Evaluation and Patents

EVALUATION OF THE INVENTION

A technology transfer professional in the Innovation Partnership Services Office will interview and consult the inventor regarding the invention disclosure. The office personnel will carry out a patent literature search and review (this is a review of the written professional journals, refereed papers, conference presentations, and public disclosures that are related or similar in nature to your invention) to determine the status of the prior patent art and will assess the market to determine the commercial potential of the invention. Together we will discuss the invention and make a preliminary evaluation of novelty and usefulness of the invention, likelihood of patentability, possible markets (industrial interest in technology) and manufacturing feasibility (projected development time and cost). Inventor’s expertise is especially helpful during the evaluation for patentability, in the patent application process, in identifying licensing prospects, and in meeting with companies expressing interest. Inventors typically provide technical evaluation of previous patents and publications in their field, supply information to the patent attorney, review draft applications and responses to government actions, and discuss technical aspects with interested companies.

The ultimate goal of these joint efforts between the Innovation Partnership Services Office and the Inventor is to decide if the invention is patentable and if it is licensable (will a company pay UNCG for the right to commercially practice the invention). Normally, an invention is considered patentable if it is:

• Novel – the invention must be demonstrably different from any prior art (it must be the inventor’s original work). It cannot be described in prior public disclosures or any prototype of the invention made available to the public.
• Useful – the invention has some qualitative benefit, i.e., the patent application must specify a demonstrable utility for the invention.
• Non-obvious – the invention cannot be obvious to a person of “ordinary skill” in the art. Non-obviousness usually is demonstrated by showing that practicing the invention yields surprising, unexpected results.

The Innovation Partnership Services Office will often submit the invention to the Science Committee for consideration. The Science Committee will test the scientific rigor of the invention and see if important research practices were inherent in the research process.

The disclosure evaluation process may take anywhere from a week to three months, and possibly longer, depending on the complexity of the invention and the target industry. Inventors are kept informed of the evaluation process and any actions taken, and their input is considered in making decisions about the University’s protection and licensing of the invention.

If the invention appears to be patentable and licensable, Innovation Partnership Services Office Staff will proceed with the patent application. UNCG has limited funds for the expensive process of patenting, so IPSO staff must make informed decisions about which inventions have the most potential to be legally protected and become valuable products.

WHAT IS A PATENT?

A U.S. Patent for an invention is the grant of a property right to the inventor(s), issued by the U.S. Patent and Trademark Office. A patent permits its owner to exclude members of the public from making, using, or selling the claimed invention. Most countries of the world have patent systems, although the patent terms and types of patents vary.
There are 3 major types of patents:

1. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof.
2. Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.
3. Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

A Patent Application is a set of papers that describe an invention and that are suitable for filing in a patent office in order to apply for a patent on the invention.

HOW LONG DOES IT TAKE TO OBTAIN A PATENT? WHAT IS THE COST OF OBTAINING A PATENT?

The entire process may take from two to six years. The cost of a U. S. patent typically ranges from $15,000 to $50,000.

WHO PAYS FOR THE PATENT?

If the University is interested in the invention, then all legal expenses and fees for the preparation, prosecution and maintenance of patent filings are paid by IPSO. However, IPSO tries to recover such costs from research sponsors or licensees.

IS COMPUTER SOFTWARE PATENTABLE?

Under current U. S. law, not all computer software may be patentable. It is, however, covered by the Copyright Act of 1976, under which computer software (as well as all other copyrightable work) is protected by Federal Statute from the moment it is “fixed” in a tangible form

HOW DO I SEARCH FOR PRIOR ART PATENTS?

You can use the site listed below to search for prior art patents:

• U.S. Patent & Trademark Office Web Patent Databases – Contact the IPSO and our staff can conduct a search for you