Patents

Patenting an invention resulting from UW research has many benefits. A patent secures the UW’s ability to market the invention to corporate or non-profit entities that may further invest in the development, manufacture, and distribution of the invention. A patent may encourage commercialization of an invention by providing the licensee with an exclusive period (e.g., 20 years from the date of filing) of ownership rights in the invention. In addition, a patent can benefit researchers by:

1. Demonstrating that their work is innovative

2. Returning revenue to researchers and their departments, schools, and colleges

3. Providing an asset around which researchers may build a company

4. Providing the satisfaction of contributing new information to society, which may in turn lead to new or improved goods and services

The decision to file a patent application is made by UW CoMotion, in consultation with the inventor(s). The determination is made based on the scope of the invention, its likely patentability, and its commercial potential. Only innovations that meet the criteria for patentability and marketability are considered for patent protection. UW CoMotion does not pursue patent protection for all innovations disclosed to the office. Even if an invention is patentable, obtaining a patent may not be the most effective intellectual property strategy for a particular invention. For example, a patent may not be pursued if other forms of intellectual property (e.g., copyright) are more suitable for protection, if it would be easy for someone to design around the patent, if the patent might be unenforceable, or if further development of the innovation would lead to stronger patent protection.

The patenting process at UW begins when you report your innovation or discovery. To report your innovation, fill out a Record of Invention (ROI) form on the UW CoMotion website. (See Reporting an Innovation FAQs for additional information on the ROI process.) Once we receive your ROI, an innovation manager will be assigned to your case and will meet with you to learn more about your innovation. Together with a patent agent, your technology manager will evaluate both the commercial potential and likely patentability of your innovation. If it is determined that a patent should be part of the intellectual property strategy for your innovation, UW CoMotion will work with you to file a patent application. A patent application may be as simple as filing a copy of your recent manuscript, or it may involve meeting with a UW CoMotion patent agent and outside counsel to discuss your innovation in preparation for drafting a full patent application.

When a patent application is filed with the USPTO, it is routed to a patent examiner with an appropriate scientific background. It may be one or more years before the examiner begins review of the application. Once the examiner begins review, he or she evaluates the application for conformance with the patent laws and regulations, in addition to determining whether the application is distinct from the “prior art” (i.e., earlier patents and publications). The examiner may, and often does, reject most or all of the patent claims in the first review. A CoMotion patent agent or outside counsel responds to the examiner’s comments, often after obtaining input from the inventors. In general, several rounds of patent examiner review and UW CoMotion response are required before a patent is granted or finally rejected.

It can take at least two to six years from the date of application for a patent to issue.

As a condition of employment, all UW employees agree to assign to the UW all inventions and discoveries in which the UW has an interest. Students who are also employees, students working on a sponsored project, and students who have used University resources also agree to assign all such inventions and discoveries to the UW. (See the UW Intellectual Property Policy for more information.) Upon disclosing an innovation to the UW CoMotion (by submitting a Record of Invention (ROI) form), the inventors assign their rights in the innovation to the UW. Each inventor is also required to sign an assignment document for submission with the patent application.

If you create an innovation with someone from another institution or company, the UW CoMotion will work with that other institution or company to determine who owns the invention and any resulting intellectual property. If the invention is jointly owned with the other institution or company, the joint owners may choose to combine their ownership rights through an inter-institutional agreement and license their rights together. Alternatively, at least in the U.S., joint owners may separately pursue licensing and commercialization opportunities. The UW CoMotion and the other institution or company will evaluate these strategies and pursue an appropriate option for the particular innovation.

Only individuals who made an inventive contribution to the subject matter claimed in the patent application are considered inventors. Individuals who have made other contributions, such as gathering essential data or constructing a practical embodiment of the invention, are not inventors unless they also made an inventive contribution. Similarly, a project supervisor is not entitled to inventor status simply because of his or her supervisory role; an inventive contribution is the singular criterion. The claims of the patent application legally determine who is and who is not an inventor. The patent claims should be used as a guideline for determining inventorship. For this reason, inventorship can change during prosecution of the patent application, as the claims are amended. Accurately identifying all the inventor(s) is a prerequisite for a valid U.S. patent.

Authorship on a scientific publication is not the same as inventorship. Authorship and inventorship have different criteria; simply being an author on a publication does not necessarily qualify an individual as an inventor. An inventor must have made an inventive contribution to the subject matter claimed in the patent application.

The order of the inventors listed on a patent has no legal significance, nor does it have any relationship to the individuals’ contribution to the invention.

According to the UW Intellectual Property Policy, employees and students are required to do everything reasonably required to assist the UW in obtaining, protecting, and maintaining patent or other proprietary rights. This generally includes being available for a disclosure meeting to discuss your invention, reviewing a draft of the patent application, and responding to questions as they arise during patent drafting and prosecution.

Obtaining and managing patent rights for an invention is very expensive. For example, a U.S. patent can cost a total of $30,000 to $50,000 over its 20 year life. When a commercial partner is identified early (e.g., before a patent application is filed), that commercial partner often pays the patenting costs. However, even if a commercial partner has not been identified, the UW CoMotion may incur the patenting costs if there is a reasonable likelihood that those costs can be recovered from a commercial partner later.

