Bringing Your Invention to WiSys

Digest Version

Protecting Your Invention

Researcher Notebook Guidelines


A researcher's success in obtaining a patent these days may depend not only on how original and useful the discovery is, but also on how carefully he or she has kept a research notebook.

"The race to get new products into circulation is intense," says patent attorney David J. Houser. "In the United States, being able to prove when you made an invention may be vital to getting a patent. In addition, patent claims are increasingly challenged by competitors." In such situations inventors may have to present their notebooks for inspection. Any irregularities in record keeping become red flags to an opponent's attorney.

Thus, researchers should take a few common-sense steps to protect themselves and their work. These practices not only help to back up patent claims, but also ensure against loss of valuable data, provide proof of fulfillment of contracts, and protect against allegations of conflict of interest or research fraud.

View our research notebook guidelines
If you would like to receive more information and/or training on keeping a laboratory notebook, contact Cheryl Scadlock, Information Specialist at WiSys.

Confidentiality Agreements


Unless done on a confidential basis, telling another party the details of your research may cost you patent rights. Such "public disclosure" can occur quite inadvertently when company executives or other researchers visit your lab or meet with you at conferences or other venues. Signing a written agreement prior to these meetings will document the intention of the parties to maintain the confidentiality of the information you provide to them. This can be achieved through a confidential disclosure agreement (CDA) between you and the other party.

For confidential disclosures that involve a technology disclosed to and accepted by WiSys, contact your assigned WiSys licensing manager to arrange a CDA between you and the interested party.

If you receive a company's confidentiality agreement for signature, you may want to compare the provisions with the terms of WiSys' agreement. Be particularly careful about any terms that are substantially different or more restrictive than the terms in WiSys' CDA. Depending on the exact circumstances, such terms may be appropriate, but you may want to seek legal counsel on restrictive or unclear provisions.

View WiSys' Standard Confidential Disclosure Agreement
Please contact your licensing manager if you need to arrange a CDA between you and another party.

Materials Transfer Agreements


Materials transfer agreements (MTAs) are agreements between you, another scientist, and your respective institutions. An MTA allows you to share your research materials, such as a cell line, plant germplasm, a chemical compound or a polymer, with another scientist for research purposes, while protecting your intellectual property rights to the materials. You should always have an MTA in place before sending your research materials to someone outside your laboratory.

To learn more about arranging an MTA, contact your WiSys licensing manager.

Timing: Disclosures and Publications


We suggest you bring your intellectual property to WiSys as early as possible, preferably before any public discussion of the technology, so that we can help you to obtain the maximum benefit from U.S. and international patent laws. These laws make it highly advisable to file patent applications before any publication or other public disclosure of the invention. The reasons for this are:

Public Disclosure More Than One Year Before Filing a U.S. Patent Application
If you make a public disclosure of an invention one year or more prior to applying for a U.S. patent, all possibilities of obtaining a patent are lost. This applies to both the U.S. and to foreign countries.

Public Disclosure Less Than One Year Before Filing a U.S. Patent Application
As long as WiSys has time to evaluate your technology and prepare a high-quality patent application (which is normally a three-month process), a U.S. patent can still be obtained. The U.S. offers a one-year grace period from the time of public disclosure to the filing of a patent application.

Please Note: There is no one-year grace period for filing foreign patents. ALL foreign patent opportunities are usually lost if ANY disclosure occurs prior to the filing of a U.S. patent application. For certain technologies, this can be a major loss, since foreign markets may account for 50 to 70 percent of the income value of a technology.

No Public Disclosure Prior to Filing a U.S. Patent Application
This is the best possible case. If the technology is patentable, U.S. and foreign patent rights are obtainable. Please note that if your research is supported in whole or in part by federal funding, you likely have an obligation to make a disclosure of the technology to WiSys prior to any public disclosures.

WiSys needs some lead-time to consider a disclosure and, if accepted, draft an application. A total of three months is preferred, although accelerated handling is possible in some circumstances. Therefore, you should consider a disclosure to WiSys at the same time you are preparing a manuscript for submission to a journal or are planning a poster session or public seminar. This also applies to dissertations being readied for submission to the library, abstracts, and other disclosures not usually considered "publications" for academic purposes.

