Step 1. Do you have an invention?
Recognition of a patentable invention is the first step to bringing your research forward for the public good in a real world application. For an invention to be patentable it must be novel, non-obvious and useful.
There are 3 ways you can recognize whether you have an invention:
▪ Your discovery meets a need or solves an existing problem.
▪ You have promising scientific data or a working prototype device.
▪ You are not aware of prior art. Prior art is information (e.g. publications, posters, abstracts etc.) which describes any part of your discovery that is publicly available.
If you’re not sure whether your invention is patentable or marketable please call the Office of Intellectual Property Strategy and Licensing (OTT) 305-243-5689. A member of our team will be pleased to assist and advise you.
Step 2. Complete an Invention Disclosure
If you think your invention is patentable please download the Invention Disclosure Form (IDF). Next, complete the form and email it to our office. If you have any questions while completing this form, please call OTT at (305) 243-5689. This step will officially enter your invention into the OTT process and will establish the date of the invention and the names of the inventors.
Some important issues to keep in mind while filling the IDF:
▪ Who is an inventor? An inventor is the individual who contributed to the intellectual inventive process and not necessarily the one who assists in reducing it to practice. A patent is not a scientific publication and an inventor cannot be equated to a co-author. An inventor must have contributed to the novelty of the invention.
▪ Prior art: Do you know of any publications or public disclosures (including your own) in the field that may describe a similar concept or discovery? If so, you are obligated to disclose this information.
▪ Stage of development: Is there a prototype, is there research data, is this an idea, etc.?
▪ What alternatives exist for your invention in the marketplace today?
Step 3. What happens when once you file an invention disclosure form?
Your invention will be assessed for commercial viability. The OTT will evaluate your invention from the perspective of its technology, product and market opportunity, patentability, competition, and research direction. During this step you may be asked to meet with OTT to discuss your invention and answer questions.
This step normally takes one to two months and includes an evaluation of:
▪ Prior art. When was this concept first disclosed?
▪ Freedom to operate. Are there other patents that might obstruct the commercialization of your invention?
▪ Commercial opportunity. While some inventions may be scientifically innovative, their commercial applicability may be limited.
▪ Stage of development. You might have an excellent idea with commercial potential but it may take many years to establish proof of principle.
Step 4. Next the Patent and Copyright Committee
Once the OTT processes your IDF it is presented to the Patent and Copyright Committee (PCC) and you may be invited to present your invention. You will be notified by email regarding the place and date of the meeting.
The PCC will decide whether to:
▪ File a patent application and commercialize your invention.
▪ Wait for additional enabling data or a full length manuscript
▪ Release the invention rights to the inventor(s) with certain conditions
▪ Release the invention rights to the funding agency
If the decision is made to file a patent application you will be working with OTT and a patent attorney to develop the best possible application. This step normally takes about two months. The U.S. Patent and Trademark Office (USPTO)web site is useful if you wish to learn more about patents.
Step 5. Commercialization
Remember, it is in everyone’s best interest for your invention to be commercialized if it is patentable and has marketable value. To this extent, if the patent and copyright committee chooses to file a patent application on your behalf, the OTT will make every effort to find a commercial partner with whom to license your invention.
OTT will work with you to develop promotional and educational materials and to identify companies that are likely to be interested in investing in your invention. The marketing of your invention to potential commercialization partners will begin once a patent application has been filed. If a company is interested in your technology, OTT will facilitate collaboration between you and the company through a variety of contracts. The first contract is usually a Confidentiality Agreement which allows for an open exchange of information and productive meetings. The ideal situation is when a company sponsors research in your laboratory for a collaborative product development effort and licenses the patent application to gain commercialization rights. OTT will make the contract process as seamless as possible.