Patent Strategy
QUICK JUMP:
Why Patent? |
Assessing Patentability |
Choosing a Path to Patent Protection |
U.S. Patent Process
WHY PATENT?
The patent system was created to protect and promote innovation and economic growth. Obtaining a patent allows you to fully exploit the commercial potential of your idea. While a patent is not necessary to exploit an invention it prevents others from copying the invention.
University faculty members, staff, and students are encouraged to disclose inventions and innovations to the Office of Technology Development (OTD). Research involving federal funding, university policy and federal law requires that inventions be disclosed to OTD.
Benefits of patenting an invention through OTD:
- Patent cost and legal fees for accepted disclosures (ranging in the thousands of dollars) are paid by OTD.
- Patents are a method of publication.
- A dedicated team with extensive intellectual property and industry experience guiding your idea from concept to market.
- Reduced paper work for researchers.
- Benefits for inventors’ laboratories and departments from licensed inventions.
- Legal resources to defend and protect your idea.
- Translation of your work into a product that will benefit society.
Assessing Patentability
In conjunction with the inventor(s) and possibly the input of a patent attorney, OTD Technology Development Associates will make an assessment of the wisdom of pursuing patent protection for a given invention. Associates make their determination based upon a number of factors, including:
- The invention is competitively superior and commercially viable.
- OTD recognizes a well-defined market for the invention.
- OTD, or innovator, are in contact with a company or companies expressing an interest in licensing and developing the invention.
- Prior art search reveals no impediment to successfully prosecuting a patent.
- OTD has an obligation to the sponsor of the research leading to the invention with regard to patenting.
Choosing a Path to Patent Protection
Once the decision has been made to patent an invention, OTD’s Associates will determine the best patent strategy to utilize. Different paths to seeking patent protection exist which may have different strengths and weaknesses. For example, if OTD has not identified a commercial partner for an invention but is convinced of its patentability and potential, we may elect to file a U.S. provisional application. Once the provisional application priority period of one year is year, OTD may decide to proceed with a regular patent application or a PCT application, depending upon the identification of a partner to assist with the cost of patent prosecution.
If OTD has not identified such a partner, it may elect to allow the provisional application to lapse without conversion. In the event that is OTD’s decision and the inventor believes the invention still has potential, the inventor will be given the opportunity to obtain a waiver from any funding sponsor and take on the responsibility, and expense, of seeking patent protection his- or herself.
The Patent Process
The following links will take you to a summary description of various aspects of the patent process. Our thanks to Jeff Wilson of the law firm Jenkins Wilson Taylor & Hunt, P.A. for this summary.
