Patents and Licenses
Understanding the Patent and Licensing Process
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. Public disclosure of the invention has a negative effect on the patentability of an invention. 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.
NON-OBVIOUS: The U.S. Patent and Trademark Office says: “The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention.
Naturally-occurring, unmodified molecules, such as:
- RNA structures
- Drug targets
- Metabolic intermediates
- Drug metabolites
Following disclosure, inventions undergo an evaluation process that is designed to be a surrogate for industry, leveraging both internal and external expertise early in the development process. The OTD objectively and transparently reviews technologies, makes informed and timely decisions, and provides multiple opportunities for communication with inventors during the entire process.
First, inventions are evaluated internally by the OTD through consultation, disclosure, and review. This preliminary evaluation helps outline the invention in terms of what the product is, commercialization strategy, proof of concept and needed patent(s), as well as identifying potential barriers.
The OTD works in consult with industry leaders, scientists, technology sector experts, clinicians, investors, and business professionals to consider whether an invention has an addressable market, whether additional research and development is needed, what the IP landscape looks like, the quality of the science behind the concept, available funding and resources, and inventor commitment.
Inventions are also reviewed by MCW senior leadership to ensure proper budgets and resources are in place, and that the invention will provide an appropriate return on investment.
The OTD will be present to answer questions, make recommendations, and help inventors navigate every stage of the patent process.