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(Message started by: KDoyle on Jan 14th, 2005, 1:41pm)

Title: I have an intellectual property... what to do?
Post by KDoyle on Jan 14th, 2005, 1:41pm
As a result of my master's dissertation, I have developed a successful "program" that could be taught to professionals within the field. I have been approached to write an article about this new system/program and, furthermore, I have been consulted to farm the "program" techniques as an outside, consultant/hired corporate trainer.

I am certain the I would need to protect the idea/program but have no idea how to. Any advice... please keep in mind that although I am quite resourceful, I have very tight financial resource.

Thanks!

Title: Re: I have an intellectual property... what to do?
Post by Isaac Clark on Jan 14th, 2005, 4:21pm
A masters dissertation might constitute a publication that
would be prior art to a filing outside the US, and also as
prior art inside the US 1 year after publication.  If so, that would
seem to eliminate the obvious possibilities of protecting
your techniques (namely applying getting a patent).

But there are some warts in US law on the issue so perhaps
its worth discussing things with an IP professional.

Title: Re: I have an intellectual property... what to do?
Post by marucoke on Jan 30th, 2005, 12:00pm
It is quite possible that the university might own the rights to your invention.  Please check with your university's technology transfer office.  When I was in graduate school, I was required to sign such a form assigning any IP rights in anything I created while being employed by the university.  (I was a teaching assistant.)  I basically was told that I had to sign the document or else I couldn't get paid.

Title: Re: I have an intellectual property... what to do?
Post by Chris Meuller on Mar 2nd, 2005, 1:00pm

on 01/30/05 at 12:00:55, marucoke wrote:
I was required to sign such a form assigning any IP rights in anything I created while being employed by the university.  (I was a teaching assistant.)


What if you came up with something independent of the U.?

Title: Re: I have an intellectual property... what to do?
Post by Jonathan on Mar 2nd, 2005, 3:30pm

on 01/14/05 at 16:21:11, Isaac Clark wrote:
A masters dissertation might constitute a publication that
would be prior art to a filing outside the US, and also as
prior art inside the US 1 year after publication.  If so, that would
seem to eliminate the obvious possibilities of protecting
your techniques (namely applying getting a patent).

But there are some warts in US law on the issue so perhaps
its worth discussing things with an IP professional.


To further expand on Mr. Clark's correct statement that the dissertation may constitute prior art, the general rule for an academic dissertation to be considered prior art is that it be catalogued at a library and at least accessible to that portion of the public that would be interested in seeing it. For example, a person of skill in the involved art.

Refer to MPEP 2128.01 for more details (the beginning portion of which is reproduced below):

2128.01 Level of Public Accessibility


A THESIS PLACED IN A UNIVERSITY LIBRARY MAY BE PRIOR ART IF SUFFICIENTLY ACCESSIBLE TO THE PUBLIC

A doctoral thesis indexed and shelved in a library is sufficiently accessible to the public to constitute prior art as a "printed publication." In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). Even if access to the library is restricted, a reference will constitute a "printed publication" as long as a presumption is raised that the portion of the public concerned with the art would know of the invention. In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978).





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