Binder Imaging

Office of Technology Development

Understanding the Patent and Licensing Process

Following disclosure, your idea may enter the patent and licensing process to prepare your invention for industry. 

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What is a patent?
A patent is a grant of intellectual property rights related to an invention or owner by assignment of those intellectual property rights. Patents are granted by the United States Patent and Trademark Office (USPTO) or its counterpart in other countries/jurisdictions. Patents have a term of approximately 20 years. The right conferred by the USPTO is “the right to exclude others from making, using, offering for sale, or selling” the Invention (and products that are claimed in the published patent document) in the United States or “importing” the Invention into the United States. What is not granted are rights to make, use, offer for sale, sell or import the Invention or products. For example, consider the situation where a patent is granted on the use of an existing drug to treat a disease. The owner of the use patent could prevent others from offering for sale or selling the drug for that use. However, if someone else has a patent on the drug itself, including chemical structure, etc., the owner of this “composition of matter” patent could prevent the owner of the use patent from making the drug, hence blocking the use patent. So having a patent does not necessarily provide all the rights needed to commercialize the invention.
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. 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.

What are some things that are not patentable?

Naturally-occurring, unmodified molecules, such as:

  • Proteins
  • Genes
  • RNA structures
  • Drug targets
  • Metabolic intermediates
  • Drug metabolites
How do I patent my invention?

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.

Following disclosure and internal review, inventions are evaluated by members of the Technology Innovation Council (TIC). The TIC is composed of scientists, technology sector experts, clinicians, intellectual property experts, business leaders and investment professionals. The TIC concentrates on such issues as 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.

With the assurance of the TIC, inventions are 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.

Technology Innovation Council

Members of the Technology Innovation Council 2017-2018:

James B. Antczak, PhD
Licensing Manager
Medical College of Wisconsin

Jean C. Baker, JD, PhD
Patent Attorney and Partner
Quarles and Brady, LLP

Kevin P. Boggs, MBA, PhD
Director
Office of Technology Development
Medical College of Wisconsin

William Clarke, MD
Director of Research Commercialization
Associate Professor, Anesthesiology
Medical College of Wisconsin

Julie B. Dreyer
President
Mustard Seed Marketing

Trevor D'Souza
Great Lakes Ventures

Brian D. Eckrose
Chief Technologist
Eaton Corporation

Scott Fulton
Chief Executive Officer
Cellara, LLC

David D. Gutterman, MD, FCCP
Senior Associate Director, Cardiovascular Center
Northwestern Mutual Professor of Cardiology
Medical College of Wisconsin

Cecilia J. Hillard, PhD
Associate Dean for Research
Professor of Pharmacology
Director, Neuroscience Research Center

David Hotchkiss
Vice President for Information Services & Chief Information Officer
Medical College of Wisconsin

Paul Jones, JD
Co-Chair, Venture Best
Michael Best & Friedrich
Investment Committee
Angels on the Water

Balaraman Kalyanaraman, PhD
Harry R. & Angeline E. Quadracci Professor in Parkinson’s Research
Chair and Professor, Biophysics
Director, Free Radical Research Center
Medical College of Wisconsin

Joseph E. Kerschner, MD
Dean of the Medical School
Executive Vice President
Professor, Otolaryngology and Microbiology & Immunology
Medical College of Wisconsin

Laura G. King
Founder and Chief Executive Officer
Elucent Medical

John Kirchgeorg
Chief Executive Officer
LIFE Corporation

Michael Liang, PhD
Partner
Baird Venture Partners

David Mattson, PhD
Professor, Physiology
Medical College of Wisconsin

Juliet McDevitt, JD
Assistant General Counsel
Medical College of Wisconsin

Chas Mulcahy
President
Milwaukee Regional Research Forum, Inc.

Ann B. Nattinger, MD, MPH, MACP
Associate Provost for Research
Lady Riders Breast Cancer Research Professor
Professor of Medicine

Jack Newsome, JD
General Counsel
Medical College of Wisconsin

Ada Nielsen
Managing Director
The PeregrineMaven Group
Chief Executive Officer
Foodexus LLC

John Perchorowicz, PhD
Consultant

Loren G. Peterson
Managing Director & Chief Financial Officer
Venture Investors LLC

Robert W. Prost, PhD
Associate Professor, Radiology and Biophysics
Chief, MR Technical Advances
Medical College of Wisconsin

John R. Raymond, Sr., MD
President and Chief Executive Officer
Medical College of Wisconsin

Lorraine Reeve, PhD
Principal
Reeve Consulting, LLC

Barry Sammons, JD
Consultant

Don Shane
Director, Wisconsin Market
American Diabetes Association

Paul A. Stewart
Principal
PS Capital Partners, LLC

Julie E. Tetzlaff, PhD
Assistant Dean of Postdoctoral Education
Assistant Professor, Pediatric Pathology
PICO Faculty Advisor
Medical College of Wisconsin

Kalpa Vithalani, PhD
Sr. Licensing Manager
Medical College of Wisconsin

Phillip T. Weinfurt, PhD
Instructor, Department of Biomedical Engineering
Marquette University
MU/MCW Healthcare Technologies Management Program

Calvin B. Williams, MD, PhD
Professor of Pediatrics, Microbiology & Immunology
Vice Chair, Research
Section Chief, Pediatric Rheumatology
Medical College of Wisconsin

Chief Scientific Officer, Children's Research Institute
D.B. and Marjorie Reinhart Chair in Rheumatology
Children's Hospital of Wisconsin


Contact Our Team

Kevin Boggs, PhD, MBA      
Director
(414) 955-4381
kpboggs@mcw.edu

William Clarke, MD
Director of Research Commercialization
Professor of Anesthesiology and Pediatrics
wclarke@mcw.edu  

Kalpa Vithalani, PhD                   
Assistant Director
(414) 955-4884
kvithalani@mcw.edu

James Antczak, PhD                 
Assistant Director
(414) 955-4894
jantczak@mcw.edu

Ann Amidzich  
Intellectual Property Manager
(414) 955-8660
aamidzich@mcw.edu