Intellectual Property 101

A patent is an exclusive set of rights granted by a government for a limited period of time in exchange for a detailed description of a protected invention. In the U.S., a patent provides the holder the right to exclude others from making, using, selling, offering to sell, and importing the patented invention. An invention is defined by one or more claims, each of which clearly and concisely defines the scope of the subject matter being protected.

Universities like NYU have legal, policy, and contractual requirements to evaluate and potentially pursue patent protection and commercialization for inventions developed using federal and corporate funds. In some cases, patent rights are licensed to a company following research support and can be an important way to establish effective collaboration with industry. Patents can also be a critical element for a company to invest in when commercializing research results for use by the public.

To be patentable, an invention must be new, useful, and not obvious. There are three types of patents:

• Design
  A design patent protects a non-functional, novel, original and ornamental design for an article of manufacture.
• Plant
  A plant patent protects new and distinct asexually reproducible plant varieties.
• Utility
  A utility patent protects any new and useful process, machine, article of manufacture, composition of matter, or any new or useful improvement thereof.
  • Processes may include methods (unique sequences of steps) of engineering a product
  • Machines may include a mechanical device
  • Article of manufactures may include hammers, ceramics, and cast metal articles
  • Compositions of matter may include a chemical compound

The total cost to file and prosecute a U.S. patent can range from $20,000 to $40,000, and can frequently be higher. Costs to obtain foreign patents may be five to ten times higher, depending on the number of countries where applications are filed. Often NYU accepts the risk of filing a patent application before a licensee has been identified. In some cases, after university patent rights have been exclusively licensed to a licensee, the licensee reimburses past patent expenses and supports all future costs.

If TOV decides to seek patent protection, there is no personal financial investment required of any innovator(s)

Submission of a TOV Innovation Disclosure Form (IDF) is the first step to confidentially report an innovation for commercialization. The TOV team will evaluate the innovation for the potential for commercialization and for the potential to be protected by the applicable type of IP (e.g., patent or copyright protection). The TOV team includes IP specialists and business development managers who have the expertise and experience to navigate this process with you. TOV will take the lead to secure IP assets including all legal and administrative expenses associated with obtaining patent, copyright, and/or trademark protection.  Together, you and a TOV teammember will meet about your innovation, for example:

• To ensure that TOV understands the innovation;
• So that TOV may explain and answer any questions you may have about your rights and interests as an NYU or NYU Langone Health innovator according to the applicable IP Policy;
• To discuss the next 8-10 months of research planned for the further development of the innovation;
• Develop a plan for commercialization and securing IP protection, should the innovation be ready.

Copyright is a category of IP protection granted under the law to creators of “original works of authorship.” The U.S. Copyright Act gives the owner of copyright the exclusive right to reproduce, distribute, publicly display, publicly perform, and create derivatives of the creator’s work. Copyrights may be licensed, sold, donated, and litigated.

Many things are protectable by copyright, including literary works, music (and lyrics), movies and plays (and music, choreography, and blocking), pictures, graphic designs, sculptures, architectural works, digital works, and software. In university settings, properties commonly protectable by copyright include curricula, databases, and some kinds of data (like machine learning/artificial intelligence training sets), films, images, simulations, assessments, maps, questionnaires, tools, and resources like guides or informational websites.

Copyright covers “original works of authorship in a fixed medium.” That means if a work is original (independently made by a human author with at least a minimum level of creativity—without copying), and fixed (captured in a “sufficiently permanent” way so that others can see it/copy it, in a not-fleeting way), it is likely protectable by copyright.

Note that the U.S., the UK, and the EU have all recently confirmed that human authorship remains a condition of copyright protection for work. Under current U.S. copyright law, works created by AI without human intervention or involvement cannot be copyrighted because such works fail to meet the human authorship requirement.

Copyright protection is automatic as soon as the work is fixed into a tangible medium, but a federal registration is also possible through the U.S. Copyright Office. Federal registration is advisable when a work has a high risk of needing defense through litigation. TOV helps innovators determine the risk related to their copyright protectable works, and will advise on seeking federal registration when appropriate.

Inherent copyright protection costs nothing, and the cost of federal copyright registration ranges depending on the number of works being registered at one time. Generally, a single work costs approximately $65 to register (not including legal fees).

Copyright is a bundle of rights; owners can manage them as a whole or break those rights apart and manage them separately. The bundle of rights includes:

• Reproduction: Make copies of the work
• Adaptation: Change, modify, or create new versions from the work, also called “derivative work”
• Display: Publicly show the work to others, including publication or broadcasting/distributing via the internet or other means
• Distribute: Including by sale, license, or other means of transfer
• Perform: Publicly if the work is literary, musical, dramatic, film, etc.

Copyright owners have the right to maintain all of their rights (i.e., “All Rights Reserved,”) or to reserve some or none of their rights over their work.

Placing a copyright notice on your work ensures the viewer understands they must ask permission to make use of that work and tells them who to ask for that permission. For works owned by NYU, the appropriate copyright notice is:
© [YEAR] New York University. All Rights Reserved.

Optionally, you may include your college, department, or center name:
© [YEAR] New York University. Technology Opportunities & Ventures. All Rights Reserved.

For questions about whether work is owned by NYU under our IP and copyright policy, please contact TOV or complete an innovation disclosure form.

Placing a copyright notice on a work does not prevent you from including authorship or citation information. Copyright is a legal ownership designation; authorship is determined by scholarly conventions and societal understandings of creative outputs. Authorship notices and copyright notices can coexist without conflict.

