EVMS Inventors Guide
Technology commercialization begins with you, the researchers and inventors, and your submission of an invention disclosure to EVMS Technology Transfer. As an inventor your role doesn’t end with the Invention disclosure it continues throughout the entire commercialization process as described below.
What is Technology Transfer
Technology transfer is the movement of knowledge and discoveries from the research environment to the general public. This can occur through publications, exchanges at conferences, and relationships with industry. For the purposes of this guide, however, technology transfer refers to the licensing of research technology to third parties and the formation of new companies for the benefit of the Commonwealth of Virginia, EVMS and our inventors.
EVMS works with independent attorneys specializing in intellectual property protection who have a technical background in science as well as law. Working actively with the attorneys and inventors intellectual property protection will be sought.
How Do I Submit an Invention Disclosure
When an inventor believes that they have made an invention, they need to disclose the information to EVMS Technology Transfer by filling out an online form known as an invention disclosure. This disclosure should list all sponsors of the research and should include all the information necessary to pursue intellectual property protection and commercialization activities. It is critical that each section be completed in as much detail as possible and any prior or upcoming publications or other public disclosure describing the invention should be noted. This document will be treated as confidential.
The invention disclosure is evaluated to determine its commercial potential; not every invention will take the next step toward commercialization. The three primary considerations are patentability, the market, and the nature of the technology.
Patentability is about whether a patent can be obtained considering a variety of factors including prior filings and publications from third parties or the inventors themselves and how they affect the breadth of the claims as embodied in the invention disclosure.
The market inquiry looks at many factors including existing solutions to the problem solved by the invention, how much the invention improves those solutions when quality and cost measures are considered, the size of the market, and the existing competitors.
The technology part of the evaluation considers various aspects of the technology including its state of development related to the time and cost to bring it to market and the subsequent regulatory requirements like FDA approval.
These evaluations are made by the EVMS Technology Transfer Office who consult with independent third parties and the inventors to make an accurate assessment of the invention. Inventions that move on to the next stage are re-evaluated for commercial potential several times during the process and inventions can be pulled from the process for lack of development, funding or sufficient commercial potential at any point.
With the inventor’s collaboration, a non-confidential marketing summary will be developed and then sent to potential licensees. Potential licensees are identified by both the inventor and EVMS Technology Transfer and their network of contacts and research partners.
Does Submitting an Invention Disclosure Secure Patent Protection
Submitting an invention disclosure does not directly result in any form of intellectual property protection. EVMS Technology Transfer assesses a technology for commercial applicability and then makes a determination as to the appropriate course of action. You will be kept informed and be included in the subsequent processes.
What Constitutes Public Disclosure
Public disclosure includes journal publications, website publications, presentations at conferences, posters, dissertation/master thesis or abstract publication.
What is “Prior Art"
Prior art refers to anything regarding a potential invention that has come before. A patent has to be novel and non-obvious. Journal publications, foreign patents, issued U.S. patents and patent applications are all areas that can constitute prior art. Since an inventor understands better than most what an invention entails, he or she should be familiar with as much of the prior art as possible regarding the invention space. Searches of the Internet, journal articles and patents are helpful examples of sources to conduct prior art searches. Researchers can also search the U.S. Patent & Trademark Office (USPTO) website at www.uspto.gov.
What Can Be Patented
An invention is patentable if it is novel, non-obvious, and useful. Novel, of course means new. Non-obviousness is achieved if someone who is skilled in the art would not have thought of the idea easily. A new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement may be eligible for patent protection. Methods making use of concepts and ideas may be eligible for patent protection. On the other hand, concepts and ideas are not patentable.
What is the Patenting Process
Patent applications are generally drafted by a patent attorney. The patent attorney will typically ask you to review an application before it is filed as well as ask questions about inventorship. At the time an application is filed, the patent attorney will ask the inventor(s) to sign an Inventor Declaration and an Assignment under which the inventor(s) confirms assignment of his or her rights in the patent to EVMS.
Within 30 months, depending on the technology, the patent attorney will typically receive written notice from the USPTO as to whether the application and its claims have been accepted as patentable in the form as filed. More often than not, the USPTO rejects the application because either certain formalities need to be cleared up, or claims are not patentable over the prior art. This letter sent by the USPTO is referred to as an office action. If the application is rejected, the patent attorney must file a written response, usually within three to six months. Generally, the attorney may amend the claims and/or point out why the USPTO position is believed to be incorrect. This procedure is referred to as patent prosecution. Often it will take several USPTO office actions and responses from the attorney before the application is resolved. The resolution can take the form of a USPTO notice that the application is allowable and issue a patent. During the prosecution process, input from the inventors is often needed to confirm the patent attorneys’ understanding of the technical aspects of the invention and/or the prior art cited against the application.
Does it Cost Anything to File a Patent
Between USPTO filing fees and associated attorneys costs, filing a multi-nation patent can cost well over $200,000. International patent filings are expensive and can cover a larger number of countries, involve foreign attorneys and translators. Additionally, there are annual maintenance fees for all patent applications, expanding the total cost over the lifetime of a patent even further.
May I Use Material or Intellectual Property from Others in my Research
It is important to carefully document dates and conditions of use so that EVMS can determine if this use may influence the commercialization potential of your subsequent research results as well as the rights of other entities. If you wish to obtain materials from outside collaborators, an incoming material transfer agreement should be completed.
Will I be able to Publish and Still Protect the Results of my Research and Protect the Commercial Value of my Intellectual Property
Yes, but since patent rights are affected by these activities it is best to submit an invention disclosure form well before any public communication or disclosure. There are significant differences between the U.S. and other countries as to how early publication affects a potential patent. Whenever public disclosure occurs, worldwide patent rights may be lost for that invention. Additionally, there is only a one-year period to obtain patent protection in the U.S. Contact EVMS Technology Transfer prior to public disclosure to make sure your work is appropriately protected.
What Right does a Research Sponsor have to any Discoveries Associated with My Research
The sponsored research agreement or grant agreement should specify the intellectual property rights of the sponsor. In the case of the U.S. government (NIH, NSF etc.) it maintains a non-revocable, non-exclusive license to use the technology. For commercial sponsored research the university typically retains ownership of any patent rights developed independently resulting from the sponsored research. However, the sponsor may have rights to obtain a license to intellectual property arising from the research. Often, sponsored research agreements allow the sponsor a limited time to negotiate a license for intellectual property rights developed as the result of research. Even so, a sponsor generally will not have contractual rights to discoveries that are clearly outside the scope of the research (and which do not use funds from the research agreement). Therefore, it is important to define the scope of work within a research agreement. Sponsored research agreements are managed by the Office of Sponsored Programs (OSP). Their representatives work closely with EVMS Technology Transfer on intellectual property issues in sponsored research agreements.
What About Consulting
When faculty or staff enter into consulting agreements, they remain bound by all university policies and procedures regarding the disclosure and ownership of existing and potential intellectual property. Consulting agreements are not negotiated by EVMS but EVMS does provide guidelines for faculty to better understand the process. Researchers who enter into consulting agreements should familiarize themselves with university policies relevant to consulting activities. A researcher is expected to ensure that the terms of a consulting arrangement are consistent with the university’s policies, including those related to IP ownership, employment responsibilities and use of intellectual property. EVMS Technology Transfer is available to provide informal advice on how a consulting agreement relates to the school’s intellectual property you have created.