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.

 

 

 

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.

FAQ

A patent gives the holder the right to exclude others from making, using, selling, offering to sell, and importing any patented invention. Note, however, that a patent does not provide the holder any affirmative right to practice a technology, since it may fall under a broader patent owned by others; instead, your patent only provides the right to exclude others from practicing your invention by filing a patent infringement suite. Patent claims are the legal definition of an inventor’s protectable invention.

The TLO contracts with outside patent counsel for patent protection, thus assuring access to patent specialists in diverse technology areas. Inventors work with the patent counsel in drafting the patent applications and responses to patent offices in the countries in which patents are filed.

Potential commercialization partners (licensees) often require patent protection to protect the commercial partner’s often sizable investment required to bring the technology to market. Due to their expense of drafting, filing, and prosecution of patents, patent applications are not possible for all MIT intellectual property. We carefully review the commercial potential for an invention before investing in the patent process. However, because the need for commencing a patent filing usually precedes finding a licensee, we look for creative and cost-effective ways to seek early protection for as many promising inventions as possible.

The TLO and the inventor(s) together discuss relevant factors in deciding whether to file a patent application. Ultimately, the TLO makes the final decision as to whether to file.

Currently, the average U.S. utility patent application is pending for about three years, though inventors in the biotech and computer fields should plan on a longer waiting period. Once a patent is issued, it is enforceable for 20 years from the initial filing of the application that resulted in the patent.

Filing a regular U.S. patent application may cost between $10,000 and $20,000. To obtain an issued patent may cost a total of $40,000 to $50,000. Filing and obtaining issued patents in other countries is a very expensive undertaking. Usually, once a patent is issued in the U.S or in foreign countries, certain maintenance fees are required to keep the patent alive.

Generally, the invention will be jointly owned between MIT and the other institution or company. Each inventor will assign his or her rights to their employer. The TLO will work with the other institution to decide on management of the invention. Usually, if the other institution is a university or research institution, we will make an “inter-institutional” agreement that provides for one of the institutions to take the lead in protecting and licensing the invention, sharing of expenses associated with the patenting process and allocating any licensing revenues.

Often MIT accepts the risk of filing a patent application before a licensee has been identified. After MIT’s rights have been licensed to a licensee, the licensee assumes the patenting expenses. At times we must decline further patent prosecution after a reasonable period of attempting to identify a licensee.

Technology Licensing Officers use many sources and strategies to identify potential licensees and market inventions. Sometimes existing relationships of the inventors, the TLO, and other researchers are useful in marketing an invention. Market research can also assist in identifying prospective licensees. In addition, we also examine other complementary technologies and agreements to assist our efforts. The TLO also posts non-confidential descriptions of some inventions on this website. Faculty publications and presentations are often excellent marketing tools as well.

Studies have shown that 70% of licensees were known to the inventors. Thus research and consulting relationships are often a valuable source for licensees. Licensees are also identified through existing relationships of the TLO staff. We attempt to broaden these relationships through contacts obtained from personal networking and from website inquiries, market research, industry events and the cultivation of existing licensing relationships

It can take months and sometimes years to locate a potential licensee, depending on the attractiveness of the invention and the size and stage of development of the market. Most MIT inventions tend to be in the early stage in the development cycle and thus require substantial commercialization investment, making it difficult to attract a licensee.

Your active involvement can dramatically improve the chances of matching an invention to an outside company. Your research and consulting relationships are often helpful in both identifying potential licensees and technology champions within companies. Once interested companies are identified, the inventor is the best person to describe the details of the invention and its technical advantages. The most successful technology transfer results are obtained when the inventor and the licensing professional work together as a team to market and promote use of the technology

Yes, an invention can be licensed to multiple licensees, either non-exclusively to several companies or exclusively to several companies, each only for a unique field-of-use (application) or geography.