Guide to Inventions and Patents
- Should I Submit My Invention?
- How Should I Submit My Invention?
- When Should I Submit My Invention?
- What is a Patent?
- Will My Invention Be Patented?
- How Publications & Disclosures Affect Your Patent Rights
- Types of Patent Applications
- What to Expect from OTA
- Who is an Inventor?
- Why Maintain Invention Records?
Should I Submit My Invention?
Yes! All UC employees signed a Patent Agreement that requires disclosure to OTA of any potentially patentable inventions. This includes inventions developed with or without UC time or resources. In the latter instances OTA may release the invention to the inventor(s).
How Should I Submit My Invention?
OTA’s website has a link to UCI’s Record of Invention (ROI) form. Download the MS Word file, complete the form, and send it to OTA at ZOT 7700.
When Shuold I Submit My Invention?
Ideally, you should disclose your invention to OTA after you have constructively (i.e. on paper) or actually (i.e. physically) reduced it to practice and before any publication or presentation to the public.
What Is a Patent?
A patent is a property right that gives the inventor the opportunity to exclude others from making, using or selling the invention, generally for a term of 20 years from the date of filing the application. In return, the inventor(s) must publicly disclose the invention.
Will My Invention Be Patented?
Because of the substantial costs of patenting your invention, whether or not it will be patented will be determined in large part by 3 criteria: 1) patentability under U.S. Patent and Trademark Office (USPTO) rules and regulations, 2) technical merit, and 3) commercial value.
Under U.S. Patent Rules and Regulations, an invention must meet certain requirements to be patented, including novelty, non-obviousness, usefulness, and an absence of any statutory bar.
- Novelty: The invention must be new - i.e. prior to the date of invention, it must not have been known or used in the U.S. by others, nor could it have been patented anywhere. Before submitting their invention to OTA, inventors should perform a “prior art” search to determine if there is existing, similar technology that bears on novelty or obviousness. Any such findings should be disclosed to OTA, including an explanation on how the invention differs.
- Non-obviousness: If the invention is something that is obvious to one of ordinary skill in the art, then it is considered a nominal advancement and should not be patentable. To overcome a rejection based on obviousness grounds, the invention should have an unexpected benefit or produce results beyond ordinary expectations.
- Usefulness: The invention must work for the purpose intended.
- Statutory Bars: The 3 most common statutory barriers to obtaining a patent are the following:
- Public Use: An invention used by any person not under confidentiality may forfeit patent rights if a patent application is not filed within 1 year of said use.
- On Sale: An inventor who sells his invention to any person within the U.S. may forfeit patent rights if a patent application is not filed within 1 year of said sale. An actual sale is not required—it is enough that it was offered for sale. Offering an invention to companies for License is probably sufficient.
- Publication: See How Publications & Disclosures Affect Your Patent Rights.
In addition, the inventor must disclose the best mode for carrying out the invention, even if considered a trade secret.
Your invention will also be evaluated for Technical Merit and Commercial Value. Technologies that can revolutionize/start a new industry or provide a solution for a critical need are more likely to be patented than those that offer a slight improvement over existing technologies. Similarly, inventions that are likely to generate significant revenue are better candidates for patenting than those whose markets are marginal. Please inform OTA of any industry contacts and companies who may be interested in the invention.
How Publications & Disclosures Affect Your Patent Rights
Journal articles, posters, slide shows, websites, emails, and even verbal presentations may be considered a public disclosure. A public disclosure is any publication that is 1) enabling to a person of ordinary skill in the art, 2) sufficiently accessible, 3) and disclosed under non-confidential (implied or explicit) circumstances. In most foreign countries, such a disclosure will forfeit patent rights. The U.S. allows a 1 year grace period from the date of disclosure to apply for a patent. Ideally, an inventor will submit an ROI to OTA before he/she discloses the invention in any detail. OTA can then file a “provisional” patent application to preserve foreign and domestic patent rights.
Types of Patent Applications
- "PROVISIONAL” is an informal patent application that is not examined by the USPTO, but can be filed to pre-date an inventor’s 1st planned public disclosure or to pre-date competitors. Once a provisional is filed, there is a 1 year deadline to maintain the priority date and to decide whether or not a non-provisional and/or PCT should be filed.
- “NON-PROVISIONAL” is a formal patent application assigned to a USPTO Patent Examiner with expertise in the invention’s field. The Examiner will inspect the invention to ensure that it complies with patent rules and regulations. In “office actions”, the Examiner may require limitations to the patent’s breath of coverage before allowing it to issue. The applicant will have an opportunity to respond to any office actions. This process is known as “patent prosecution”. Approximately 2 out of 3 applications result in a patent after an average of 3 years of prosecution.
- “PCT” (often called an “international application”) is an application as set forth by the Paris Convention Treaty. It allows the same application to be sent to different foreign countries for consideration at the foreign national level.
- “FOREIGN NATIONAL” application is analogous to a U.S. non-provisional, and constitutes a formal application in a particular country.
For more information regarding applications please see the USPTO’s website.
What to Expect from OTA
The First Week: A Patent and Licensing Associate (LA) within OTA will be assigned to your invention. It will be given a UC case number and reported to sponsors or co-inventing institutions when applicable.
The First 3 Months: After evaluating the invention for patentability, commercial viability, and any statutory bar dates, a provisional application may be filed.
If the invention is ready to be marketed, OTA will develop a non-confidential disclosure (NCD) of your invention for marketing purposes. A list of companies that may be interested in licensing the invention will be compiled from many sources. Perhaps the most important of these are referrals from the inventors themselves. These companies will be given the NCD and any public publications. Any 3rd party who desires detailed information will be required to sign our standard confidential disclosure agreement.
Inventors are encouraged to seek out and engage potential licensees on their own. Please keep the LA in charge of your case appraised of your activities. This will prevent duplication of efforts and allow OTA to assist you in your discussions or negotiations with the 3rd party.
The Long-Term: If OTA decides to apply for a patent on your invention, we will work with a qualified Patent Attorney throughout the prosecution process. OTA will continue to manage the invention as long as it is deemed commercially valuable.
The marketing and licensing process is ongoing and may be done in stages as improvements to the invention are made. Please be sure to inform us of any new developments or contemplated publications.
Who is an Inventor?
Unlike credit for publications, deciding who is an inventor on a patent is a legal determination and not a subjective choice made among participants. Only those individuals who contributed to the subject matter contained in one or more claims in the patent can be named as an inventor. If two or more people work together and share at least one claim in the patent, they can all be named inventors. Factors irrelevant to inventorship include the amount of time and effort required to verify results or to physically reduce the invention to practice. Also irrelevant is the amount of financial contribution or supervision on the project. Claiming inventorship when it is not justified or omitting an inventor can invalidate the patent. A proper laboratory notebook can help determine whether or not you are an inventor.
More on inventorship...
Why Maintain Invention Records?
The US practices a system of patent law in which the first inventor(s) is entitled to the patent. When two or more inventors independently submit an application covering the same invention, an “interference” proceeding is initiated at the USPTO. The USPTO will examine three critical stages to determine who is the first inventor: when: 1) the invention was first conceived, 2) the invention was reduced to practice, and 3) the date an application was filed. In addition, the USPTO will examine the work done in-between stages to determine each contestant’s “diligence”, i.e. level of activity. (An inventor who was idle for an unreasonable amount of time may lose his/her priority date). A laboratory notebook is instrumental in proving when these stages occurred, who accomplished them, and their diligence. Thus, a notebook can determine the outcome of interference proceedings, and whether or not one is justified in being named an inventor in the first place.
More on recordkeeping...