Copyright is a complex area of U.S. law in which many court proceedings and changes in the law have influenced practices around copying, borrowing, and accessing materials made by human creativity. Here are a few topics that TOV receives frequent inquiries about related to copyright:

• Fair Use
  Fair Use is a copyright defense in a court of law whereby a defendant may claim they used copyright protected works without permission under a specific rubric that would allow such use.
• Creative Commons and Open Source
  Creative Commons and Open Source licenses are a series of “short cut” legal contracts meant to quickly allow copyright owners to publish copyright protectable work and software so that others might use that work without contacting the copyright owner for permission. In both the case of Creative Commons and Open Source licenses, once applied, these licenses are permanent and legally binding. TOV is happy to consult members of the NYU community prior to releasing creative works or software under either of these rubrics to ensure that risk to the community, compliance to policy, and service to the innovation are each duly considered. Open Source licenses, especially, can have implications for work beyond the single project to which such licenses are applied; please be sure to disclose such projects to TOV before release.
• Public Domain is the status for works of authorship that have either lost copyright protection because it is has expired or lapsed for another reason, or because the copyright owner has deliberately released their ownership rights to that work, meaning anyone can leverage it in any way. Each year on January 1, many new works fall into the public domain as their copyright expires.

• U.S. Copyright Office
• Copyright Clearance Center
• Creative Commons Site
• Creative Commons Wiki
• Public Domain Day Wiki

A trademark is just what it sounds like: a mark or marking used in trade. A trademark can be a name, word, phrase, design, symbol, or other identifiable combination of these that indicates where goods or services come from. Trademarks are issued from a governmental entity (either a state government or the U.S. Patent and Trademark Office) and they serve as protection for their owners against fraud and counterfeiting.

Trademarks also give the public confidence in the origin of goods and services.

Unlike patents, trademarks do not prevent others from creating goods or performing services just like those the trademark owner makes, but they do prevent others from trying to capitalize on the trademark owner’s brand and goodwill with the public.

Trademarks are applied to goods and services to ensure the trademark owners are associated with those goods and services, but trademarks are also IP and can be leveraged in other ways—they can be licensed, sold, abandoned, and litigated. The primary rights within most trademark arrangements involve the right to reproduce, to sell, and to display/broadcast, but can be anything defined within a contract.

Using a trademark first in commerce affords the owner some limited rights over a mark without any further action, but to have full, national rights to a trademark, you must register it federally with the U.S. Patent and Trademark Office (USPTO). To gain federal registration, you must prove that you are leveraging your trademark in interstate commerce, provide evidence of that use for each type of good or service you are making/providing, and pass criteria from the USPTO’s examiner’s office, including the “inherently distinctive” criteria.

Trademarks are useful for enforcing rights in activities or related to goods being produced and services rendered. Trademarks can also protect their owners from bad actors (fraud, counterfeit). To defend a trademark in court, it must be federally registered. Trademarks are also understood as valuable assets in their own right; as businesses successfully build their brand reputations (for quality, good service, etc.), trademarks become imbued with public goodwill, which translates to real monetary value. Federal registration of a trademark allows owners to defend their reputations as well as their activities in the marketplace.

When a business has a trademark that is fully registered, it is denoted with the standard ® character, which means “Registered Trademark.” For example:
NYU®

There is debate about how often you must include the registered mark on goods or in conjunction with services, but TOV advises its inclusion wherever the mark may be misunderstood in the marketplace, on commercial goods/services, and only in cases where size would not make the mark illegible or onerous to include (for example, it is not necessary on small items like jewelry).

Yes. If a business plans to register a trademark but has not yet had a sale or activity beyond state lines, they can indicate their plan to register the trademark (and put others on notice of their intent to register and defend their mark in the future) with a provisional trademark symbol. The provisional symbol for goods is ™, and a provisional symbol for services is SM.

Provisional trademark protection costs nothing, and federal trademark registration varies depending on the type of mark you wish to register, and for how many types (classes) of goods and services you wish to include in your registration. Typically, an unstylized wordmark (name) trademark registration costs around $3,000, but legal fees vary widely.

Trademarks are part of the overall IP protection landscape and can be used effectively to protect products or services that are valuable to NYU, but which might fall outside of typical core business activity. If you are interested in a trademark related to your work or an innovation, please contact TOV or complete an innovation disclosure form. TOV’s team of experts can help you find the right kind of IP protection.

When a USPTO examiner looks at a trademark application, they look for different factors, including conflict with other trademarks, as well as making sure the trademarks are strong enough to avoid the possibility of consumer confusion. Trademarks are considered strong if they are “inherently distinctive.” Strong trademarks can be:

• Fanciful: E.g., using made up words, or only having meaning in connection to their goods/services. For example, Lyft®
• Arbitrary: Real words that don’t have a common-sense association with a good or service, e.g., Apple® computers. The fruit and computers were not connected before the company put them together!
• Suggestive: Real words that might indicate something about the product, but don’t describe them directly, e.g., Jaguar®, which suggests that the cars are fast and powerful like their animal namesake.

Conversely, trademarks that only describe are considered weak and will not pass the examination process. Weak trademark choices include those that are:

• Descriptive: Use the actual good or service in their name and don’t suggest a brand identity, e.g., “Creamy Yogurt” or “Greendale School” for a college.
• Generic: Use common names or phrases that don’t indicate a source of goods or services, e.g., “Collaboration” for a meeting website or “Train Stop” for a ticket counter.

Please note that generic or descriptive trademarks might be known phrases or terms within a specialty field of study, the names of departments or schools, or subsections of a business. None of these make strong trademarks or seek to leverage a unique brand identity.

Sometimes an examiner will allow a mark that is somewhat weak to pass but will severely limit how you can use the mark as a trademark. For example, if you tried to register “Greendale School,” you might have to disclaim any rights to enforce the use of “Greendale,” as that is a geographic location. Such restrictions can severely undercut the value of a trademark, so it is important to try to register the strongest mark possible from the start.