Government Pursuit of Patents Rights under Federally-Funded Research - Essay Example

Government Pursuit of Patents Rights under Federally-Funded Research and Development Contracts Introduction: A patent is a copyright or exclusive right that protects any new inventions, which take into account how things work, what and how they do it, as also how these new things are made. The owner is given the right to prevent others from making use of his invention, as well as protection against imports and sales of the invention without the permission of the owner. In United States, the term of a new patent is normally 20 years from the date on which the application for the patent is filed. The rights conveyed by a patent vary country-by-country. To get the patent from the government the invention must be new, having an inventive step, which earlier nobody had knowledge off, entirely a new thing, which can be used or made in some industry. The invention however should not be a scientific, mathematical discovery, theory or method, a literary, dramatic, musical or artistic work, or a way of performing mental act, playing a game or computer programs or doing business, an animal or plant variety, medical treatment / diagnosis as also things against public policy or morality. If the above points meet your new invention you can consider applying for a patent from the government. The patent has to be renewed every year from the 5th year up to 20 years of protection. (What is a Property, 2007). (What Are Patents, Trademarks, Service marks, and Copyrights, 2004). "Some other types of intellectual property rights are referred to as patents in some jurisdictions: industrial design rights are called design patents in some jurisdictions (they protect the visual design of objects that are not purely utilitarian), plant breeders' rights are sometimes called plant patents, and utility models or Gebrauchsmuster are sometimes called petty patents or innovation patents. This article relates primarily to the patent for an invention, although so-called petty patents and utility models may also be granted for inventions." (Patent, 2008). Laws Governing Patents: "The Commissioner of Patents & Trademarks has authority from Congress to establish rules and regulations for conduct of proceedings relating to granting and issuing of patents, known as "Patent Office Prosecution". These rules and regulations are set forth in Title 37' of the code of Federal Regulations." (Hildreth, 1998). The most important thing to consider before applying for a patent is how and when it should be protected, and application should be done before issuing any details or information to public regarding the invention. If this is not taken care of, the scope for protection of the innovation either under patent law or as a trade secret under the law relating to confidential information gets limited. "Whilst international conventions are important in protecting patent rights, such conventions deal primarily with procedural issues, while substantive patent law remains governed by national laws." "In contrast to copyright or the law of confidential information, patent protection does not arise automatically and the filing of an application for a patent, followed by its grant, is necessary in order to obtain protection." (Patents / Designs Law Articles). While applying for a Patent following points should be taken into account: 1) A patent must be filed by actual sole inventor or joint inventor of an invention. 2) If the inventor expires, his legal representative can apply for patent on his behalf. 3) If inventor is insane or legally incapacitated, his legal representative like guardian etc. can apply for patent on his behalf. 4) If there are joint inventors, and one of them does not want to apply, refuses for patent, or cannot be located, the other person can further proceed application of patent on first inventor's behalf. However, the first inventor must have agreed in writing to assign the invention to the other party or the party has proprietary interest in the invention. 5) The applicant of Patent should take care to note the date with appropriate witness and then immediately file the appropriate application for the patent. 6) The Patent applicant should also check the possibility of, or whether by any chance others previously know his invention. You can search in United States Patents & Trademark Office were you can find out availability or reveal related patents, after which the inventor can take proper decision in respect to whether or not to file an application for the patent. Every patent application must have specification, which describes completely about the invention made, and one claim should be there which defines legal writes of the applicant, as also inventors together with required fees should execute a declaration. "The conduct of proceedings relating to granting and issuing of patents is known as Patent office prosecution." (Hildreth, 1998). Government-Owned Patent Rights: Conditions Provided Under Law & Common Practice: "Government owned invention means an invention, whether or not covered by a patent or patent application, or discovery which is or may be patentable or otherwise protect able under Title 35, the Plant Variety Protection Act (7 U.S.C. 2321 et seq.) or foreign patent law, owned in whole or in part by the United States Government." (37 C.F.R.Part 404-Licensing of Government owned Inventions). Government-Owned Patents means Government getting hold of the title of certain invention, which also includes those developed from the part of rights from inventions, which are made under Government R&D contracts. The Patent system under the Government is also used to promote public use of inventions, which has been successful with federal support or research & development. The inventions, which are owned by Federal departments, are mostly licensed as deemed best in the public interest and the public agencies shall be given information about these available inventions. Custodian agencies having these inventions can grant fully or partially exclusive or even co-exclusive, licenses, which can be royalty-free or for royalties for other consideration. However, we can see that the non-exclusive licenses might be granted under Government owned inventions even without prior public notice of a forthcoming license. (37 C.F.R.Part 404-Licensing of Government owned Inventions). To encourage the commercialization of technology which takes place