With the popularization of invention-based shows like “Shark Tank,” more and more people want to see their inventive ideas come to fruition.
Friday in FAMU’s New Pharmacy building patent attorney Alton Hornsby III led a workshop on intellectual property, with an emphasis on patents. The Office of Technology Transfer, Licensing and Commercialization (TTLC) helps faculty, staff and students with obtaining patent protection on behalf of the university and Hornsby is one the attorneys it uses.
“The university likes to have workshops for our department so the different researchers and professors and inventors can understand how to process work,” said Reis Alsberry, the director of Technology Transfer and Export Control at FAMU. “We filed several (patent applications), so far this fiscal year. (We’ve had) one issued in January, last year we had four (patents) issued. We’ll see if we can get anymore issued before the end of the fiscal year.”
A patent is a right given to an inventor by the federal government that allows the inventor to prevent others from recreating, selling, using, offering the invention for sale or importing the invention. An invention is not merely an idea — but rather an inventive concept put into practice.
So, what exactly is patentable? According to the Supreme Court, it is “anything under the sun that is made by man.”
However, there are three types of patents: utility, design and plant. The utility patent protection must have a function that solves a problem that it was created to fix and it lasts 20 years from the application filing date. Utility patents also protect new, useful, and non-obvious inventions.
The design patent protects ornamental designs and shapes of industrial items only — not the functionality of that item and protection lasts 14 years from the patent issue date.
And, plant patents protect distinct and new varieties of plants. It lasts 20 years from the application filing date.
Hornsby highly recommends that if a person has an idea for an invention, they should first look to see if it has already been done.
"Right now, it is extremely (easy) to do a simple patent search on your own, Google Patents is a very user-friendly website, it will give you U.S. and international patents,” said Hornsby. “The Patent Office also has a guide to performing patent searches, their requirements also advise that you also look at published papers if you are in the scientific or engineering discipline.”
Even if someone discovers their idea has been done before, it does not mean they need to cancel their concept completely. That person can still work on the idea and find an improvement that the prior documents did not show.
“You may be able to take advantage of your prior search, and actually improve upon your idea and file that as a patent application,” said Hornsby.
A common concern for inventors is whether or not they should have people sign non-disclosure agreements to prevent others from stealing their ideas. Hornsby advises people to file either a provisional or some sort of other patent application before they talk to anyone about anything.
“If you have an idea and you want to talk to anyone about it — most large companies will not sign one (a non-disclosure agreement) —the general advice to inventors is to actually file a patent application,” said Hornsby. “You can file something that is called a provisional application so that you can get patent pending status, that preserves your rights to the idea, so if you talk to someone, they don’t either violate the non-disclosure agreement or just outright steal it (your idea), that in general protects you.”
Hornsby’s advice to students who are interested in getting their inventions patented is to first, if they’re doing their research on campus, make sure that there isn’t some kind of agreement with the university in place, pertaining to that research and the rights to that research. But if they have an idea that’s not related to what the university does, then he would suggest for them to see if they can find a patent attorney to speak with on a basic level to get started.
“Most patent attorneys will talk to you for free, some will charge you, but most don’t because we do it all the time so it’s not a big deal,” said Hornsby.
Kaelyn Hamilton, a business administration senior at FAMU and chair of the innovators' committee in the Entrepreneurship Club, attended the workshop because she was interested in learning about patenting formulas.
"I am an aspiring entrepreneur, beauty entrepreneur (in) skincare (and I will do) makeup eventually,” said Hamilton. “I’ve been researching the type of ingredients and specific formulas that I do want to create — that’s why I asked him that question about patenting formulas and recipes so when I do make my recipes, at least I do know I have this option.”