Advising
Consultation for UW Researchers
Determining what is, and is not, patentable is a complex process. While the below information is a helpful starting point, it is best to consult with a CoMotion Innovation Manager to determine if your innovation is patentable.
What UW researchers working with CoMotion need to know
Working with CoMotion
Patenting an invention resulting from UW research has many benefits.
Process and timeline
The patenting process at UW begins when you report your innovation or discovery.
Public disclosure
Public disclosure of an innovation is any public written or oral communication that describes the innovation in detail.
Inventorship
Only individuals who made an inventive contribution to the subject matter claimed in the patent application are considered inventors.
Ownership
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.
Cost
Obtaining and managing patent rights for an invention is very expensive.
Patents defined
Patentable inventions
A utility patent may be obtained in the United States if the subject matter of the invention includes:
- A process
- A machine
- A product of manufacture
- An Article
- Some computer programs
- A Method
- A composition of matter (i.e., new chemical or biological compound)
- Any new and useful improvement of any one of the above
- Software
Non patentable inventions
Within these categories, some inventions are NOT patentable, such as:
- Abstract ideas
- Theories
- Laws of nature
- Products of nature
- Scientific principles
Additional requirements
In addition to including patentable subject matter, the invention must be adequately described and be new, useful, and non-obvious.
New
New means the invention was not publicly disclosed before the filing date of a patent application on the invention. This means that the invention cannot have been:
- Patented
- Described in a patent or patent application filed by another person(s)
- Described in a printed publication
- In public use
- On sale or offered for sale
- Otherwise available to the public (ex. oral presentation or non-confidential discussion)
In the United States only, an inventor may obtain a patent, even though the invention was not ‘new’ under this standard, if that public disclosure was made by or derived from the inventor and the inventor files a patent application within one year from the date of that public disclosure.
Useful
Useful means that the invention must have a real-world utility, a practical aspect.
Non-obvious
Non-obvious is a legal determination. A simplified interpretation is: at the time of the invention, given the knowledge of scientists in the relevant field, it would not have been predictable that a person having ordinary skill in the technology would make or conceive the invention. A patent examiner will look to prior publications to determine if a combination of references would arrive at the invention seeking the grant of a patent.
This is a very simplistic way of describing the non-obviousness standard. Please consult with an Innovation Manager in our offices in determining if your innovation is patentable.
U.S. Patent Timeline
CoMotion Patent Process Timeline
Important dates to track
Public disclosure or offer for sale
The date when you first presented, published, or otherwise made available to the public (including a non-confidential discussion) a description of your invention that would allow another of ordinary skill to reproduce your invention, or the date when the invention was offered for sale. Please contact CoMotion before making a public disclosure.
Conception date
The date that you knew your invention would solve the problem.
Patent portfolio managers
Our in-house patent portfolio managers work with CoMotion’s Innovation Managers in assessing the patentability and scope of patent protection of an innovation and patent portfolios.
What they do
- Evaluate innovations and manage the patenting process
- Prepare, draft, and file patent applications based on invention disclosures from UW researchers, faculty and staff inventors)
- Conduct a search for patents and patent applications in a technical discipline to determine which patents are now in the public domain
- Understand the activities and strengths of known competitors and identify potentially unknown players by finding pending patent applications (publicly available 18 months after filing)
- Determine how rapidly new innovation is taking place in your space
- Identify gaps in research and development
- Be aware of densely versus sparsely patented aspects of your research area
- Consider whether industry patent holders could become sponsors of your research
- Better position your technology to attract funding
UW patent assignment agreement
The Faculty Senate’s Special Committee on Intellectual Property and Commercialization (SCIPC) and the Advisory Committee on Intellectual Property Policy and Practice (ACIP3) have recommended improvements to the process of requesting and receiving prior approval for outside work for compensation. The resulting recommendations were accepted and incorporated into the Form 1460 – Outside Work for Compensation by the Office of Research, which has the responsibility and authority for administering the Outside Work process on behalf of the Provost.
The Committees also recommended a separate assignment of intellectual property, limiting the scope of the present assignment. Only when the outside work is likely to involve inventive participation will the faculty member need a completed Patent Assignment Agreement. This agreement balances the faculty member’s interests at the UW with the interests of the company providing the outside work engagement. This present assignment of patentable inventions is signed electronically via DocuSign.
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.
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.
Record keeping
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.
Learn more
For more information on patents, visit the U.S. Patent and Trademark Office website at www.uspto.gov.