to increase your income and exposure, keeping in mind that your first obligation is as a CSU Stanislaus professor. Always check with your department to determine the number of days that you are permitted to consult and any other topics of which you should be aware.
Be certain that your consulting does not interfere with your work at CSU Stanislaus.
Who owns your Intellectual Property and what can you do with it?
Faculty own the copyright in their scholarly works (such as textbooks and course syllabus), but not in works which are the outcome of sponsored research or were created using CSU Stanislaus resources. Copyrightable software would need to be disclosed to ORSP since it??s potentially patentable.
Although the university owns most patentable inventions and some copyrightable works created by its faculty and staff, this does not at all mean that such creations are outside your control. On the contrary, you are in most cases free to use your own research and to publish results as you deem appropriate. You are also encouraged to share your thoughts and efforts on potential marketing of your invention with the staff of ORSP.
Finally, keep in mind that intellectual property serves many purposes. The staff of ORSP is happy to help with these efforts and to refer you to our other colleagues in the Office of Research & Sponsored Programs as appropriate to your needs.