Protecting Your Work
The different types of protection are referred to as intellectual property. MILO evaluates your work to determine what kinds of legal protection are available and should be pursued. This guide explains:
- What Intellectual Property (IP) is
- Who owns IP at McMaster and affiliated hospitals
- Why you should protect your IP
- Outlines the basics of patents
Intellectual property (IP) simply defined is any form of knowledge or expression created with one's intellect. It includes such things as inventions, computer software, trade-marks, literary, artistic, musical or visual works and even "know-how."
Forms of Intellectual Property protection can include patents, copyright, trade-marks, and trade-secrets.
The initial ownership of intellectual property, in most cases, resides with the creator of that intellectual property. However, when such IP is created in the course of your employment at the university, Hamilton Health Sciences, or St. Joseph’s Healthcare Hamilton, and in accordance with McMaster’s Joint Intellectual Property Policy, the IP is owned by the university and /or the hospital. You will be asked to assign your rights to the university for commercialization. Any revenues generated from such commercialization are shared with the creators.
It should be noted, that McMaster, as with many other universities in North America allow their faculty members to retain copyright in their academic and literary works.
Most inventions and software created at McMaster and the affiliated hospitals are based on research primarily sponsored by some form of government funding. Therefore, there is some obligation on those who own that intellectual property to make efforts to ensure that it is utilized for the benefit of the public at large. That, in most cases, requires protection and commercialization through, if possible, a Canadian-based firm. Technology transfer offices, such as MILO, have been established at most research-intensive universities to provide advice and services to the university community in order to facilitate the protection and commercialization of intellectual property.
Often, patents or other forms of IP protection can provide a strong economic incentive for a company to license McMaster technology. Patents give the right to exclude others from practicing the invention for up to twenty years. This period of exclusivity presents a barrier to entry to their competitors, allowing the company that licenses the invention from McMaster sufficient time to recoup its investment in developing and marketing the product or technology.
Some technology lends itself to copyright protection. This technology is typically software, educational materials, multimedia presentations, etc. In this case, copyright protection is already in place at creation.
A patent gives the holder the right to exclude others from making, using, selling, offering to sell, and importing any patented invention. Thus, a patent does not necessarily provide the holder any affirmative right to practice a technology. Instead, it provides the right to exclude others from practicing it.
By law, in order to be patentable, an invention must be novel, it must not be obvious to a person skilled in the field of the invention, and it must have a use.
Products, processes, machines, manufactures or composition of matter, or any new and useful improvement of any of these (such as new uses of known compounds), are patentable subject matter.
Novel genetically engineered lower life-forms and new microbial life-forms can be patented in some jurisdictions, such as the United States and Canada, but not in others. Novel genetically engineered higher life-forms are patentable subject matter in some jurisdictions including the U.S., but have been found by the Supreme Court of Canada not to be patentable subject matter in Canada.
Methods of medical treatment are also patentable in some jurisdictions, such as the United States, but not in others, including Canada. Scientific theorems or principles, and methods of doing business or playing games are not patentable subject matter in Canada.
Provided that software can meet the usual criteria for patentability, it can be patented in some jurisdictions. In addition, software is protected by way of copyright.
Note, an invention may still have financial value even if it is not patentable. If you've discovered something new and useful, please contact MILO to determine if your invention has commercial potential.
Patents do not cross national boundaries and, at present, there is no such thing as an international or worldwide patent. Harmonization of the world's patent laws is progressing rapidly, but in general each country grants its own patents based on its own standards.
In Europe it is possible at the European Patent Office to file a single application (in English, French or German) to protect one's rights in up to 27 European countries. A single regional patent is granted but is not effective until it is ratified in each National Patent Office selected by the applicant by paying the appropriate national fees, translating into the local language, and meeting local requirements as to form of claims, etc.
A patent application must be filed in each country where you wish to have protection. Under the Paris Convention of 1887, the date of the first filed application for a specific invention becomes the effective filing date for all subsequent applications for the same invention filed in other countries. However, subsequent applications for the invention must be filed within one year of the original filing date.
