IDEA DEVELOPMENT & IP PROTECTION
The journey of an invention from conception to commercialization is complex, requiring careful navigation. As an inventor, you play a pivotal role in this process. Understanding the intricacies of public disclosure, intellectual property protection, and timely partner engagement is essential to maximizing the value of your innovation.
Invention Disclosure | Taking A Critical First Step
An invention disclosure serves as the official notification of an invention to the Office of Intellectual Property Management (OIPM). It involves a detailed invention description, including its technical aspects, novelty, and potential applications. Inventors should submit disclosures promptly, ideally before any public disclosure, to preserve potential patent rights. OIPM and TUII will review disclosures dealing with patentable inventions, copyrights, software, tangible property, trade secret/know-how information, and more. While the process can be time-intensive, we won’t inhibit your ability to publish or disclose your idea once we file for intellectual property protection. OIPM reviews the disclosure and assesses the feasibility of pursuing intellectual property (IP) protection, while TUII can assess all inventions for commercial potential.
Make confidential disclosures at Tulane.wellspringsoftware.net
Patent Protection | Time Sensitive Protection Guidelines
Public Disclosure |
A Potential Pitfall
Premature public disclosure of an invention can negatively impact its patentability. Activities that constitute public disclosure include presentations, publications, demonstrations, and even casual discussions outside of confidential settings. Therefore, inventors must be vigilant about safeguarding their inventions until a patent application is filed. OIPM can provide guidance on navigating this critical aspect and ensure that public disclosure does not jeopardize patent rights. It’s highly recommended that you are proactive with invention disclosures because they protect you and your ideas.
First-to-File System |
A Race to the Finish
The United States operates under a "first-to-file" system, meaning the first inventor to file a patent application for a particular invention is usually granted the patent, regardless of who conceived the idea first. This system incentivizes inventors to disclose their innovations and file patent applications promptly.
Patentability Assessment |
Weighing the Odds
After an invention disclosure is submitted, OIPM conducts an initial patentability assessment. This evaluation involves examining the invention, its novelty, and non-obviousness against known prior art, including patents and published patent applications. The initial assessment helps determine whether the invention will likely meet the legal requirements for patentability.
The OIPM team then communicates the results to the inventor and determines the most appropriate course of action.
Market Potential Evaluation |
Assessing Commercial Viability
Beyond patentability, an invention's market potential is crucial for determining its commercial viability. TUII evaluates the market landscape, including existing solutions, potential competitors, target customers, and market size. This information helps to determine whether the invention has the potential to generate significant revenue and return on investment.
The Patent Journey | From Conception to Issuance
The path to securing a patent in the United States is complex and fraught with procedural nuances, strategic considerations, and significant investment. For inventors and technology transfer offices, navigating this process requires a clear understanding of four key stages involved:
- Provisional Filing
At Tulane, the initial step toward patent protection is filing a provisional patent application. This document serves as a placeholder, outlining the invention's core concepts and establishing a priority date for the disclosed concepts. Unlike a non-provisional application, a provisional does not require extensive details or claims, offering inventors and tech transfer offices a cost-effective and flexible option to hold their place while further developing their invention. It is important to note that while a provisional does not have as many rigid requirements as a non-provisional, the best strategy is to disclose the inventive concept fully and put a robust filing on file as soon as reasonably practicable.
2. Non-Provisional Filing
To formally pursue patent protection, a non-provisional application must be submitted within 12 months of the provisional filing date. This document delves into greater detail, including comprehensive descriptions, drawings, and clearly defined claims that precisely define the invention's scope. Legal fees are significantly higher than those associated with provisional applications.
3. Patent Prosecution
Once a non-provisional application is filed, the patent office assigns it to an examiner who reviews it for patentability. This stage can be lengthy and require extensive back-and-forth communication between the patent office and the applicant, requiring an applicant to address objections and refine the claims. It's crucial to note that while claims can be amended if supported by the application, adding new matter to the application after filing is not permitted, making the initial application's accuracy and completeness critical.
4. Patent Issuance
If the examiner believes the application satisfies all applicable legal requirements, the patent office issues a Notice of Allowance, marking the final hurdle before the patent grant. This process can take several years. Therefore, universities typically seek to partner with industry licensees early in the filing process. This allows licensees to assume the prosecution costs and potentially influence the claim scope to better align with their commercialization plans. A license can be to an established company or a startup.
Foreign and regional filings add a layer of complexity and increased cost to the patent process. Universities often prioritize securing protection in key markets aligned with the invention's potential and partner with international patent firms to navigate each jurisdiction's specific filing requirements and legal nuances.
Ultimately, if successful, the patent process culminates in the issuance of a patent, granting the inventor exclusive rights to their invention for a limited period. The issued patent can serve as a critical intellectual property (IP) asset, enabling universities to generate licensing revenue, attract industry partnerships, and drive the commercialization of innovative technologies that benefit society.
IDEA DEVELOPMENT & IP PROTECTION
Additional Considerations | Beyond the Basics
In addition to the core aspects mentioned previously, several other points are crucial for effective commercialization, including:
Using Non-Monetary Agreements as Early Partnering and Engagement Tools
Non-Disclosure Agreements (NDAs)
In the fast-paced world of innovation, inventors often find themselves in a race against time. Balancing the need to protect their invention with the desire to explore its commercial potential can be a delicate act. This is where non-disclosure agreements (NDAs) emerge as powerful tools. By requiring potential partners, investors, or collaborators to sign an NDA, inventors can help ensure confidentiality for their invention while exploring its market viability. This crucial window of time allows inventors to conduct market research, develop prototypes, and refine their ideas before publicly disclosing their inventions. In essence, NDAs can buy inventors valuable time to strategize and build a strong foundation for their intellectual property, ultimately increasing their chances of securing patent protection and successfully navigating the path to commercialization.
Material Transfer Agreements (MTAs)
In collaborative research, sharing valuable materials and know-how is often essential for achieving groundbreaking results. However, the very act of sharing can introduce uncertainty and potential risks. This is where Material Transfer Agreements (MTAs) come into play, acting as the guardians of innovation's building blocks. MTAs establish clear boundaries for using and disseminating research materials, ensuring that both parties retain ownership and control over their respective intellectual property. By outlining the terms of material transfer, including restrictions on use, distribution, and future inventions derived from the shared material, MTAs prevent unintended consequences and safeguard the value of each party's contribution. This creates a framework for collaboration that fosters trust, protects intellectual property rights, and ultimately paves the way for the successful development and commercialization of inventions.
Request an NDA or MTA at tulane.wellspringsoftware.net
Collaboration Agreements
Hybrid collaboration agreements, incorporating elements of MTAs and NDAs, provide a powerful tool for early-stage partnerships. These agreements define, among other things, roles, responsibilities, material transfer terms, confidentiality clauses, publication timing, and IP ownership, fostering transparency, building trust, and safeguarding intellectual property.
By addressing these critical points, such agreements pave the way for open communication, collaboration, and innovation, increasing the chances of a successful and mutually beneficial partnership.
