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Frequently Asked Questions
The U.S. Patent and Trademark Office (USPTO) defines an invention as 鈥渁nything made by the hand of man that is a new, useful, and non-obvious process, machine, manufacture, or composition of matter, or any new and useful improvement thereof鈥︹��
Invention: It鈥檚 important to note that you can鈥檛 patent a new discovery. Discovering a phenomenon in nature, for instance, does not constitute an invention, nor does simply identifying a new plant species or new biochemical pathway. However, if you develop a new innovation around that phenomenon or plant species, or create a new way to manipulate or leverage a biochemical pathway to solve a problem, that would qualify as being 鈥渕ade by the hand of man.鈥� In general, the laws of nature, theories, scientific principles and pure algorithms don鈥檛 qualify as inventions and therefore cannot be patented.
New: The invention must be new in that it has to be different and distinguishable from anything that is publicly known or available. 聽In the majority of countries, 聽the invention would not be considered new if it has been described to the public anywhere in the world in a patent, a publication, presentation, product demonstration, etc prior to filing a patent application.聽 In the United States, you are granted one year from the date the invention is first publically revealed to file an application.
Useful: It must be considered useful, at least to the extent that it offers one specific use, which must be stated in the patent application.
Non-obvious: Determining what is obvious with respect to patentability can be complex.聽 In short, the invention cannot be an obvious or trivial extension of another existing invention, as determined by a person 鈥渨ith ordinary skill in the art at the time of the invention.鈥�
Process: A process is a method of manipulating certain materials to produce a given result.
Machine: A machine is limited to a particular apparatus designed to accomplish a certain result by distinctive (new, useful, and non-obvious) means.
Article of manufacture: Quite simply, this is a product.
Composition of matter: This refers to chemical and/or metallurgical compositions and may include specific and unique combinations of ingredients or new compounds.
Submitting an Invention Disclosure is an important first step toward having your invention commercialized, as well as triggering a set of actions related to compliance with reporting聽 requirements of various funding sources. 聽The beginning of the commercialization process often involves obtaining intellectual property (IP) protection and working to identify outside development partners. 聽The Office of Technology Transfer works collaboratively with researchers to navigate this process.
The invention disclosure should be submitted as early as possible. While the invention disclosure itself offers no patent protection for your innovation, early submission will allow the Innovation Institute to act quickly in filing a patent application to the USPTO. That could be important later, in the event that a similar invention is under development elsewhere.
Just as importantly, you need to submit an invention disclosure early if you鈥檙e preparing to reveal enabling information about your innovation in a scientific journal article, conference presentation, or any public forum. The invention disclosure will alert the Office of Technology Transfer (OTT) to expedite the filing of a patent application (when appropriate) to protect against any public disclosure of enabling information that hasn鈥檛 yet been patent-protected.
The OTT will work cooperatively with you, and make every effort to ensure the timing of the patent application meets your publication needs. 聽If you do reveal enabling information to the public without first filing a patent application, you will potentially jeopardize the University鈥檚 ability to obtain patent protection for your innovation, especially outside the United States.聽 Keep in mind that some forums for presentation, even though within the university, would be considered public.
When submitting the invention disclosure, be sure to list any imminent or prior public presentations, posters, abstracts, website descriptions, proposals, applications, dissertations/theses, or publications that includes enabling information about the invention.
The safest approach is to file a provisional patent application before the disclosure, which gives you up to one year of protection before a regular patent application must be filed.聽 Sometimes, a non-disclosure agreement can be used to protect your idea; for example, when you will be discussing your idea with a company.聽 However, in many situations, the audience does not need to know how your invention works; investors are most interested in what problem the invention solves.聽 It may be possible for you to structure your presentation such that a person of ordinary skill in the art would not be able to reproduce your invention.聽 It is best to talk to a OTT for guidance.
The University does assert ownership over such materials. By using a (MTA), the University鈥檚 rights in the materials are preserved. An MTA also assures that the recipient understands any limitations placed on the use of the material.聽 Material Transfer Agreements are processed by the Office of Research.
The University covers the costs of obtaining patent and copyright protection for University-owned intellectual property.聽 Those costs are recovered through the commercialization process.
The average patent application remains pending for approximately two years after filing, although biotech and computer science patents typically take longer. 聽Then the USPTO will send written notice to the patent attorney indicating whether the application and its claims have been accepted in the form as filed.
Typically, the USPTO rejects the initial application because either certain formalities need to be corrected or the claims are not patentable over the prior art 鈥� meaning anything that has been made or publicly disclosed in the past. 聽If the application is rejected, the patent attorney must file a written response, usually within three to six months, amending the claims or explaining why the USPTO鈥檚 position is incorrect. This procedure is referred to as patent prosecution.
It may take two rounds or more before the application is resolved and the USPTO agrees to issue a patent. During this process, the patent attorney often needs input from the inventors to clarify the technical aspects of the invention or the prior art cited against the application.
Patent applications are kept confidential for a period of time, but then about 18 months after filing they are published. After a patent application is published, the full application as well as information about prosecution can be found on the patent office website ().
Once a U.S. patent has issued, it is generally enforceable for 20 years from the initial filing date, assuming that all USPTO-mandated maintenance fees are paid. There are some exceptions to this general statement, particularly involving pharmaceutical inventions.
You are always welcome to contact the OTT聽to discuss what the patenting process might look like for your particular invention.
A provisional patent application, sometimes referred to as a preliminary patent application, is typically a low cost way of recording your invention with the patent office and receiving an official filing date.聽 Filing a provisional application initiates a 12-month period for filing the corresponding full (aka non-provisional) application.聽 Provisional patent protection automatically expires after 12 months.聽 Once a provisional application has been filed, subsequent public disclosures of the information included in the application do not count as prior art against the invention. 聽Thus it is possible to solicit feedback about an invention from potential stakeholders after a provisional application has been filed.聽 However, a provisional patent application can only protect the features disclosed in it.聽 It does not protect features not described in it or invented later.