The above disclosure rules apply only to patents. Different rules apply to copyrights, biological materials and other intellectual property. Give your intellectual property manager a call if you have any questions.

Disclosure Process

How to Disclose Your Invention to WiSys


The first step in disclosing your discovery -- whether it is a patentable invention, technique and know-how, a biological material or another form of intellectual property -- is to fill out an invention disclosure report (IDR) form (below). The form may be downloaded and submitted electronically through our secure email page, or printed and sent through the U.S. mail.

After we receive your form, an intellectual property manager will contact you to set up a disclosure meeting (see below for a description of this meeting).

Note: If you anticipate publicly disclosing your invention in less than three months time or face other urgent circumstances, please contact an intellectual property manager in your area of scientific expertise immediately. Guidance on who to contact may be found through our staff page.

UW System Invention Disclosure Report (IDR) Form


The IDR asks you to provide information on the time of the discovery, any preexisting technologies and any pending or already-published articles on your new technology. This information is used by the UW System and WiSys to review funding sources and obligations for notification requirements and other rights. It also aids WiSys in determining whether the invention will meet the U.S. Patent Office's criteria of novelty, utility, and non-obviousness or, if not, whether the invention can be protected by a means other than patenting. (For further information on these criteria, see the section Types of Intellectual Property Protection). It is important to have this information on record as early as possible, in case a patent is obtained and later challenged.

Print or download the IDR form

Invention Disclosure Tips
Every year, WiSys reviews approximately 20 inventions made by UW System researchers. Currently about one-third of these discoveries are accepted for patenting (or other intellectual property protection) and licensing. Some cannot be accepted because further research is needed before a patent application can be filed. Others, as meritorious as they may be on a technical basis, simply have a very limited commercial market. In such situations, patenting and licensing may not be practical.

A critical part of the disclosure process involves helping WiSys to make the best possible commercial evaluation of your invention. You know your technology better than anyone else and are likely to be in the best position to define your invention's economic and commercial advantages. Before your disclosure meeting, please think about and list the commercial advantages and applications of your discovery on the IDR form.

• Commercial advantages: Improved performance, operating and/or purchase cost savings, etc. No matter how good technically, an idea can't be effectively licensed without such advantages.
• Key benefits over existing products: What are the benefits over existing products to the buyer or user? To the manufacturer? These advantages must be great enough for a company to take the risk and commit the resources necessary to commercialize the invention.
• List companies that may be interested in a license: However, DON'T disclose your technology to anyone prior to the filing of a patent application as this could affect WiSys's ability to obtain a patent both in the U.S. and internationally.

The Disclosure Interview


The disclosure interview gives you an opportunity to explain your invention to WiSys' staff. It is the first step in the process by which WiSys decides whether an invention should be accepted for patenting. The disclosure meeting will be held with your assigned intellectual property manager. At times, one or more of WiSys' licensing managers may also attend the meeting to ask questions relating to commercial matters.

If possible, please send a completed IDR form or some other brief, written summary of the invention (comparable to an abstract) to your intellectual property manager prior to the meeting. In addition, please bring any publications, abstracts, theses, etc. that relate to the invention, including draft manuscripts. Publications and patents describing closely related prior technologies are also valuable, so please bring copies of these items to your disclosure meeting as well.

The disclosure interview is an informal oral presentation. Expect to be asked what is new in your invention and how it can be applied for practical use. Your comments concerning the invention's likely commercial value, possible categories of potential licensees, and individual companies that may have licensing interest are very valuable and increase the likelihood that WiSys will accept your technology for patenting and licensing.

Inventorship
It is a good idea for as many of the inventors to attend the disclosure interview as possible. Who qualifies as an inventor is a matter of legal definition and is also linked to the exact way the invention is ultimately defined. The attorney who eventually drafts a patent application on your invention will review the facts and list the actual inventors in accordance with U.S. Patent Office requirements.

