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One of the most important services UW TechTransfer provides is guiding the process of patenting UW inventions. Patenting UW-based innovations and discoveries has many benefits. One important benefit is that a patent secures the UW’s ability to market the idea to corporate or non-profit entities that invest in its development, manufacture, and distribution, which ultimately benefits the public by providing new goods and services, improved healthcare, and economic growth.
Patenting benefits researchers by demonstrating the uniqueness and value of their innovative work; by returning revenue to researchers and their departments, colleges, and schools; by helping researchers start companies around their innovations; and by providing the satisfaction of knowing they have contributed valuable information to society.
A patent for an invention is a grant of a right to an inventor to exclude others from working the invention. Patents are issued by the U.S. Patent and Trademark Office (USPTO) [link] and by similar government offices in foreign countries.
In legal language, what is granted is “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. Note that a right is not granted to make, use, sell, offer to sell, or import the invention--only the right to exclude others from doing so.
The decision to file a patent application is made by a UW TechTransfer technology manger in consultation with the inventor(s). However, UW TechTransfer does not pursue patent protection for all innovations disclosed to the office. Only innovations that meet the criteria for patentability and are potentially marketable are considered for patent protection.
The patenting process at the UW begins with you, the UW researcher. Once you have determined that you have a unique innovation or discovery as a result of your research, the next step on the road to obtaining a patent is to read and fill out a Record of Invention (ROI) form [link]. Once UW TechTransfer receives your ROI information, a technology manager assigned to your case will meet with you to learn more about your innovation.
The technology manager and a patent attorney will evaluate your innovation for commercial potential and patentability. If the technology manager and the patent attorney determine that the invention is patentable and has marketing potential, they will work with you to draft a patent application.
When a patent application is filed with the USPTO, it is routed to a patent examiner with the appropriate scientific background for review. The examiner reviews the application in light of patent law and “prior art” (previous work in the field) to determine whether the claims made in the patent are allowable. The examiner will issue an Office Action which rejects most or all of the claims in the first review. This is a standard procedure. The patent attorney, working with UW TechTransfer staff and the researcher, responds to the examiner’s comments. Often several rounds of patent examiner review and attorney response are required, extending over two years or more, before a patent is allowed to issue or is finally rejected.
Obtaining a patent is a long process; from the date a patent application is filed to the date a patent is issued can take two to six years or more.
Under UW Intellectual Property Policy [link], UW inventors are required to assign the rights to any patents on inventions made using UW resources to the University. In exchange, the University manages and licenses the patent on the inventor’s behalf, and pays inventors a share of the royalties earned from commercialization of the patented technology. Receiving royalty as a result of licensing UW intellectual property can take from months to years after a technology has been patented.
Public disclosure of an innovation can be any public written or oral discourse that describes the innovation in detail. Publications that are “enabling” (allow one with ordinary skill in the art to arrive at the same invention without due experimentation) can disqualify one from receiving a patent.
Legally, “publication” is broadly interpreted to include journal articles, posters, slides, talks, conference proceedings, abstracts on the Web, theses and dissertations that are available to the public, and discussions with corporate researchers and company personnel. Research group meetings that are not open to the public, communications with one’s granting agency, and confidential discussions, including disclosing your innovation to UW TechTransfer, are not deemed to be public disclosure.
In the U.S., there is a one-year grace period after an enabling public disclosure during which an innovation is still eligible for patent protection. In most foreign countries, however, there is no grace period; if the innovation was made publicly known before a patent was applied for, the patent protection is lost. Thus, before publicly disclosing any innovation or discovery, researchers should first discuss intellectual property issues with UW TechTransfer.
For more information on patents and patenting at the UW, please see Patent FAQs or contact UW TechTransfer.
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