UD Patent Filing Process
Streamlining for Mutual Advantage
The IP Center has modified the University's patenting process and invention disclosure form to reduce significantly the time required to file a patent application and protect invention rights. Utilizing a patent strategy focused on early provisional patent applications the IP Center will arrange to have a patent application filed within hours using a draft manuscript, proposed presentation, or a grant request under development as the basis of the provisional application. Where time permits, the patent attorney will seek additional information or data to enhance the initial case. In all cases, however, the inventor should communicate with the IP Center before the invention is disclosed outside the University (by publication or presentation). The IP Center will work with inventors promptly after the filing of a provisional application to develop a strategy to market the technology, including the possibilities of further development testing, company partnerships, licensing, or a startup company.
Who Is the Inventor?
Avoiding Mistakes in Inventorship
Under U.S. law, a patent not supported by the oath of the true inventor is void and unenforceable.
One of the most contentious decisions associated with the filing of a patent application relates to the naming of the inventor(s) on the case. Under U.S. law, a patent not supported by the oath of the true inventor is void and unenforceable. As the sole source of information about the actual invention, the statements and disclosures from the inventor are relied upon by the Patent Examiner in assessing the patentability of the invention. The individuals who may be co-inventors are those who have made a contribution to the "conception" of the invention, how to make and how to use the invention, before the conception is complete. In contrast, under the American Association for the Advancement of Science's practices, a co-author would be an individual who contributed to a research plan, assisted with the conduct of experiments, assisted with the analysis of data, or contributed to the writing or review of a manuscript. The standards for designation as an inventor versus and author are very different. While corrections of inventorship are liberally granted by the U. S. Patent and Trademark Office, an inventorship decision made negligently or with deceptive intent cannot be corrected and results in an unenforceable patent.
Informal, Undocumented Collaborations
Talk to the IP Center First
One of the most difficult situations faced by the IP Center relates to an invention disclosure for a patent application which identifies a non-University researcher who may be a co-inventor. Under Murphy's Law, such inventions usually turn out to be quite important. Under United States patent law, the inventor (or the employer of an inventor) is the owner of the intellectual property associated with an invention, and each co-inventor has an equal and undivided right to practice and profit from a patent independent from the other co-inventor. When the University files a patent application naming a non-University inventor, we are put in the position of investing in a patent for which ownership will be shared and the opportunity of an exclusive license does not exist. It should not be a surprise that the outside parties are all too willing to help file such a patent application (since no cost is obligated) and generally refuse to cooperate on commercializing the resulting patent except for a significant share of the revenues obtained by the University. The only cure for such problems is to avoid them through the negotiation and execution of collaborative research agreements dealing with IP ownership, patenting costs, IP exploitation, and revenue sharing before the project begins. The University utilizes collaboration agreement routinely, and researchers are urged to speak with the IP Center before beginning work that can result in the loss of commercial rights to the fruits of their research.
Bruce Morrissey
September 3, 2009