FAQ: What is the difference between patents and trademarks?
Answer: Trademark requires prior use, so the IP involved is public before it is registered. In contrast, the IP involved in patents is held confidential before applying for the patent. If you disclose the IP to the public before filing, you will not be able to get a patent. Filing starts the patent process; use starts the trademark process. Software is often handled via copyright and trade secrets rather than patents.
FAQ: Who owns the intellectual property of employees of a university?
Answer: If the federal government paid for the research that created the intellectual property, it owns the IP, but gives control of it (title) to the university. This was set by the Bayh-Dole Act (Code of Federal Regulations, 2013/2018).
FAQ: What are the advantages of establishing your intellectual property legally?
Establishing ownership of IP has these advantages for your business:
- It is attractive to investors and customers
- It deters infringement lawsuits from others claiming some or all of your product is their idea.
- It may deter others from working on something similar.
- It adds value to your company’s assets and can increase your leveraging power.
FAQ: What type of search do you do to make sure no one else already has your idea patented?
The search for ideas that are already patented or in the process, that overlap with your invention that you wish to patent is called a Freedom to Operate (FTO) search. You can do an initial search yourself using the internet to see if it is worth investing in having an IP law firm conduct a more complex and in-depth search, called an IP assessment, which runs from $5000 to $40,000 (Chitale et al., 2022). If you are at a university, it is a point to negotiate, as to whether or not they will pay for this research. Universities may pay for some of the cost because it is in their interest to have the search done well. If your business infringes on an existing patent, the business could be in jeopardy and any investment they made could be forfeited.
Tip on IP and Grant Proposals
If you write an SBIR grant proposal to get seed funding for your life science business based on an idea related to your research, be sure to indicate sections of the SBIR grant proposal containing proprietary information.
Source: Arizona Commerce Authority. SBIR/STTR Intellectual Property Considerations.