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An In-Depth Look into Intellectual Property: Part One

Image of an Intellectual Property word cloud

Introduction

NIST has a broad mission to promote U.S. innovation and industrial competitiveness by advancing measurement science, standards and technology in ways that enhance economic security and improve our quality of life.  Rapidly evolving sectors like nanotechnology, biotechnology, homeland security, information technology and advanced manufacturing need sophisticated technical support systems in order to flourish and grow. Therefore, an important part of accomplishing NIST’s mission is to anticipate future measurement and standards needs of U.S. industry. NIST laboratories develop measurement techniques, test methods, standards, reference materials, reference data and other technologies and services that support U.S. industry, scientific research and the activities of many other federal agencies. In carrying out its mission, NIST works directly with industry partners (individual companies and consortia), universities, standards organizations, other domestic and foreign associations and other government agencies.

NIST designs its technology transfer activities to disseminate the results of fundamental research, measurements, and standards research to industry and other interested parties. In order to provide leading-edge scientific and technical work, NIST is required to have expertise in multiple disciplines, maintain high levels of collaboration with organizations and people with diverse capabilities, and have highly specialized facilities and tools. For more than a century, laboratories at NIST (and its direct predecessor agency, The National Bureau of Standards) have successfully collaborated with others to provide the measurement techniques and technical tools needed by America’s innovators.  NIST broadly defines technology transfer as:

“… the overall process by which NIST knowledge, facilities, or capabilities in measurement science, standards and technology promote U.S. innovation and industrial competitiveness in order to enhance economic security and improve quality of life.”

NIST’s definition of technology transfer reflects the many ways NIST reaches its external partners. The definition includes the act of transferring knowledge from one individual to another by means of mentoring, training, documenting, or collaborating. NIST’s definition also includes the process of commercialization, which allows for the adoption of a technology into the private sector through a business or other organization.

The development and management of intellectual property (IP) is a vital component of technology transfer that can enhance and accelerate adoption of results by businesses to make products and services available in the overall economy.  While there are federal laws, regulations and government-wide policies, NIST’s own internal policies and strategy for identification, protection and management of intellectual property rights of all parties will form a common understanding and basis for more rapid technology transfer.  While a clearly articulated strategy is important, each business transaction has unique aspects and some flexibility is needed to address issues based on the numerous variables involved.

Background

The management of NIST IP as a strategic goal aligns with NIST’s core values of perseverance, integrity and excellence. Every day, researchers working to advance the NIST programmatic missions push the sciences into new and exciting areas. Our scientists and engineers produce groundbreaking research results in the service of promoting U.S. innovation and industrial competitiveness.  These research results are a resource that NIST must identify, protect, and manage.

NIST IP can be a valuable resource that requires management like all other forms of property. As an agency of the U.S. Government, we are required to comply with federal laws, regulations and policies related to IP rights. We are stewards of taxpayer funded resources.  Fortunately, Congress was very clear on their intent and purpose in the area of IP. Congress noted that their intent is to use the patent system to help achieve practical application of inventions arising from federal research.  This practical application means we will seek partners that intend to use NIST intellectual property to achieve our mission of making research results available to the American people through goods and services.

Intellectual Property

IP is the intangible product of the mind’s work. The U.S. and other developed nations generally recognize four different routes for protecting IP: copyright, trademark, trade secrets and patents. IP has the attributes of personal property. These principles are part of the U.S. Constitution in the same section that establishes the need for a system of weights and measures that defines NIST.

Patenting

Patents provide a means for protecting the physical embodiments of certain classes of new and useful inventions. Patents are the broadest form of IP protection, encompassing not only the precise machine or process invented, but also variant machines or processes that may employ the underlying concept of the invention or core invention.  Patents may be purchased, assigned, licensed, pledged or transferred in the same manner as other forms of personal property.

The U.S. patent system provides two kinds of patents: utility patents and design patents. Utility patents are employed to protect functional attributes of an invention. In contrast, design patents serve to protect ornamental aspects of an invention.

Like a deed to real property, most governments require a patent to specify the metes and bounds of the property claimed as the invention.  This legal description of the invention is found in the “specification” and support the “claims”. Unlike real property with borders that can be measured precisely, the boundaries of an invention are not specifically determined. Thus, a patent often presents a set of claims varying in scope that extend inward from a broad description of the invention to a narrow description of the patent’s core invention. It is important to recognize that a patent provides only a right to exclude others from practicing an invention (i.e., manufacture, use, sale or importation). It does not confer an affirmative right on the patent holder to actually make, use, sell, or import the invention claimed in the patent. The patentee’s ability to practice the patented invention may be restricted by the patents of others.

Patents are granted by governmental authorities, such as the U.S. Patent & Trademark Office. They are territorial in nature, which means they are only enforceable in the country that granted them.

The U.S. patent system grants patents on inventions in which three classes of requirements have each been met: requirements as to the invention, requirements as to the application, and requirements as to the applicant.

To be patentable, an invention must be useful, novel, non-obvious, and contain a written description that fully enables one skilled in the art to make and use the invention.

The requirement for utility establishes the threshold attribute that must be present in an idea before it can be considered for a patent. The patent statutes provide two independent tests for determining whether an idea possesses utility. Utility first requires that the idea must be capable of being described as either a process, a machine, a manufacture or composition of matter, or an improvement of such classes of ideas. Inventions that fall outside of these limits (e.g., mathematical expressions, natural laws, etc.) are not patentable.  Utility further limits the availability of patent protection to only those classes of inventions that are useful.  Inventions that lack any use (e.g., such as a method for synthesizing an organic compound that has no known function) and inventions that cannot be used or that are per se inoperable (such as a perpetual motion machine) are not patentable.

The patent statutes require the invention to be novel so that the granting of the patent does not deprive the public of any right that it possessed prior to the patent’s grant. The attribute of novelty is defined in 35 U.S.C. § 102 by a series of seven complex definitions. To satisfy the statute, an invention must separately satisfy the requirements of each of these definitions.  For example, the publication, sale, or use of each and every element of the invention is considered.   If the prior art fails to describe even one aspect of an invention being claimed, the requirement for novelty is not met. 

Even if an invention could be considered novel, it may remain unpatentable if the subject matter would have been obvious to any persons with a skill pertaining to the invention at the time the it was made. The analysis is conducted in three steps. First one determines the scope and content of the prior art, one next determines the level of skill of the hypothetical person of ordinary skill, and then one determines whether the differences between the subject matter sought to be patented and the prior art would have been obvious to such a person.

Released January 10, 2020