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Getting Started: Patents
Introduction | Understanding Technology Commercialization | Patents | Copyrights
How do you know you have a patentable invention?
A patentable invention must meet three criteria:
1. Novelty
An invention is not novel if it is already in the public domain, which means it cannot have been known or used by others in the U.S. or patented or described in a printed publication anywhere by others before the date of invention by the inventor.
The "clock" starts "ticking" the moment an individual publishes, holds out for sale, sells or publicly uses his or her invention; in other words, when an inventor makes an "enabling disclosure," furnishing enough information for others to be able to reproduce his or her invention. Once any of these situations occurs, one year is allowed for a patent application to be filed with the U.S. Patent and Trademark Office (PTO); however, important foreign protection rights are lost to the invention, unless a patent application is filed in the United States prior to disclosure.
Note that the period between the date of the invention and the date of the first public disclosure may be considerably longer than one year. Caution: An inventor can lose patent rights by discontinuing a diligent effort toward the completion of an invention. If an inventor puts an idea "on the shelf" to pursue other matters, and a second inventor conceives and reduces the same idea to practice before the first inventor does, the second inventor will be awarded the patent. Inventors are encouraged to maintain a bound invention notebook where their ideas are continually recorded, dated and witnessed.
By filing a patent application in the U.S. before making an "enabling disclosure," international treaties preserve the inventor's right to file abroad within one year from the U.S. filing date. Inventors should be aware that discussion of the essence of an invention not under confidentiality, even to a relatively small number of peers or colleagues or to a small group of company officials to attract funding could cut off the possibility of securing important foreign patent protection. Inventors should be aware that some private companies will not invest in an invention unless patent coverage is available in commercially significant parts of the world. Inventors are strongly urged to carefully weigh the value of foreign protection before publishing anything about their inventions and discoveries.
Another cautionary tip is related to government grant applications. Unless protected as proprietary and confidential, government proposal information becomes accessible to the public once the application is granted. If a researcher's grant application contains a potential invention, the applicant must ask the granting office to keep confidential those portions of the application that describe the invention.
The United States operates under the philosophy that the first person to conceive an invention is entitled to a patent in the United States. In most of the rest of the world the first to file is the one entitled to the patent.
2. Utility
The invention must be useful. A corollary of this condition is that the inventor must convince the U.S. Patent and Trademark Office that his or her invention will work. For example, if a researcher applies for patent protection of a therapeutic drug against AIDS and provides proof that it works in vitro or in mice, then chances are good that, at present, it will be rejected by the PTO because neither in vitro tests nor mice are good models for human AIDS disease. The PTO will ask for human data.
3. Non-Obviousness
The PTO will require that the invention have differences above and beyond the exercise of ordinary skill in the art. The PTO, in its review procedures, may argue that a claimed invention is no more than an obvious combination of other known and similar technologies. Also, it assumes that an inventor is aware of all of the patents and publications available that deal with the same subject matter.
Why Patent an Invention?
The most important advantages to obtaining a patent for an invention are 1) establishing rights in the invention; and 2) providing the best mechanism to make an invention available to the public. Private companies may fund research or license and develop the invention into final products and services only when/if proprietary rights are available.
UIC Assistance
If you think you might have an invention, or if you have a question about rules or procedures, contact OTM as early as possible. They can put you on the right track to protecting your invention while assuring that university policies are followed and your rights and benefits are protected.
We recommend that you:
- Document your work. Have you kept thorough notes so you can establish your priority as an inventor? Have you made regular entries of your ideas, laboratory data, and work performed? Have you signed and dated each entry? Are entries properly witnessed?
- Recognize that a new discovery may be an invention. Does it solve a problem? Does it satisfy an industrial or scientific need? Does it improve upon an existing invention or procedure?
- Disclose your invention to the University as quickly as possible - before you publish. OTM will evaluate your invention to determine whether it could and should be protected.
- Talk to us before you take another step!
For more information, visit the US Patent and Trade Office.
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