as a result of funds provided by the Government to Research & Development, (P.L. 96-517) , the Bayh-Dole Act evolved out of congressional interest in developing a uniform federal patent policy. Even though there were arguments in respect of the act, a general agreement was made that the policy adopted be supposed to encourage the utilization of inventions "Bayh-Dole, by providing universities, nonprofit institutions, and small businesses with ownership of patents arising from federally-funded R&D, offers an incentive for cooperative work and commercial application. Royalties derived from intellectual property rights provide the academic community an alternative way to support further research and the business sector a means to obtain a return on their financial contribution to the endeavor." Common Practice of Government Patent system: (1) The strategy and purpose of the Government is to use the patent system for promoting utilization of inventions, which arises from federally supported research and development. (2) To promote group effort among profitable concerns and nonprofit organizations, this includes universities. (3) To encourage the commercialization and public accessibility of the inventions made under Government industry and labor. (4) To make sure that Government obtains enough rights in respect of inventions made under federal support and to meet the needs of the Government as take care against public nonuse or unreasonable use of inventions. Bayh-Dole has pointed out the licensing of inventions provided which the government retained title mainly because of some past agency practices or due to public interest. "Title 35 U.S.C. 209 proscribes the licensing of this type of invention." The law allows the federal departments to offer nonexclusive, exclusive, or partially exclusive licenses under certain conditions and with specific rights retained by the government, which include the right to terminate the license if commercialization is not pursued as provided in the business plan or if the government needs the license for public use. The agencies are required to inform the public about the availability of a patent for licensing. (Schacht, 2000). In view of the fact that the Government was funding the R&D, it should obtain title to patentable inventions made by contractors and the contractors should retain a non-exclusive, royalty-free license. The Government normally would not transfer title to the invention to the inventing contractor. However, the Government will make such inventions accessible by non-exclusive license, under reasonable terms, to any party who wants to practice them. "Section 202 sets forth the disposition of rights between the nonprofit organization or small business firm and the Government. Specifically, this section provides that each nonprofit organization or small business firm may elect to retain title to any subject invention within a reasonable time after disclosure to the Government." The Government may receive title to any subject invention if not disclosed within a reasonable time, and the contractor must make a written election within two years after disclosure to the Federal agency whether to retain title to a subject invention. (Patent Rights in Inventions Made Under Federal Funding Agreements). Advantages of patent laws: The advantages of the existing patent laws in the US could be seen in terms of the fact that it is illegal for foreign manufacturers to produce a good or provide a service process using the patented American process and sell the goods in the US. It this was permitted the foreign producers would be flooding the markets with cheap substitutes for original American goods, which would have disastrous effects on local American goods. Process patents are an important part of American industry, and are protected by law. Intellectual property is worth between $5 trillion and $5.5 trillion. Our investments in intellectual property require absolute protection. (Blanchard, 2007). It was during the 1990s that the case of Diamond v. Chakravathy 447 US 303 (1980) brought into sharp focus that anything in this world could be patented, provided it meets the norms of patent laws. During this time, it is also laid down that Intellectual Property (IP), which is funded by the Government, becomes their property also. In such cases, it is seen that the Government in such cases, grants rights which are not the monopoly of any person or company, but could be used by all possessing such patents. With the passing of the Bayh-Dole Act, in 1978, it is seen that Universities and academic institutions that could actually have proprietary rights, or patents over their inventions which have been carried out with Government funding. It could be gathered that the Bayh Dole Act 1978 is a significant but not exclusive vehicle for growth and consolidation of Patents and Trademarks. (Gene Patents and Global Competition Issues, 2006). The aspects of exclusivity also weigh heavily on such patent processing. Under such circumstances, it is felt that it is necessary that products meet individuality norms in order to provide better service. However, it is also a matter of thought to consider whether University patents integrated with case studies actually retard, or speed up information technology growth and development. The benefits that accrue to start up companies, in terms of patents, would be in terms of technical collaboration with larger outfits, thus benefiting them both. However, it is also necessary that such incipient companies need to have necessary portfolios to match up to the capabilities of larger ones. In the area of software development, it is seen that even local laws may take precedence over patent law, as applicable in the case of Trade secret law; it would encourage invention in areas where patent law does not reach, and will encourage the sole innovator to proceed with the detection and utilization of his invention. Competition is fostered and the public is not dispossessed of the use of useful, but not patentable, invention. (US Supreme Court, 1974). In the above case, the local Ohio laws took precedence over patent laws and the higher Courts overturned the ruling of lower courts that allowed ex-employees to use company secrets for the benefit of Competitor Company. In this case, the employees were contracted by covenant to keep trade secrets confidential by covenant. However, they chose to use these secrets to perform similar products for