Patents

One of the 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 may enhance our 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.

What is a patent?

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) 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.

What is the patenting process at the UW?

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. A patent is ultimately a business decision – will the value of distributing your innovation be substantially increased by a patent?

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 is to engage UW TechTransfer.  If your innovation or discovery is hardware or biologicals, a Record of Invention (ROI) form needs to be submitted.If your innovation or discovery is software or digital materials, you will work with our Digital Ventures unit.

Once you have contacted UW TechTransfer, a technology manager assigned to your case will meet with you to learn more about your innovation and to work with you in determining whether a patent is appropriate.

If a patent can help you and the university achieve a positive business strategy for marketing your innovation, your technology manager and a patent attorney will work with you to draft a patent application.  A provisional patent application may be filed first, up to a year before a full US patent application is filed.  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, 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.

Who owns patents on UW innovations?

Under UW Intellectual Property Policy, 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, their department and college, a share of the royalties earned from licensing the patented technology. Receiving royalty as a result of licensing UW intellectual property can take months to years after a technology has been patented.

What is public disclosure?

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 you and UW 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. The best practice is to first contact UW TechTransfer to discuss intellectual property issues before publicly disclosing your innovation or discovery.

For more information on patents and patenting at the UW, please see Patent FAQs or contact UW TechTransfer.

« Back to Managing Your Innovation’s Intellectual Property page