DISCLOSING AN INVENTION
Any publication, published abstract, or public presentation of an invention prior to filing a U.S. patent application may destroy your ability to obtain patents in most foreign countries.
JSU policy requires its employees and students to disclose inventions. As soon as you believe that you have a potentially patentable invention, contact Almesha L. Campbell, Intellectual Property Manager, who will explain the technology transfer process at JSU. You will be required to complete a Disclosure of Invention form, which provides the necessary information to evaluate patentability, inventorship, obligations to research sponsors, and other critical information.
It is imperative that information pertaining to an invention be kept confidential until a patent application is filed. Before publishing, talking to potential investors or making a public presentation on an invention contact the IP manager. Disclosure of invention to individuals outside the University could result in the loss of patent rights.
WHAT IS A PATENT?
A patent is a set of exclusive rights granted to an inventor by the Government. This right gives the inventor the opportunity to "exclude others from making, using or selling the invention" for a term of 20 years from the date of filing the application. In return for this period of exclusivity, the inventor must disclose the details of the invention so that others may seek improvements or new uses.
WHO IS AN INVENTOR?
Determining who is named as an inventor on a patent is a legal decision rather than a choice made among participants. Only those individual(s) who furnish an idea can be named as inventor(s). An inventor is the one who first conceives of the invention in sufficient detail that someone skilled in the art could reproduce the invention. If two or more persons work together to make an invention, and each had a share in the ideas forming the invention, they are joint inventors.
WHAT IS A PATENTABLE INVENTION?
An invention is a discovery or creation of new material (either a new manufactured product or a new composition or matter), a new process, a new use of an existing material, or any improvement of any of these. Most of these inventions generally can be patented. However aesthetic creations, or scientific discoveries without specified application, cannot be patented. Things that exist in nature, which are discovered and not invented, machines that defy the laws of nature, scientific theories or mathematical methods cannot be patented.
In general a patent will be granted for an invention so long as it:
- is new or "novel": the invention must never have been made in public in any way, anywhere, before the date on which the application for a patent is filed.
- involves an inventive or "unobvious" step: this step must not be obvious to others with good knowledge and experience of the subject of the invention.
- is capable of industrial/useful application: an invention must be capable of being made or used in some kind of industry
TECHNOLOGY TRANSFER PROCESS
Step 1: Invention Disclosure
The researcher(s) submits a Disclosure of Invention Form describing the invention, detailing the funding used, the name of the inventor(s), any public disclosures or publications, and other information. The disclosure will then be reviewed and a meeting will be set up with the researcher to discuss the invention.
Step 2: Evaluation
The Office evaluates the invention disclosure for its patentability, potential commercial value and for the best modes of intellectual property protection and commercialization. If the invention is useful, novel, and non-obvious to those skilled in the field, then a decision would be made on whether or not to file a patent application.
Step 3: Patent Application
There is a grace period of one year between public disclosure and filing a patent application. In certain circumstances, a provisional patent application will be filed, giving the University one year in which to file a non-provisional patent. Due to the high cost of filing patent applications, the University does not file patent applications for all invention disclosures it receives. The commercial potential of the technology will be carefully considered before an application is filed. Once a decision has been made to file, our patent attorneys will handle the filing and prosecution of patent applications. Patents usually take an average of four to six years to issue and expire in 20 years from the date of filing. Once a patent has been issued, the University must pay maintenance fees to the USPTO every 4 or 7.5 years.
Step 4: Assessment and Marketing
Once a patent application has been filed, an assessment of the technology will be done. Vital details of the assessment will then be use to market the technology once the patent has been received.
Step 5: Licensing of Patents
The University’s goal is to put our inventions and discoveries in the hands of the public. Patented inventions are transferred to industry through a variety of licensing arrangements.
Step 6: Commercialization
Once a licensing agreement has been executed, the University monitors the licensee’s business development and compliance of performance milestones, coordinating patent prosecution, processing license income and distributing revenue according to the University’s IP Policy.
DISCLAIMER: The University cannot guarantee when a patent will be obtained from the United States Patent and Trademark Office (USPTO). Patent issuing times vary depending on a number of factors.
Intellectual Property Manager
Secretary, National Academy of Inventors