As a first, rough determination of inventorship, assume that the list of inventors includes people who have worked on the invention by conceiving or elaborating on the idea, designing experiments, or evaluating experimental results; who have contributed patentable functional features while first building a device or performing a method; or who otherwise have directly contributed to the invention itself. Individuals who perform routine lab analyses, who assemble prototypes from detailed drawings, or who otherwise provide only entirely directed labor are in most cases not considered to be inventors.

WiSys' Decision Making Process


In many ways, bringing an invention to WiSys is like submitting a paper for publication or applying for a federal grant. Each invention is weighed against other inventions brought to WiSys and is evaluated for its appropriateness to WiSys' licensing program. WiSys' Patents and Licensing Department meets monthly to review the disclosures received since the previous meeting.

WiSys' decisions are based on an evaluation of the type of patent claims likely to be obtained, the availability of foreign equivalent patents, whether a patent could be effectively licensed and enforced, estimated potential income, the timing of that income, and the existence of any administrative problems that would complicate handling the invention. Patents are expensive, typically costing approximately $20,000 for a U.S. patent alone. A ten-patent foreign portfolio might add $100,000 to this cost. In addition, governments charge maintenance fees during the life of the patent.

Please remember that WiSys is obligated to evaluate new inventions not only on their technical merit, but also on their commercial potential and the enforceability of patent rights. Most technologies brought to WiSys represent very significant technological advancements. But unless a reasonably sized, enforceable market exists or is expected to develop, these technologies unfortunately cannot be accepted for patenting and licensing.

If WiSys Accepts an Invention


If WiSys accepts an invention, WiSys applies for a patent and begins the processes of marketing and licensing. WiSys pays all patent and licensing costs; there are no costs to UW System inventors or authors for this service.

Memorandum Agreement
Once an invention has been accepted by WiSys, the inventors (or authors) and WiSys enter into a short contract, called a Memorandum Agreement, in which the inventors assign the invention to WiSys. In return, WiSys grants the right back to the inventor group to receive a share of the royalty income in accordance with its policies and the policies of the UW System.

Once all WiSys and university processing of a new and independent invention are complete, the inventors have signed all of the necessary WiSys documents and a complete utility patent application has been filed, WiSys pays the inventor group a $1,500 assignment fee. This payment does not apply to provisional or design patents, copyrights, biological materials or know-how.

Realistic Expectations
It is important to have a realistic sense of the chances for economic success of any given invention. Typically it takes 60 to 100 disclosures from an industrial research and development program to yield one successful product that returns income substantially greater than the costs incurred.

The odds of successful licensing can be improved substantially by your contributions of knowledge about the marketplace, likely commercial applications of your work, and specific companies that are possible licensees. WiSys' licensing efforts are also enhanced by your availability to talk to licensees along with WiSys personnel, and your willingness to provide follow-up information, samples of materials, and similar assistance.

If WiSys Must Decline an Invention


If WiSys must decline an invention for one of the reasons discussed above, the inventors are free to deal with the invention as they please, subject to the rules governing federally-funded inventions and to any contracts that the inventors have signed, such as with a commercial funder of the research.

Under federal rules, the federal funding agency has the next right to take title to an invention WiSys has not accepted. However, inventors interested in seeking a patent on their own may petition the federal funding agency for the right to do so. WiSys is willing to help direct inventors to the correct contact people in federal agencies. Such inventor petitions are usually granted.

Patent Process

Once your technology has been accepted by WiSys for patenting and licensing, a number of activities begin to take place. These services are provided by WiSys at no cost to you. WiSys pays for the patent and licensing costs associated with your invention.

This section provides a summary of WiSys' patent process. You may obtain summarized information on types of intellectual property protection elsewhere on this Web site and may visit the U.S. Patent and Trademark Office Web site to review the U.S. Patent Statute and other details.

Memorandum Agreement


Before WiSys begins working on a patent application, all UW System inventors must sign a WiSys/Inventor contract called the WiSys Memorandum Agreement. WiSys also must receive a copy of a completed UW System Invention Record and Report, prepared by the inventors and submitted according to UW System procedures. WiSys can supply inventors with copies of this short UW System form, which the UW System requires in order for the inventors and the UW System to fulfill their legal obligations to the federal government and to any extramural sponsor of research. Please prepare, sign, and submit these documents as quickly as possible, since WiSys cannot proceed with the patent application process until after these agreements are completed.

