The WMed Office of Technology Development exists to help you get your inventions to companies that can turn them into products that improve human health..
- When should I disclose a discovery/invention to the OTD?
Contact the Office of Technology Development after you have conceived of a novel invention and before you make any kind of public disclosure. Examples of public disclosures include poster presentations, thesis presentations, oral presentations at meetings, written research papers, grant abstracts, web page descriptions, email communications, and phone calls with colleagues not employed by WMed. Think carefully about disclosing your ideas because once an idea is disclosed publicly, international patent rights are lost (although some limited protection in the US may still be possible). Please contact the Office of Technology Development prior to making a public disclosure and an OTD staff member will talk with you about how to discuss your ideas in a way that protects your intellectual property.
- What is intellectual property?
Intellectual property (IP) is any product of the human intellect that has value in the marketplace. Intellectual property includes patented inventions, software and other copyrighted works, trademarks, trade secrets and know-how. Laws in every country give people and businesses property rights to the information and intellectual goods they create, providing monetary incentive for their creation.
To clarify, the table below compares intellectual property with real property.
Real Property Intellectual Property Example Personal automobile Formula for a synthetic compound How Acquired With money obtained performing physical labor With time spent performing mental labor Basic Rights Ownership of your body Ownership of your mind Physical Attributes Yes No Useful Yes Yes Value to Others Yes Yes What''s Protected The property itself Profit from use How''s it Protected Laws related to theft Patent and Copyright Law Can Be Sold or Licensed Yes Yes
While intellectual property initially has no tangible form, it can be described in the physical (tangible) pages of scientific publications and patents. Moreover, one can produce tangible commercial embodiments of intellectual property. For example, vials of a new drug are embodiments of a new compound described in a patent application. It is also important to note that laws related to intellectual property protect IP owners from others who seek to profit from the use of that intellectual property. - Who is an inventor?
Inventorship is governed by a precise legal definition, unlike authorship, which is determined by looser guidelines. An inventor is someone who actually conceives an invention. An inventor is not someone who reduces the invention to practice, unless conception also occurs during the reduction. The OTD can help you determine who qualifies as an inventor of your technology.
- When does an invention occur?
An idea is not enough. In order for an invention to be patented it must first be conceptualized and reduced to practice, or described with detailed drawings, procedures and instructions. The heart of a patent is the detailed information that allows others to make the invention. Think of a patent as an instruction manual. Ideas cannot be patented.
- When is an invention patentable?
Not all inventions are patentable. A patentable invention must be:
- NOVEL: The invention must be new and cannot have been publicly known before applying for a patent. Known as prior art, information that is publicly available in journals, presentations, and conversations cannot be patented. Thus, public disclosure of an invention may result in an inability to obtain a patent, so inventors must understand the consequences of sharing their inventions with others too soon. To avoid the inadvertent loss of patent rights due to public disclosure, you should contact the Office of Technology Development before sharing details of your invention with anyone.
- USEFUL: The invention must have at least one specific use. The best way to satisfy the utility requirement is to reduce the invention concept to practice as evidenced by examples, supporting data or descriptions that demonstrate how it is useful.
- NON-OBVIOUS: It must be unlikely that a person knowledgeable in the field of use and with ordinary skill in the art could develop the same invention. Even if an invention has not been specifically disclosed anywhere in the prior art, a patent examiner can disallow a patent as an invention because it is obvious.
- Does my invention have commercial value?
Your invention could have commercial value if:
- Its commercial embodiments solve a problem and meet a market need
- It broadens the use of or enables new applications for a previous invention
- A company has interest in your invention
An industry partner must be able to easily understand the value proposition of your invention in a commercial setting. An industry partner must be able to recognize how it can profit from selling a product or service based upon your invention.
- Can an unpatented invention have commercial value?
Some inventions, like a new database structure or a gene, cannot be patented, but that does not mean they do not have significant value for the same reasons listed above. Please contact the Office of Technology Development if you have questions.
- What is the patenting and licensing process?
View our Patenting and Licensing Process web page.
- What are my rights and responsibilities?
The Office of Technology Development wants to be your partner during the entire technology development process. The responsibilities of the inventor and the OTD are described below.
Office of Technology Development Faculty 1. Evaluate new discoveries, provide feedback
2. Protect your IP via patents and/or copyrights, venture all costs
3. Identify commercial partners; negotiate license agreements, monitor for compliance
4. Distribute licensing revenue per WMed policy (faculty, departments)
1. Document all new inventions and file Invention Disclosure Form
2. Participate in patent drafting and responding to all patent office actions
3. Assist in preparation of marketing materials and meet with potential partners
4. Remain active in the further development of the technology
Maintaining realistic expectations is important. Although your intellectual property may appear unique and valuable to you, the commercial application may not be as apparent, or the applicable market may be too small to justify the investment of WMed resources. Also, it is sometimes difficult to obtain a patent and subsequently attract the interest of companies or investors willing to commit resources to commercialize the technology. Although a great deal of time and money may be invested into your invention, it may not be commercialized for a varied number of reasons beyond the control of the inventor or the OTD.