The Patent Cooperation Treaty (PCT) offers an alternative mechanism of initiating steps to protect foreign patent rights by deferring some of the major expenses for up to 30 months from the initial patent filing. PCT provides two main advantages. First, it delays the need to file costly foreign applications until the 30-month date, which gives an applicant the opportunity to further develop, evaluate and/or market the invention for licensing. Second, an international preliminary examination is issued, which often allows an applicant to simplify the patent prosecution process by having a single examiner speak to the patentability of the claims. This not only provides an early indication of the likelihood of the patent being issued, but can also save significant costs in prosecuting foreign patent applications in the long run.
Patent Application Process
Patent applications are generally drafted by a patent agent. MILO works with several patent law firms to draft and prosecute an application describing your invention in the Canadian and U.S. patent offices as well as the associated foreign offices, if foreign protection is pursued. Throughout the drafting process the inventor(s) are expected to be in close contact with MILO and the patent agent to provide additional details and answer questions regarding the scope of the invention. The inventor(s) are generally asked to review the application before it is filed. MILO will also confirm the appropriate individuals are listed as inventors of the claims as written in the final patent application. At the time an application is filed, all inventors will be asked to sign an Inventor's Declaration and an Assignment, which evidences the inventor's duty to assign the patent to the University.
After the application has been filed as a PCT or US utility, in about one to two years, depending on the subject matter and complexity of the invention, MILO will receive written notice from the patent office as to whether the application and its claims have been accepted in the form as filed. More often than not, the patent office rejects the application because either certain formalities need to be cleared up, or the claims are not patentable over the "prior art" (anything that workers in the field have made or publicly disclosed in the past). This written notice from the patent office is referred to as an Office Action. If the application is rejected, the patent agent must file a written response, usually within three to six months. Generally the agent will amend the claims and/or point out why the patent office’s objections are incorrect. This procedure is referred to as patent prosecution. Often it will take two or more Office Actions and corresponding responses by the patent agent on behalf of the university before the objections are resolved. The resolution can take the form of a PTO notice that the application is approved, i.e. the patent is issued. During this process, input from the inventor(s) is often needed to confirm the patent agent’s understanding of the technical aspects of the invention and/or the prior art cited against the application. The patent office holds patent applications confidential until published 18 months after initial filing.
Prior Art and Public Disclosure
Prior art, as it relates to patent law, is usually defined as any information that relates to your invention that has been made publicly disclosed in any form before the filing date of your patent application. Prior art includes all written publications in scientific journals, conference handouts, poster presentations, books, newspaper articles; in any country and language. Prior art also includes orally presented material, such as discussions at conferences, disclosures to competitors or customers, certain disclosures to colleagues in a field, and other public statements.
Thus, an inventor may under certain circumstances create prior art against themselves (thereby jeopardizing patent rights) by publicly disclosing an invention prior to the filing of a patent application.
It becomes difficult to protect your invention once it is published in a journal or presented at a conference. In order to obtain foreign patent protection, a patent application must be submitted before publication. If the market for your invention is global, this is an important consideration as you plan publications. After filing a patent application, you can exhibit or publish your work without the loss of patent protection for the material in the application.
After publication, your invention is no longer patentable outside Canada and the U.S., where there is one year from the date of public disclosure to file for a Canadian or U.S. patent.
Time Line of the Patenting Process at McMaster
In general, if MILO determines that your invention should be protected by a patent, the university will apply for a provisional patent application in the US. This allows us to obtain sufficient protection to market the technology for up to twelve months, while deferring some costs. During this 12-month period, the patent application is not examined at the patent office. A PCT application is generally filed one year after the initial U.S. provisional application 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, within 30 months of the earliest claimed filing date.
On average, it takes three years from the date of initial filing for a patent application to be granted in the U.S.; although inventions in the biotech and computer fields can take five years or more.
Once a patent is issued, it is enforceable for 20 years from the initial filing of the application, as long as maintenance fees are paid.