Q. When should I contact the TTO?
If you believe that you have made a new discovery or invention, you should contact the TTO before you make a public disclosure. When you have an abstract or manuscript that is ready for submission, you should consider whether there is an invention with potential commercial application. IF YOU MAKE A PUBLIC DISCLOSURE PRIOR TO FILING A PATENT APPLICATION, YOU MAY FORFEIT PATENT PROTECTION OUTSIDE THE UNITED STATES AND REDUCE THE VALUE OF YOUR INVENTION TO COMPANIES. The law in the United States provides a one-year grace period to file an application after the public disclosure of an invention. This grace period applies only in the U.S. Err on the side of caution and contact the TTO early.
Q. Who owns my technology?
All inventions made while doing work at the Hutchinson Center using the Center's resources will belong to the center. Please review the Agreement Relating to Inventions for more details. These policies apply to all employees, visitors, graduate students or other students, individuals in a training capacity, and affiliated membership engaged in research and/or study at the center.
Q. What information does the TTO need from me in order to evaluate my technology?
To begin evaluation of your technology, you will need to contact the TTO to discuss your discovery. The TTO may ask you to complete an invention disclosure form and provide the TTO with a written description of your invention. The written description may take the form of a detailed written description of your invention, a draft manuscript, a grant proposal, or a meeting abstract. The invention disclosure form may be obtained from the TTO office or from the TTO website.
Q. Do I need to reduce the invention to practice before disclosing to the TTO?
The patent office does not require an actual reduction to practice, where your invention is made in physical form or your method or process is actually carried out so that there is a working model of your invention. However, you must be able to describe in writing to the patent office your invention in such full, clear, concise and exact terms so that any person skilled in the art can make and use your invention. The filing of an application with this full, clear, concise and exact description is considered a "constructive" reduction to practice. If your invention is a therapeutic application, in order to comply with the U.S. Patent Office rules, there must be some clinical evidence that your therapeutic application is useful.
Q. What constitutes a public disclosure?
Generally defined, public disclosure is any communication to someone not obliged to keep the communication confidential.
An enabling public disclosure occurs when you provide others who are skilled in the art (not center employees) with information that enables them to recreate your discovery. In patent law, an enabling public disclosure can defeat patentability if it is both public and enabling.
Public disclosures include: oral presentations, meeting and grant abstracts, posters, papers, monographs, book chapters, letters, internet publications, Genbank submissions, etc.
Q. What if I make an enabling public disclosure about my technology before contacting the TTO?
You should still disclose your invention to the TTO for evaluation. While foreign rights may be lost, there is still the potential for obtaining patent protection in the U.S.
U.S. patent law gives an inventor a period of one year to file a patent application after the date of the first enabling public disclosure of the invention. If the disclosure is made more than one year prior to a patent application, the disclosure is considered "prior art" and the invention will likely not be patentable.
There is generally no grace period for foreign filings. If the invention is publicly disclosed before filing a patent application, most foreign rights are lost. If, however, a U.S. application is filed prior to the first public disclosure, there is one year from the filing of the U.S. Application to file foreign applications.
Q. In what cases might the TTO opt not to patent an invention?
An invention might be useful, novel and non-obvious and still not repay the expense of filing and prosecuting the application to the point of issuance. Primary consideration is given to the commercial utility of the invention, the competitive arena, the existence of prior art, the stage of development of the invention, and especially interest by potential licensees. If those components are not there, then the TTO might opt not to patent the invention.
Q. What is a patent?
A patent is a grant of property right by a Patent Authority, such as the U.S. Patent and Trademark Office. All countries in the world provide inventors with a right, for a limited time, to prevent others from making, using, selling, or offering to sell his/her invention. In the U.S. and in many other countries, the term of a patent is 20 years from the date the first patent application is filed.
Patents are intended to foster innovation by providing an incentive to make inventions public (through publication of the issued patent). Inventors are allowed the right to control their invention for a specific length of time in exchange for disclosing the best mode of making and using the invention to the public.
Q. What is patentable?
For an invention to have patentable subject matter, it must fall under one for the following categories:The laws of nature, physical phenomena, and abstract ideas are not patentable.
- a composition of matter, e.g., a vector, hybridoma, compound
- a process, e.g., a method of production, a method for diagnosis or a method of treatment
- an improvement, e.g., an improved method or composition.
In addition, a patentable invention must be new, useful and non-obvious. Novelty and utility may be determined by a survey of the scientific and/or patent literature. The obviousness or non-obviousness of an invention is determined by the application of a three part inquiry that looks at the scope and content of the prior art, the difference between the prior art and the invention at issue; and the level of ordinary skill in the art.
The scope of a patentable invention is described by claims and is determined through a process of examination that takes place in the relevant patent office.
Q. What is a patent claim?
Claims are an essential part of a patent application and function to particularly point out and distinctly claim the subject matter that you, the inventor, regard as the invention so that one of ordinary skill in the art can determine the scope of your invention. Claims therefore define the scope of your invention and the protection provided to you by the resulting patent.
