Investing in research, making a difference. Patent Basics for UW Researchers Leah Haman Intellectual Property Associate WARF [email protected] 1

Investing in research, making a difference.

Patent Basics for UW Researchers

Leah Haman

Intellectual Property Associate

WARF

[email protected]

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WARF Overview

• Established in 1925 by Prof. Harry Steenbock • An independent, tax exempt, nonprofit, supporting

organization for UW-Madison and Morgridge Institute for Research (MIR)

• Official designated technology transfer office for UW-Madison and MIR

• WARF’s Mission: To support scientific research at UW-Madison and MIR by:

– Moving inventions into the community– Investing licensing proceeds to fund further research

• Since its founding in 1925, WARF has:– Obtained over 2,300 patents– Completed over 1,600 license agreements

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WARF’s Annual Margin of Excellence Gift

• Overall, WARF has given over $1.2 billion to UW-Madison since its founding– Research projects, named professorships, graduate fellowships, faculty retention, research

facility construction

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Conceive and start to develop your idea for a new technology or an improvement to an existing technology.

Research and Discovery


Make your invention known to WARF.Submit an Invention Disclosure Report.

Meet with a WARF Intellectual Property Manager.Explain your invention to WARF.

Invention Disclosure


The WARF Disclosure Committee assesses your idea.Is it protectable?

Is there a market for it?Can we license it?

Some disclosures may be determined a “predisclosure,” in which case, WARF can reconsider your disclosure if you decide to develop the technology further.

WARF Decision


We either accept or don’t accept the invention; either way there’s a Graduate School Equity Review to determine funding sources and ownership rights to the invention.

If we accept, you sign a Memorandum Agreement, in which you agree to assign your idea to WARF, and WARF agrees to share 20 percent of any licensing revenue with the

inventor group.

Inventor Is Notified by WARF


You meet with your WARF Intellectual Property Manager and a patent attorney who is retained by WARF.

An experienced patent attorney drafts the application with your input. The application is filed with the U.S. Patent and Trademark Office (USPTO).

The application is examined by the USPTO A patent issues and the inventor is notified.

Patenting


What Is a Patent?

• A patent is:–Grant of a property right to

the inventor• “Right to exclude”

–Issued by the United States Patent and Trademark Office

–Utility (regular or provisional)–Design–Plant

• The U.S. Constitution:– “Promote the Progress of

Science and useful Arts by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”


Patent Requirements and Criteria

• Patent application includes:– Specification describing the

invention, enabling the practice of the invention, and disclosing the best mode of carrying out the invention

– Drawings– Claims, which must be definite

and reference an appropriate written description

• Patent must be new, useful, and non-obvious– New: The invention must be

demonstrably different from publicly available ideas, inventions, or products ("prior art")

– Useful: The invention must have some application or utility or be an improvement over existing products and/or techniques.

– Non-Obvious: The invention cannot be obvious to a “person of ordinary skill in the art“.


Leahy-Smith America Invents Act (AIA)

• The U.S. moved from a “first to invent” to a “first inventor to file” system for applications filed on or after March 16, 2013.

• Actions and prior art that bar patentability will include public use, sales, publications, and other disclosures available to the public anywhere in the world as of the filing date, other than publications by the inventor within one year of filing– Intervening publications based on the inventor’s publication may be an issue

• The U.S. still has the grace period for the inventor’s own work; many countries have a requirement of “absolute novelty”

• Public participation in examination process more typical internationally and new provisions in U.S. law allow this as well


Patent Examination Timeline

EXAMIN

ATION

FIRST O

FFICE

ACTION

RESPONSE

TO OFFIC

E

ACTION

FURTHER

OFFICE

ACTIONS

FINAL

OFFICE

ACTION

NOTICE O

F

ALLOWANC

E

Application assigned to an

examiner

Examiner searches for

prior art

Examiner applies tests for novelty, non-obviousness

and utility

Initial rejections of some or all claims are common

Office action spells out issues that need to be

addressed

Arguments to persuade the

examiner that the prior art

was incorrectly applied

Claims may be amended to

further distinguish the invention from

the prior art

Examiner reviews

arguments and/or

amendments

If arguments are persuasive,

claims may be allowed or new rejections may

be made

Applicants can respond if only

minor amendments are

needed

Otherwise, a request for continued

examination or an appeal can be

filed

Congratulations!

Claims are allowable and the patent can

issue

Issue and publication fees

are paid


WARF Licensing Manager identifies companies that may be interested in the invention and pro-actively markets the technology to those companies.

WARF Licensing Manager identifies the commercial space for your invention.A summary of the technology is written and posted on the WARF Web site.

Other marketing materials may be developed.

Marketing


A patent license is negotiated with a potential licensee. A patent license is a contract between the patent owner (WARF) and a commercial

partner that gives the Licensee permission to make, use, sell or import the invention.

Licensing revenue is returned to the Inventor and the University, where it is used to support further research.

Licensing


Questions?Questions?

Documents

Investing in research, making a difference. Patent Basics for UW Researchers Leah Haman Intellectual Property Associate WARF [email protected] 1