Discoveries and Inventions

The MCW Office of Technology Development (OTD) specializes in helping you get your inventions to companies that can turn them into products that benefit patients.

 What is intellectual property?

Intellectual property (IP) is any product of the human mind and mental labor that has value in the marketplace.  Intellectual property includes patented inventions, software and other copyrighted works, trademarks, trade secrets and know-how. The owner of IP can be rewarded for its use in commerce, and this encourages further innovation to the benefit of society.

The U.S. Constitution gives citizens the right to protect and benefit from the useful products that result from mental as well as physical labor. The table below compares “intellectual property” with “real property.”

 

Real Property

Intellectual Property

Example

Personal automobile

Formula for a synthetic compound

How Acquired

With money obtained performing physical labor

With time spent performing mental labor

Basic Rights

Ownership of your body

Ownership of your mind

Physical Attributes

Yes

No

Useful

Yes

Yes 

Value to Others 

Yes 

Yes 

What's Protected 

The property itself

Profit from use 

How it's Protected 

Laws related to theft 

Patent and Copyright Law 

Can be Sold or Licensed 

Yes

Yes 

While intellectual property initially has no tangible form, it can be described in the “physical” (tangible) pages of scientific publications and patents. Moreover, one can produce tangible commercial embodiments of intellectual property. For example, vials of a new drug are embodiments of a new compound described in a patent application. It is also important to note that laws related to intellectual property protect IP owners from others who seek to profit from the use of that intellectual property.

 Who is an inventor?

Unlike determination of authorship, which is collegial, inventorship is guided by a legal definition.  An inventor is one who conceived the invention.  An inventor is not someone who reduces the invention to practice, unless conception also occurs during the reduction.

 When does an invention occur?

Before an invention becomes patentable it must be conceptualized and reduced to practice, or described with detailed drawings, procedures and instructions so that others could make the invention.  In other words, an idea alone is insufficient for patenting, it must be demonstrated that the invention works.  Remove sentence

 When is an invention patentable?

Not all inventions are patentable. A patentable invention must be:

  • NOVEL The novelty requirement means that the invention must be new and cannot have been publicly known before in the “prior art” (information publicly available in journals, presentations, and conversations). Public disclosure of the invention has a profound negative effect on the patentability of an invention and inventors should be aware of the consequences. You are advised to contact the Office of Technology Development to avoid inadvertent loss of patent rights due to public disclosure.
     
  • USEFUL The invention must have at least one specific use. The best way to satisfy the “utility requirement” is to reduce the invention concept to practice as evidenced by examples, supporting data or descriptions that demonstrate how it is useful.
     
  • NON-OBVIOUS This means that it would be unlikely for a person knowledgeable in the field of use and with ordinary skill in the art to develop the same invention. A patent examiner can disallow a patent as an invention because it is “obvious” even though it has not been specifically disclosed anywhere in the prior art.
 Does my invention have commercial value?

Your invention could have commercial value if:

  • Its commercial embodiments solve a problem and meet a market need
  • It broadens the use of or enables new applications for a previous invention
  • A company has interest in your invention

The key is to articulate the value proposition for an industry partner.  An industry partner needs to recognize and accept that they can profit from selling a product based on your invention. Remove sentence

 Can an unpatented invention have commercial value?

In some cases an unpatented invention can still have significant value for the same reasons listed above. Please contact the Office of Technology Development if you have questions.

 When should I disclose a discovery/invention to the OTD?

You should contact the Office of Technology Development when you have conceived of a novel invention and before a public disclosure is made.  Examples of public disclosures include poster presentations, thesis presentations, oral presentations at meetings, written research papers, grant abstracts, web-page descriptions, e-mail communications, and phone calls with colleagues not employed by the Medical College of Wisconsin. Once an idea is disclosed publically, international patent rights are lost, although some limited protection in the US may be possible.  Please contact the Office of Technology Development prior to making a public disclosure and an OTD staff member will respond within two business days.

 What is the patenting and licensing process?

View our Patenting and Licensing Process web page.

 What are my rights and responsibilities?

The Office of Technology Development is your partner during the entire technology development process and views our partnership as a “covenant” as described below.

Office of Technology Development Faculty
  1. Evaluate new discoveries, provide feedback
  2. Protect your IP via patents and/or copyrights, venture all costs
  3. Identify commercial partners; negotiate license agreements, monitor for compliance
  4. Distribute licensing revenue per MCW policy (faculty, depts.)
  1. Document all new inventions and file Invention Disclosure Form
  2. Participate in patent drafting & responding to all patent office actions
  3. Assist in preparation of marketing materials & meet with potential partners
  4. Remain active in the further development of the technology

Despite significant investment of capital and time it is sometimes difficult to obtain a patent and subsequently attract the interest of companies or investors willing to commit resources to commercialize the technology.

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Milwaukee, WI 53226
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Page Updated 06/18/2015
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