Q. What factors are taken into consideration when deciding whether to file a patent application on my technology?
The TTO considers several factors when determining whether or not a patent application should be filed, including the technology's patentability potential and commercial value. Other factors include the anticipated useful life of the invention, the ease of enforcing any eventual patent, the existence of other patents in a similar field, and the expected economic benefit. Some inventions may be successfully commercialized without a patent. Indeed, in some instances such as monoclonal antibodies and cell lines, a patent may not be the most effective way to protect the technology.
Q. Will I be involved in the patenting process?
It is desirable for the inventor to be involved in the drafting of the application, the construction of the claims and in the prosecution of the application. As the experts in the technology, the inventor(s) provide valuable insight into the invention and may be called on to provide additional information beyond the written description provided with the invention disclosure form. Depending on the nature of the written description, additional written information may be requested from the inventor and may include additional details for materials and methods sections, nucleotides sequences, compound formulas, flow charts, alternative methods that may be employed to make or use the invention. Drafts of the application and claims may be provided to inventors for critical review depending on the availability and whether the inventor(s) wants to be involved at that level. Substantive actions from the respective patent offices will be forwarded to the inventor(s) for comment and responses to such actions may require discussion with and/or written information from the inventor(s).
Q. Who prepares and handles my patent application?
The center uses outside patent attorneys to prepare patent applications. Attorneys are chosen for their technical competence, prior experience in similar cases, and familiarity with the research area. Our attorneys work with the Technology Transfer Office manager in the drafting and prosecution of the application.
Q. How much does it cost to obtain a patent? Who pays for it?
Depending on the technology, the cost for preparing, filing, prosecuting and maintaining an application in the U.S. patent office can be upwards of $30,000. The cost of obtaining worldwide patent protection may run into the hundreds of thousands of dollars. Because obtaining patent protection is expensive and because it takes such a long time to obtain a patent (between 4-6 years on average), the TTO works to carefully screen technologies prior to filing in order to select those technologies that will benefit the most from this protection strategy.
The center bears the costs of filing, prosecuting and maintaining patent applications and patents. Under some circumstances, companies that license technologies from the center will reimburse the center's patent costs.
Q. If the TTO decides not to patent my technology, how else can it be protected?
Some intellectual property that is not protected by a patent may be protected by other means such as federal copyright law, trade secret law or maintained as proprietary material.
Q. What happens if the TTO decides not pursue my technology?
If the TTO decides not to pursue your technology, there are procedures in place whereby the invention may be returned to you under an appropriate release agreement. Such waivers may be affected by your funding sources. If your funding sources do not stipulate intellectual property rights, those rights may be returned directly to the inventor(s). Because foundations often have rights to intellectual property developed under foundation funding, waiver of invention rights would need to be addressed on a case by case basis.
Q. Who is an inventor?
Under patent law, inventorship has a strict legal meaning. Inventorship is not authorship. An inventor is a person who contributes intellectually to the conception of the invention. Conception is "the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice." The invention is complete if the inventor is able to make a disclosure that would enable a person of ordinary skill in the art to construct or use the invention without extensive research or experimentation.
,br> A patent must be filed only in the name of those who meet the legal definition of inventors. Failure to correctly identify the inventors could lead to the loss of patent rights.
Q. Does patenting my technology inhibit my research and publication?
No. Even if your invention is exclusively licensed to a company for commercial purposes, the center retains the right to use the invention and grant rights to others to use the invention for non-commercial research. In addition, the patent process does not prevent you from publishing your work. The TTO works with inventors to ensure the timely filing of applications before publication. However, sufficient lead-time is always appreciated.
Q. If my technology is licensed, how is income from the license apportioned?
According to center policy, licensing income is shared between the inventors and the center. For more details, please see the center's Patents and Inventions Policy.
Q. What is a Confidentiality or Non-Disclosure Agreement and why is it necessary?
A Confidentiality or Non-Disclosure Agreement allows a party to discuss its confidential or proprietary information, such as unpublished data or research results, with another party that is interested in receiving the information. The agreement binds the receiving party to keep the information confidential and not disclose it to third parties. Confidentiality Agreements are necessary when a center scientist wishes to share proprietary research information with an investigator(s) at another organization, particularly a for-profit entity. Confidentiality Agreements are intended to protect the center's ownership interest in such proprietary research information by containing terms and conditions designed to maintain its confidentiality. Without such an agreement, the recipient of the disclosed information could use or distribute the center's proprietary information for any purpose.
Q. What is a Material Transfer Agreement and why is it necessary?
A Material Transfer Agreement is a document that governs the transfer of one institution's proprietary materials to another organization for research purposes. Material Transfer Agreements are necessary when a scientist at the center receives a request for valuable research materials from an outside investigator. The MTA is intended to protect the center's ownership interest in the material that is being distributed to the other party by containing provisions regarding the use of material. It is also designed to protect the center from liability in the event that the recipient has or causes an adverse incident by using the center's materials. Material Transfer Agreements are particularly important when sending reagents and other valuable materials to for-profit organizations. The TTO will prepare and send an outgoing MTA on behalf of center scientists wishing to provide materials to external organizations.
In addition, the TTO will handle the negotiation of incoming Material Transfer Agreements in which outside organizations are providing materials to center scientists. The TTO will negotiate these agreements in order to protect the scientist's ability to publish the results of their experiments with the materials, and to ensure that they are able to use such results without undue restrictions.
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