Provisional patent filings are supported whenever there is a reasonable belief that there is an intellectual property position and either a discussion with a licensee/investor or a public disclosure is imminent. While filing a provisional patent application in the US is relatively inexpensive in dollars, these filings utilize significant resources from the inventors and from CoMotion’s internal staff and are less valuable if filed before sufficient support for the invention is included. Please reach out to CoMotion for advice on the best timing to protect an invention.

Within one year of filing a provisional application, a non-provisional patent filing must be made to continue protection. CoMotion aims to support these patent expenses when there is an engaged inventor team, an ongoing strong intellectual property position, and evidence of significant market traction such that a license is likely within four years of filing a provisional patent application. Typical support includes normal expenses associated with a US patent through to issuance of the first patent in a family and the first US maintenance fee for that patent due 3.5 years after issuance. Cost-effective management of patent activities is also provided, which can be a significant benefit to the ultimate licensee as patent filing legal costs can escalate quickly.

Alternative sources of funding (such as from another university source or a prospective license) will be needed for additional costs such as maintenance fees due 7.5 and 11.5 years after issuance, additional filings in the same family, foreign filing costs, or new filings where the inventor(s) already have a large unlicensed portfolio.

A provisional patent application is a low-cost, informal patent application that is not examined by the USPTO. It is a placeholder that establishes an earlier filing date for a later filed non-provisional (i.e., full, formal) patent application. Such a non-provisional application must be filed within one year of the filing date of the provisional application. Your manuscript, poster, presentation slides, and other materials can form the basis for a provisional application. A provisional application is often filed before a publication, presentation, or discussions with a potential commercial partner, to protect the materials prior to disclosure of the innovation. Provisional applications allow researchers more time to develop an innovation before a full patent application is filed, and allow UW CoMotion additional time to evaluate the patentability of and market for the innovation. If a corresponding non-provisional application is not filed within one year, the provisional application simply becomes abandoned. Provisional applications are not published by the USPTO unless a corresponding non-provisional application is filed.

Public disclosure of an innovation is any public written or oral communication that describes the innovation in detail. Publications that are “enabling” (i.e., would allow one of ordinary skill in the art to arrive at the same invention without undue experimentation) can disqualify one from receiving a patent. The term “publication” is broadly interpreted to include journal articles, posters, slides, talks, conference proceedings, abstracts on the Web, theses and dissertations that are available to the public, and discussions with corporate researchers and company personnel. Research group meetings that are not open to the public, non-public communications with a grant agency, and confidential discussions (including those with the UW CoMotion) are not public disclosures.

In the U.S., there is a one-year grace period for filing a patent application. That is, a patent application can be filed up to one year after an enabling public disclosure; after that, patent protection is unavailable. In most foreign countries, however, there is no grace period; once an innovation is publicly disclosed, patent protection is lost. Therefore, before publicly disclosing any innovation or discovery, researchers should first discuss intellectual property issues with the UW CoMotion.

The Form 1460 itself is still available for downloading and completion as a Word document, but it has been reformatted and the order and wording of some of the questions have been changed. No significant new information is being requested, but it is hoped that the reformatting and the re-wording and re-ordering of some of the questions will make the Form easier to complete and review. The assignment of intellectual property has been removed from Form 1460. Instead, Form 1460 includes a few questions that assess whether or not a present assignment is appropriate for this engagement.

The approval process (routing to your Department Chair and Dean’s Office, then the Office of Research) has not changed. Questions and comments about the Outside Work Policy (Executive Order 57) or the Form 1460 may be addressed to work1460@uw.edu.

Only when the outside work is likely to involve inventive participation (as evidenced by responses to the intellectual property questions on the Form 1460) will the faculty member need a completed Patent Assignment Agreement . This agreement limits the scope of the present assignment and balances the faculty member’s interests at the UW with the interests of the company providing the outside work engagement.

For each faculty member, a single completed Patent Assignment Agreement covers all inventive participation in outside work. This agreement only needs to be executed once, electronically, via DocuSign.

If initially submitted as part of a request for outside work, then this Patent Assignment Agreement will be contingent on the approval of that request. This agreement will remain in effect only if the associated request for outside work is approved.

Questions and comments about the Patent Assignment Agreement or electronic signature using DocuSign may be addressed to uwassign@uw.edu.

Until March 16, 2013, the U.S. has a “first to invent” patent system. That is, if two or more patent applications are filed for the same invention, any patent on that invention is awarded to the applicant who can show the earliest date of invention. Proof of invention must be in the form of documentary evidence, and the best form of this evidence is a laboratory notebook. The purpose of a lab notebook is to document how and when inventions occur, and to show what steps are taken and by whom. A lack of documentation can result in the loss of patent rights if the date of an invention is challenged, or if the inclusion or exclusion of a particular inventor is disputed. For these reasons, the UW CoMotion advises researchers to develop good record keeping practices.

A lab notebook should include a description of the research problem and the solutions or hypotheses under consideration. It is particularly important to record the conception of any idea that may be new, such as an important scientific breakthrough. Conception occurs when an inventor has a complete idea of a solution to a problem. The concept should be fully described in the lab notebook, in sufficient detail such that someone of ordinary skill in your field could understand the concept. Lab notebooks should also contain experimental results and data that support your solutions or hypotheses. Each entry in the lab notebook should be complete, dated, and signed by an investigator and a witness. In addition, the title of the research project, the name of each investigator, and information about relevant funding sources should be documented on the first page of the lab notebook. For more information, watch Guide to Keeping a Lab Notebook, a 2-minute tutorial featuring former CoMotion Director of IP Management Jesse Kindra.