competing Co. The court placed a permanent stay order on this move, stating that patent laws do not pre empts local laws. It is now proposed to discuss about the disadvantages of Patent laws in the US. The two main factors that seriously disadvantage patents are costs and length of patent protection. Costs: Cost factors global prosecution of patent would mount to more than a conservative estimate of $400,000. (Gene Patents and Global Competition Issues, 2006). It is seen that security reasons necessitate that investments in this crucial area does not affect its performance. Also the elements of trust and confidentiality of patent matters reign supreme and it often happens that employees or officers having access to patent information have a strong bargaining powers for salaries and benefits sufficient to assure their loyalty. However, it is seen that smaller companies may not be in a position to invest heavily on patent protection and prolonging trust and fidelity of employees, due to limited resources Thus, he would be more disposed to confine his research efforts and tend to confine his research efforts to himself and those few he felt he could trust without the decisive assurance of legal protection against breaches of confidence. As a result, organized scientific and technological research could become fragmented, and society, as a whole, would suffer. Sometimes patent laws may be incompatible, or in conflict with local laws on products and processes, ands the main question before the Courts would be to decide which aspect should take precedence. In such cases, the Courts need to take a holistic approach after considering all surrounding aspects and the build-up to the case. In such cases, it needs to be assessed what benefit and challenges would accrue to the litigating parties in different situations and need to give their verdict accordingly. Often the aspects of controversy would transcend geographical barriers and in the present globalized environment, it is possible for Courts to decide on patent issues linking different countries. Conclusions: The matter of patent is a major issue in global business and therefore needs to be carefully handled and exercised. Although the Patent Laws and other legislation may differ from country to country, the underlying factual representation of the disputes, the contention of the parties and other surrounding matters, need to be thoroughly examined and assessed by the Courts, including previously decided case laws, before any decisions are taken regarding the issue in hand. The aspects of patent laws in the US needs to undergo structural changes that positively address the grey areas of this field and braces itself for the challenges posed by fast changing rtechnogly , especially in the software and e-commerce technogly related areas. With millions of software related patent applications pending registration, it is necessary that the main aspects of patent, in terms of originality, usefulness, life of product or process, able to sustain future competition and making marketed contribution to improve qualitative and quantitative aspects of business needs to be focused upon. Patents are generally granted based upon the usefulness, and need for some product or process, in society, and sustenance, and not for being able to replace or substitute an existing product, which in the long run would turn counterproductive and cause detriment to the parties involved in the process. It is necessary to bring down costs of registering and maintaining patent during the product's useful life and create avenues by which greater benefit could be gained by its users over a period of time. Government patent needs to consider how financing of projects need to be made more specific and target oriented, and the use of existing legislation be made in order to make life crime free and without fear for the ordinary person on the streets. Reference What is a Property, (2007). Intellectual Property Office. Retrieved June 25, 2008, from http://www.ipo.gov.uk/whatis/whatis-patent.htm What Are Patents, Trademarks, Service marks, and Copyrights, (2004). United States Patent and Trademark Office. Retrieved June 25, 2008, from http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm Patent: Definition, (2008). Wikipedia: The Free Encyclopedia. Retrieved June 25, 2008, from http://en.wikipedia.org/wiki/Patent#Definition Hildreth, Ronald B. (1998). Patent Law: A Practitioner's Guide: Laws and rules Governing Patents, practising Law Institute. Retrieved June 25, 2008, from http://books.google.co.in/booksid=M9zR-ESYdNsC&pg=PT4&lpg=PT4&dq=+Laws+Governing+Patents+&source=web&ots=V81wD50UF3&sig=3mgZ6EEZXa4Q_Y9xmutqGbcy1WU&hl=en&sa=X&oi=book_result&resnum=5&ct=result#PPT4,M1 Patents / Designs Law Articles, Lawdit Reading Room. Retrieved June 25, 2008, from http://www.lawdit.co.uk/reading_room/room/view_category.aspcatcode=40 Hildreth, Ronald B. (1998). Patent Law: A Practitioner's Guide, practising Law Institute. Retrieved June 25, 2008, from http://books.google.co.in/booksid=M9zR-ESYdNsC&pg=PT4&lpg=PT4&dq=+Laws+Governing+Patents+&source=web&ots=V81wD50UF3&sig=3mgZ6EEZXa4Q_Y9xmutqGbcy1WU&hl=en&sa=X&oi=book_result&resnum=5&ct=result#PPT7,M1 37 C.F.R.Part 404-Licensing of Government owned Inventions, Justia US Law. Retrieved June 25, 2008, from http://law.justia.com/us/cfr/title37/37-1.0.4.10.2.html Schacht, Wendy H. (2000). RL 30320-Patent Ownership and Federal Research and Development (R&D): A Discussion on the Bayh-Dole and Stevenson-Wydler act, National Library for the Environment. Retrieved June 25, 2008, from http://digital.library.unt.edu/govdocs/crs/permalink/meta-crs-1294:1#_1_7 Patent Rights in Inventions Made under Federal Funding Agreements, Retrieved June 25, 2008, from http://www.abanet.org/contract/federal/randcomm/Bayh-DoleActpro.pdf Blanchard, Samuel A. (2007). American Patent System Need to be Strengthened, not Undermined, BNET: Find Articles. Retrieved June 25, 2008, from http://findarticles.com/p/articles/mi_qa5295/is_200704/ai_n21238228tag=content;col1 Gene Patents and Global Competition Issues: Protection of Biotechnology under Patent Law, (2006). Genetic Engineering & Biotechnology News. Vol.26. No.1. Retrieved June 25, 2008, from http://www.genengnews.com/articles/chitem.aspxaid=1163&chid=0 US Supreme Court, (1974). Find law. No.73-187. Retrieved June 25, 2008, from http://caselaw.lp.findlaw.com/cgi-bin/getcase.plnavby=case&court=us&vol=416&invol=470#480 Read More