Patenting an Invention

Assessment

When you submit an Invention Disclosure Form to the TLO, it is assigned to a technology licensing officer within one week of submission.  Each disclosure is then evaluated for commercial potential and patentability.  Factors we consider in evaluating the commercial potential of an invention include:

  • problems solved or unmet needs addressed by the technology
  • potential applications
  • market size
  • potential competitors/partners
  • potential challenges to patenting and commercialization

With input from inventors, assessment of patentability is performed by technology licensing officers in consultation with patent attorneys and/or literature search specialists. Your technology licensing officer will contact you to determine next steps, whether that is filing a patent, or not.

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Protection

Protection for an invention is pursued to encourage third-party interest in commercialization. Patent protection generally begins with the filing of a patent application with the U.S. Patent and Trademark Office (USPTO) and, when appropriate, foreign patent offices. Once a patent application has been filed, it will require several years and tens of thousands of dollars to obtain an issued U.S. patent. Inventors must work with the TLO and patent counsel throughout the process in drafting the patent applications and responses to patent offices in the countries in which the patents are filed.

Because an invention must be novel to be patentable, public disclosure before filing a patent application prevents patenting in most countries. The U.S. allows inventors to file a patent application for up to one year after public disclosure. Posters, abstracts, and oral disclosure to the public should all be considered a public disclosure. To enable secure interactions with other parties before a patent application is filed, other types of agreements and considerations may be needed, including: Non-Disclosure Agreements (NDAs), Material Transfer Agreements (MTAs) and copyright protection.

Marketing

Successful marketing requires close collaboration between inventors and the TLO. With your involvement, the TLO identifies candidate companies that have the expertise, resources, and business networks to bring the technology to market. This may involve partnering with an existing company or forming a startup. Marketing may include the preparation of a non-confidential package of information: this typically consists of a one-page summary of pertinent details, publication and published patent applications or issued patents. We may post these materials online or share them with relevant companies and/or investors who are identified through our market research, networking activities, and/or prior business transactions. Inventors often have relevant connections with industry counterparts and technology entrepreneurs: your active involvement can dramatically improve the chances of matching an invention to an outside company.

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