Inter-Institutional Agreements


Occasionally, technologies are disclosed to WiSys that involve collaboration between a UW System researcher and a researcher at another institution. In order for a patent to be valid, all inventors, however located and affiliated, must be named on the patent application.

Some of these other inventors may have contractual agreements with their institutions or other employers concerning intellectual property rights. In such situations, WiSys will arrange an Inter-Institutional Agreement with the other institution to permit clean licensing of the invention.

The Patent Application


In order to have access to a variety of legal technical specialists, WiSys retains specialized outside patent attorneys to draft its patent applications. Before the attorney handling your invention begins to draft the application, your intellectual property manager will arrange for you and any co-inventors to meet with the attorney to explain the invention and supply other information. You will review the patent application before it is filed. In addition, you will be asked to sign a Declaration of Invention and a formal assignment document that is recorded in the Patent and Trademark Office.

Your input is crucial, both at the drafting stage and later, when the patent attorney must respond to Patent Office questions and comments. Although the attorney is responsible for writing the application and meeting Patent Office administrative requirements, it is difficult for a patent application to proceed smoothly without the committed participation of a lead inventor (usually the faculty member most intimately involved with the research). The whole process, from filing the application to obtaining a patent, may take anywhere from a year to several years. When the patent attorney describes the invention in a patent application, the description must be complete enough to enable a person skilled in the field to actually practice (duplicate) the invention. In other words, this enabling disclosure must reveal the best mode of practicing the invention. The best mode is the version of the invention that the inventor considers to be the best at the time the patent application is filed. If the disclosure is not enabling, the application will be denied. If the best mode is not revealed, and the patent is later challenged in a lawsuit, a court may find the patent invalid.

A patent application ends with a numbered series of statements called claims, each summing up the invention in a single sentence. Each claim looks at the essence of the invention in a slightly different way. The claims set the metes and bounds of the invention covered by the patent.

Prior Art and Barring Events


Relevant past technology that may be considered by the Patent Office in evaluating novelty and non-obviousness is sometimes called the prior art. Prior art is the knowledge of prior artisans, that is, people skilled in the relevant fields. If a patent application is filed in the U.S., anything that has been published, used in public, offered for sale, or sold for at least one year prior to the application's filing date, becomes part of the prior art for the application, no matter who did the publishing, using, or selling.

For example, if an article is published and then a year passes before a patent application is filed on an invention, the Patent Office will not grant a patent on the invention unless it finds that the invention is novel and non-obvious when compared to the published article. The one-year anniversary of a publication, public use, sale, or offer for sale, is commonly referred to as a bar date. After this date passes, the inventor cannot receive a patent on the invention.

In talking about published information, the patent statute refers to information disclosed in a printed publication. However, this term is understood very broadly. For patent purposes, "published" means any printed, photocopied, typed, microfilmed, or otherwise fixed communication that is available non-confidentially and is findable by those in the field.

Not only standard academic publications, but also abstracts, master's theses, Ph.D. dissertations, even tape recordings of speeches, all become "printed publications" once they are delivered to subscribers, distributed at a meeting, shelved and cataloged in a library, etc. Even Internet communications are normally considered printed publications.

While the U.S. offers a one-year grace period after publication, public use, sale, or offer for sale, most foreign countries have no such grace period. Furthermore, even oral disclosures can have the same effect in foreign countries as publications. For example, while a talk or poster session (without handouts or an abstract) may not have an effect on a U.S. patent application, either could immediately bar a patent overseas.

This discussion of prior art and barring events is only a summary overview. The law includes various exceptions and a seemingly common term, such as "printed publication," may have a special meaning in patent law. The U.S. or foreign effects of a particular event may not be obvious. Always tell the attorney drafting your patent application about any possible barring events so that the attorney can determine their importance.

Your patent attorney must be informed about anything that could be prior art for another, vital reason. Deliberate failure to notify the Patent Office of prior art relevant to an application can make the patent invalid.

