Offices of Biotechnology and Business Development

Basic Patent Principles

What is a patent?

A patent is an official document granted by the U.S. (or foreign) Patent Office that grants an inventor specific rights that exclude others from making, using or selling the patentee’s invention. In practice, it is difficult to know whether someone is making or using an invention for personal use. Thus, a patent primarily protects an inventor from someone else deriving any commercial benefit from the invention in the country in which the patent is issued.

 

How long is a patent viable?

In the United States, a patent has a life of 20 years from the date the patent application is filed. Thus, if a commercial product is developed 10 years after the patent filing date it will be protected for only 10 years.

 

What can be patented?

In order to be patentable, an invention must fulfill three criteria. It must be (a) novel, (b) useful and (c) not obvious. Within this context one can patent a process, a machine, a process of manufacturing or a manufactured item, a composition of matter or any useful improvement of the above. A principle or an idea alone cannot be patented, but an application of a principle or an idea may be patentable.

 

What is novelty?

A novel invention is one that is currently not for sale or public display. A description of the invention in a written publication or public presentation more than 12 months prior to the filing date of a patent application disqualifies the invention from being considered novel in the United States. In many foreign countries any public disclosure at any time prior to patent filing removes the novelty factor.

 

What is useful?

To be considered useful an invention must perform a useful function, must actually work as described and must be of some benefit to society. If one can establish from biological data that a specific invention, such as a drug or gene therapy, has a reasonable chance of working in humans then it is not necessary to provide data from clinical trials in order to apply for a patent.

 

What is nonobvious?

An invention would be considered obvious if "prior art," defined as anything published or patented anywhere in the world or known or invented in the United States, is similar enough to the current invention that anyone skilled in the field, knowing this prior art, would consider the current invention obvious.

 

What is assignment of a patent?

Assignment of a patent is the transfer of the inventor’s rights and titles to his or her employer. In most institutions, employees are required to assign their rights to their employers. Under the Einstein Patent Policy, the college assumes the costs of patenting the assigned invention and shares any net proceeds derived from the commercialization of the patent with the inventors.

 

What is the difference between inventorship and authorship?

The rules for inventorship are much stricter than the normal rules used for determining co-authorship.  Typically, anyone who has any involvement in a development is listed on publications relating to that development. However, many such individuals would not be considered inventors under U.S. patent law.

Under U.S. patent law, an "invention" is broken down into two parts. The first is the "conception" of the invention, which is the mental formulation of the complete idea of the invention. The conception must be complete enough to enable anyone with ordinary skill in the pertinent art to reduce the invention to practice.

"Reduction to practice" is the second part of an invention. An invention is actually reduced to practice when it is demonstrated experimentally to operate in its intended environment. There can also be a constructive reduction to practice, which occurs when a U.S. patent application with an adequate enabling disclosure is filed on the invention. A constructive reduction to practice is considered the equivalent of an actual reduction to practice for most legal purposes.

In order to be an inventor, an individual must have made a material contribution to the conception of the invention. Simply taking part in the reduction to practice of the invention does not make an individual an inventor. However, the conception must be so complete that any person skilled in the art would be able to reduce the invention to practice using no more than routine experimentation. If more ingenuity is required to reduce the invention to practice, it is likely that the person employing such ingenuity has made a material contribution to the conception of the invention. In certain cases, the conception and reduction to practice occur simultaneously. In such cases, there was no preconceived conception and the unexpected invention was made in the course of actual experiments.

As such, it is well established that it is the conception of the claimed invention, rather than the reduction to practice, that establishes inventorship. We note, however, that a person suggesting a desired goal, but knowing of no way to achieve this goal, is not an inventor. Stating the result desired, but leaving it to others to discover the means by which the desired result can be attained, does not amount to an invention.

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