USPTO IP Awareness Assessment Tool

03 September 2013 PharmaPatents Blog

The USPTO website has an IP Awareness Assessment tool that was developed by the USPTO and National Institute of Standards and Technology/Manufacturing Extension Partnership (NIST/MEP) to permit businesses and inventors to assess their intellectual property awareness. When the assessment is completed, the tool provides a summary of the results, links to tutorials on specific aspects of intellectual property, and other general guidance. While some of the questions are quite basic, even patent-savvy stakeholders may find the tool useful to assess their IP programs and ensure that they are not overlooking any key aspects of their IP estates.

The USPTO IP Awareness Assessment Tool 

The USPTO IP Awareness Assessment tool covers five general categories:

  • IP Strategies & Best Practices
  • International IP Rights
  • IP Asset Tracking
  • Licensing Technology to Others
  • Using Technology of Others

and may touch on five specific types of intellectual property depending on the answers given to certain questions:

  • Copyrights
  • Design Patents
  • Trademarks
  • Trade Secrets
  • Utility Patents

The full assessment includes 62 questions, but some questions may be skipped depending on answers to previous questions.

The Results 

I went through the assessment and answered some questions with “no” or “not sure” to see what kind of guidance would be provided. Here are a few examples.

On using third-party technology:

The products or services that you provide or plan to market are not produced by your business or your employees and that you do not have license(s) from other business(es). The products or services that you are providing or marketing may be covered by someone else’s IP rights. When you provide a product or service that is covered by someone else’s IP rights, you should check if you need to license it from the owner. Using someone else’s IP without appropriate licensing agreement or permission may create legal and financial problems for your business. Additionally, if you created the name of your business and/or advertising materials to promote your business, you may have trademark and/or copyright rights in it.

The following training material will help you in understanding licensing of IP from others. You will be assessing your awareness about licensing IP from others in another category.

On non-disclosure policies:

You answered that you are not sure if your company has procedures in place to protect your patent rights before public disclosure. Premature public disclosure of your invention may adversely affect your chances of getting a patent on your invention. Following a proper non-disclosure policy or filing a provisional application before making a public disclosure, such as presenting research work at a conference or publishing it in a journal and/or on a website may be important to preserve your patent rights in the U.S. and in foreign countries.

On employment agreements:

Since you are not sure if your company’s employment agreements have a clause dealing with intellectual property issues, you need to review your company’s employment agreement and related policy. If your employees might create IP as a part of their job, it is strongly recommended to include an IP clause in their employment agreements. Informing employees of their IP rights is essential for any business. Depending on a company’s policy, the ownership rights in IP created during employment may vary. However, as a general rule, the rights to IP created by employees belong to the employer.

The Disclaimer

Of course, the tool has a disclaimer:

Please note that the information provided herein in the training materials and response to assessment questions is intended for providing general guidance and increasing awareness about potential IP in your business. To get specific legal advice on how to protect best your IP rights of any kind, please contact a qualified IP professional. To learn more about the application process or what you may need to do to proceed with obtaining specific rights contact the appropriate office that grants the IP rights.
Disclaimer: Please note that any information provided here is not deemed as legal advice; it is intended to increase your IP awareness. When filing an application for IP rights, please seek professional legal help.
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