IP & Commercialization Faculty Guide
Patents
Patent: A property right granted by the federal government that allows the owner to exclude others from making, using, selling, or offering for sale the patented invention for the life of the patent. Patents are authorized by the U.S. Constitution, and have a maximum life of 20 years.
An invention must meet three criteria in order to be patentable. First, the invention must be novel (not already invented). Second, it must be useful (referred to as utility). Finally, it must not be obvious (link to what is non obvious below)
While there are three types of patents (utility, design, and plant) that protect many types of inventions, most university inventions are subject to protection by utility patents.
In the university setting, the desire to publish new results (in forums including posters, grants, presentations, abstracts, and electronic media) can limit or negate patent protection. Under U.S. law, a patent must be filed within one year of publication. Most foreign countries require that a patent be filed before publication.
What is novelty?
To be patentable, an invention must be new, or novel. For example, the invention must not be described in a printed publication anywhere in the world or must not have been in public use or on sale more than one year prior to the date of the patent application. Ensuring that your work is novel necessitates a thorough search for literature and prior patents (collectively known as prior art) which pertain directly to your research. If any prior art exists that effectively describes your invention, then the invention likely is unpatentable for lack of novelty.
What is utility?
A discovery is useful when it has a purpose and it is shown to work. Proving utility is also known as reduction to practice. Reduction to practice involves testing the discovery under actual conditions of use. For example, reducing to practice a newly developed antibody would involve demonstrating that the antibody possesses a high affinity for its antigen. The discovery may also be constructively reduced to practice through full and complete disclosure in a patent application filed in the United States Patent & Trademark Office (PTO).
What is nonobvious?
For a discovery to be nonobvious, an expert in the field would not expect the discovery. Factors considered by the PTO include the scope and content of prior art, the level of skill in the field, the difference between the new invention and the existing prior art, and other factors that distinguish the new invention from prior works. Accordingly, if a combination of known elements creates an unexpected improvement in function, the invention likely can be deemed nonobvious. For example, the Supreme Court found that a battery that substituted magnesium for zinc and cuprous chloride for silver chloride in the electrodes was patentable because the new battery had a number of operating advantages that would not have been expected.
Can you publish and patent?
In the university setting, the desire to publish new results can limit or negate patent protection. Under United States law, a patent application must be filed within one year of the date of any "publication" that effectively describes the invention. Most foreign countries require that a patent application be filed before the date of any publication (unless a U.S. patent application has already been filed). If your anticipated publication is viewed as discussing novel, nonobvious and useful information, contact the Intellectual Property Development Office.
Does a patent mean your inventioncan be used?
A patent does not give the owner the legal right to use the invention, but to exclude others from using the invention. For example, a new use for a particular drug may be patented by a university although the chemical compound of the drug is already patented by a company for another use. Such a patent would not give that university the legal right to make, use or sell the drug; it would simply preclude anyone else from making, using, or selling the drug for that use. Someone seeking to sell the drug for the new use would need to obtain a license from both the company and the university.
How do you benefit from a patent?
The university believes that a major value of patenting your intellectual property is the leverage it gives you to obtain additional support for your research. A patent also serves to document expertise and innovative research, and helps facilitate the technology transfer and use of your invention in the public arena.
Business & industry tend to be more interested in patented inventions because a patent grants the owner the right to exclude others from using the invention. B&I are frequently interested in sponsoring research to test the invention, determine commercial application, or develop new, related inventions. The private sector may also be interested in licensing the new invention. The right to exclude others from using the invention means companies have a greater incentive to invest the time, effort and finances necessary to bring the new product to market. The licensee may wish to fund additional research or perhaps hire the inventor as a consultant (see UK AR pdf).
If the university receives royalties from the sale or use of the new invention, those royalties are shared with the inventor, the department and the college, as provided by UK's Administrative Regulations.