FAQ: What is the difference between patents and trademarks?
Answer: The IP that is used in the trademark must be made public and used before a trademark is registered. In contrast, the IP involved in patents is confidential before applying for the patent. If you disclose the IP to the public before filing your application, 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 when the inventor is an employee of a university?
Answer: If the federal government paid for your research performed at a university and if that research created intellectual property, the government owns the IP but gives control of it (the title) to the university. This was set by the Bayh-Dole Act (Code of Federal Regulations, 2013/2018). Occasionally, if the university is not interested in owning or developing the idea, you may be able to negotiate ownership for your idea.
Source: Code of Federal Regulations. Bayh-Dole Regulations. NIH Grants & Funding. July 1, 2013.
FAQ: What are the advantages of establishing your intellectual property legally?
Answer: 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 business’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?
Answer: The search for overlapping ideas that are already patented or in the patent process 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 $5,000 to $40,000 (Chitale et al., 2022). If you are at a university, whether or not they will pay for this research is a point to negotiate. 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.
Source: Chitale S, Lawler C, Klausner A. So you want to start a biotech company. Nat Biotechnol. March 2022;40(3):296–300. doi:10.1038/s41587-022-01239-9.
Tip on IP and Grant Proposals
If you write an SBIR grant proposal to get seed funding, be sure to indicate any proprietary information in your proposal.
Source: Arizona Commerce Authority. SBIR/STTR Intellectual Property Considerations.