The Office of Innovation Commercialization

Patents

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:

  • 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.
  • Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.
  • Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

Benefits of Patents

When a patent is issued, publication is mandatory. Society benefits by learning about inventions through this publication process and by obtaining something it lacked previously. It is important to realize that the invention might never have been made available to the public except for publication of the patent.

Assuming a patented invention has commercial value, the owner of the patent may choose to make and sell products covered by the patent, taking advantage of the monopoly rights afforded by the patent. (Rights to other patents may be necessary to practice the patented technology.) The patent owner may lack the background, incentive or resources to make and sell the product, but can still can benefit commercially by licensing or granting those rights to another party for consideration. Patent owners can also sell a patent outright.

Patents are essential to the successful commercialization of some types of inventions such as pharmaceuticals that require large expenditures to develop to commercial stage. Patent protection provides market exclusivity to the developer of such products for a sufficient period of time to recoup the costs of bringing the product to market.

The patent system is structured to encourage people to invent around the patent, or in other words, to provide alternative solutions to the problem toward which the invention is directed. This attribute of the patent system often serves as a powerful stimulant to make further inventions that may also benefit society.

After a patent has expired there may be significant residual benefits to society. If a successful product has been launched through the benefit of patent protection, there is a strong likelihood the product will continue to be manufactured and sold to the public, not only by the original developer who depended upon patent protection, but also by other manufacturers who benefit by making and selling the product when the patent expires.

Steps to a Patent

The steps begin in the lab and move through the legal process of patent prosecution and maintenance. This section describes the steps that you should follow to help maximize the value of your invention and protect your intellectual property rights.

  1. Laboratory Documentation

  2. Invention Disclosure

  3. Invention Evaluation

  4. Patent Prosecution

Laboratory Documentation

Well-maintained laboratory records can document the date of origin of an invention and also establish diligence in developing an idea. Such documentation is needed in case of a question about which inventor should be entitled to pursue a patent. Here are some record keeping suggestions:

  • Use ink, not pencil, when recording ideas and experiments.

  • Keep all records in bound notebooks with all pages numbered permanently in ink.

  • Keep lab notebooks intact and free from mutilation.

  • Make no erasures; cancel mistakes by drawing a line through them and writing the correct data in the margin, placing your initials and the date after each such correction.

  • Make no changes or insertions on a page at any date later than that shown. If it is necessary to make insertions, indicate by using an initialed and dated marginal note when the change and insertion are made.

  • Leave no blank pages between successive entries in your notebook. If you wish to skip a page or part of a page, draw lines through the unused portions with the word cancel and initial and date in the margin along such areas.

  • Use the past tense of the verb to describe actions and experiments that were actually completed.

  • Label ideas or proposals or suggestions as such so that they may be differentiated from work actually performed.

  • State in detail how you propose to carry an idea into actual practice. If the indicated method turns out to be inoperative, then the record will prove only the conception of a problem, not the conception of an invention.

  • Be explicit about what was actually done.

  • When using abbreviations or terms, make sure they are standard. Your use of such terms or abbreviations should be explained in a table at the front or at the back of your notebook.

  • Record all experiments contemporaneously with the performance of the actual events. Do not use loose slips of paper to record data for subsequent entries.

  • Sign and date each page of your notebook as it is completed. For pages relating to ideas or laboratory work that may lead to important inventions, be sure to have each such page witnessed and dated as soon as possible after completion of the page.

  • In selecting a witness for the notebook, choose one who (1) is not likely to be an inventor or a co-inventor and (2) will understand the experiment when it is explained and when he or she reads it over in the book.

  • If the notebook entry records the conception of an idea, have the witness sign and date the notebook entry and indicate that the witness has read and understood what has been written.

  • When the notebook records experiments, a witness who has seen the performance of the experiments, and can thereby testify from personal knowledge what took place, should sign the notebook entry and indicate on the notebook page that he or she has been present and has actually seen what is stated to have taken place.

  • Try to preserve the first sample of new products or of products produced by a new method. To each sample, attach a permanent label, dated and signed and witnessed.

  • Whenever an experiment or apparatus is new, it should be very helpful to photograph the project. All such photographs should be signed and dated and attached firmly to the notebook page.

Patent Prosecution

The process of obtaining a patent is called patent prosecution. It consists of preparing and filing the patent application, then filing responses and amendments to the objections of the patent examiner. Patent prosecution will result in either the issuance of a published patent or the rejection or abandonment of the application.

United States patent law allows you a one-year grace period in which to file a patent application after the first enabling printed publication or public use or sale of your invention. You should beware, however, that “enabling,” “printed publication,” “public use,” “sale,” and “invention” are legal terms defined by a vast body of case law, not by ordinary usage. For example, abstracts, theses, and typewritten papers distributed freely at a conference may constitute a “printed publication.” Even an oral defense of a master’s thesis or dissertation constitutes an “enabling” disclosure if the public is invited to the event. Also, the cataloging of the thesis or dissertation in the University library where it is accessible to the public may be a “printed publication.” If you have doubts about the consequences of this type of “publication,” do not hesitate to contact the Innovation Commercialization Office at UNCG.

Under U.S. law, individual inventors are allowed to prosecute their own patent applications. However, because the Patent and Trademark Office has specific and often complex rules about the content and examination of applications, and because patents are interpreted and enforced in court, inventors should be represented by a patent attorney or agent.

A patent is intended to publicly disclose the best mode of practicing an invention and, in particular, to point out the features that distinguish the invention from prior art. The patent application must make a full disclosure of the invention to teach others how to make and use the invention and to clearly define the borders of the patent protection. The patent application (and a patent) includes drawings, if appropriate; and a specification that is typically broken into several distinct sections, including:

  • The field of the invention briefly describes the general field of the invention.

  • The background section describes the work done in the past and what has prompted the inventor to pursue this invention. This is referred to as prior arts. It is therefore important for the inventor to include all the prior art and to include a description of the differences between each of the prior art references and the invention in this section. Prior art may consist of prior patents, printed publications, prior public uses, prior public sales, and sometimes even prior invention by another or prior secret uses.

  • The drawings are provided to aid in understanding the invention. Graphs and tables may also be included in this section.

  • Objectives of the invention—The objectives indicate the nature of the improvements the invention seeks to provide.

  • The summary of the invention sets forth the theory on which the invention rests and the intricate details of at least one way (and sometimes several ways) the invention can be implemented.

  • The industrial applicability section describes the applications in which industry will likely use the invention.

  • The claims circumscribe the legal bounds of the invention and are generally written using specialized terms. The claims describe the essential elements of an invention, first as broadly as possible and subsequently, more narrowly.

After filing a patent application, it can take from one to three years for the patent to be issued or denied by the U.S. Patent and Trademark Office. It may take five years or longer for commercial sales to begin, depending on how much work needs to be done to develop and market a product based on the invention. University technology transfer office find that it takes an average of eight years after an invention is disclosed to being receiving significant royalties on sales.

The Patent and Trademark Office allows, or approves, around 90,000 patents a year. The total number of patents issued now exceeds 5 million. When the Patent and Trademark Office gives notice of allowance, and the issue fee is paid, the patent is issued, or published in the Patent Gazette.

The cost of the typical U.S. patent prosecution for the university, conducted by outside legal counsel, is $15,000 or more