Definition and Terms
Describing your invention
You must describe your invention fully in the patent application, with enough detail that one of skill in the art can make or use the invention. If, for example, your invention is a single compound, you should describe the class of compounds that will include that single compound. You may also describe closely related compounds, but only if you can provide a full teaching of how to make and use each of them.
Once the OTT receives an invention disclosure, it evaluates the technology for commercial potential and decides whether to seek a patent. Evaluation involves researching the invention, its possible commercial uses, and its patentability. The evaluation may indicate that the best route for commercializing the technology is not to seek a patent, even though the invention may indeed be patentable. Instead the OTT may market the technology through a fee-bearing material transfer agreement. Usually an MTA is appropriate for a research material, such as a new antibody or a polymer.
The patent criteria are open to the judgment and interpretation of the patent examiner, and you may be able to negotiate their interpretation with the U.S. Patent and Trademark Office.
New or Novel
The invention is not the same as any described in prior public disclosures, including publications and patents; and the invention has not been known to the public, as in a commercial product.
The invention is not obvious to a person of ordinary skill in the art. This may be demonstrated by showing that there is no suggestion, teaching, or motivation to create the invention in the prior art
You cannot patent your invention in the United States if it has been offered for sale, sold, described in a printed publication, publicly used, or commercially used on a secret basis, in the United States, more than one year before you file your patent application. Examples of publications are: 1) abstracts submitted for presentation at a meeting which are published in abstract books, 2) electronic publishing of journal articles, 3) web sites, 4) dissertations, 5) abstracts of grant proposals. Patent law does not require that inventions be actually reduced to practice in order to be patentable. However, mere extrapolation about an invention that claims a broad class of chemical compounds is rarely granted a patent. A claim, even to a single new compound or plasmoid vector, must usually include a detailed description of its actual synthesis or construction, in order to receive patent protection. Patent protection of novel genes requires the complete sequence and a showing of its biological utility.
Patents are usually sought for technologies that could lead to new products or methods. For a limited time, the holder of a patent has the right to exclude others from using the invention without permission (that is, a license to the patent). In exchange for this exclusionary right, the inventor is obliged to disclose the invention fully in the text of the patent, so that others can build on this knowledge. Utility patents expire 20 years from the date of filing with the US Patent & Trademark Office, if maintenance fees are paid. After a patent expires, anyone may use the invention without the patent holder's permission.
A patent's exclusionary period provides a company with a window of no competition or limited competition, which translates to the possibility of recouping the investment it, takes to develop and launch new products or methods. This right to exclude others is especially important for inventions that require a commitment of significant resources before a product can be marketed and sold, such as a medical device or drug.
Patent applications include background experiments and a description of the best mode of operation for the invention. They also establish the claims, or scope, of the invention. The OTT works with inventors and patent attorneys to develop the broadest possible claims for new inventions. An example of a claim for discovering the relevance of a particular biochemical pathway might be for the use of that pathway to identify inhibitors that could then be used as pharmaceuticals for preventing or treating a disease. Occasionally during the dialogue of claim development additional experiments become apparent that could strengthen a specific claim and increase the value of the invention. Time is of the essence when it comes to disclosing an invention. According to US patent law, the inventor has a year after public disclosure to file for a patent, but in other countries patent rights are lost once an invention has been disclosed publicly. Before publishing inventions or speaking about inventions in public, investigators are advised to disclose them confidentially to the OTT so that it is possible to obtain patent rights worldwide. It is important to note that electronic disclosure of abstracts prior to conferences could be considered a public disclosure of important elements of a potential patent.
The invention functions for its intended purpose