Patent Office Activities


After a patent application is filed in the U.S. Patent and Trademark Office, a patent examiner reviews it for utility, novelty, non-obviousness, and enabling disclosure. The patent examiner corresponds with the patent attorney about the application, issuing formal comments and opinions called office actions. Commonly, the examiner's first office action rejects some or all of the claims. The attorney's responses and other efforts to adjust the claims and convince the examiner to accept or allow them, is called patent prosecution.

You will be asked at times to help WiSys' attorney do the best job of answering these office actions. A quick, detailed reply to an office action is important because the patent office sets time deadlines for response.

The patent prosecution may take anywhere from a few months to several years. There is always a possibility that a patent may never be obtained, or if obtained, may not include the key desired claims that create commercial value. But if the application is granted, then the patent issues and the revised text of the application is published as a patent document.

Your intellectual property manager will send you a copy of your patent when it issues.

Patent Term


Currently in the United States, a patent has a life of 20 years from the date the patent application is filed. A change was made in 1995 to harmonize this aspect of U.S. patent law with that of the rest of the world. Formerly, the U.S. patent life was 17 years from the date of patent issuance. New patent law set forth in the 1999 American Inventors Protection Act allows for patent term adjustment to extend the life of a patent that has taken longer than three years to issue due to U.S. Patent Office delays.

Types of Intellectual Property Protection

The U.S. government and governments worldwide offer several different types of protection for what is known as "intellectual property" -- the fruit of the ideas of inventors, authors, artists, plant breeders and others. Depending on the nature of the property, protection may take the form of a patent, copyright, trademark, or one of several forms of plant variety protection.

In most cases, WiSys protects intellectual property with patents, plant variety registration and copyrights, because much of the intellectual property brought to WiSys by UW System inventors is best protected in these ways. Intellectual property also includes trademarks, trade secrets, biological materials and know-how.

Please note that significant changes were made in U.S. patent law in 1995 and again in 1999. These changes were made in part to better harmonize U.S. patent law with that of most other countries.

U.S. Patents


A patent is a right to prevent others from making, using, or selling an invention covered by the patent. Patents are granted by governments or, as is true of the European Patent Office, by regional patent offices established by treaty. Generally patents may be enforced only in the jurisdiction that has granted them. Unless other countries are expressly referred to, the following discussion covers U.S. patents only. Although some variation exists from country to country, foreign patents generally have the same requirements as U.S. patents; however, foreign patents are often much more easily barred (For more information on barring events see below.)

The following is a brief summary of patent requirements, which are defined in great detail in the law. Please call one of WiSys' intellectual property managers if you have specific questions. You may also review additional information on the U.S. Patent and Trademark Office Web site.

Please also note that this discussion does not take into account the requirements for certain types of patents, most notably design patents that protect the ornamental appearance of useful objects. Plant patents are also somewhat different from other patents and are discussed separately in the section on Plant Variety Protection.

Basic Requirements and Terminology
The following requirements must be met for a patent to issue:

Inventorship: To obtain a patent, you must be the sole or a joint inventor. In other words, it is not enough to be an employer, major professor, directed lab technician, or co-author on a paper. The sort of contribution that makes a person an inventor is set by law. Deliberately excluding an inventor or including an extra inventor can make a patent invalid. WiSys refers any questions about proper recognition of inventorship to the patent attorney handling the case.

Patentable Subject Matter: To be patented, an invention must be the right sort of discovery or technical advance. For the standard type of patent, called a utility patent, an invention must be either a machine, composition of matter, process, or article of manufacture (i.e. an artificial, man-made thing rather than an unprocessed, natural object or material). An improved version of previous technology may be patentable, as well as a new use for an existing technology.

You may have heard of other sorts of patents, but most can be reduced to the basic categories just listed. For example, "uses" or "methods" are processes; "systems" tend to be processes, machines, or articles of manufacture; "software patents" usually cover processes or machines; "compositions of matter" or "articles of manufacture" may cover bacterial cultures, cloned DNA, and other biological materials. "Improvement patents" can be almost anything.

Utility: The patent statute specifies that an invention, must be useful, that is, it must be good for some applied purpose.

Novelty: The invention must be new - the exact same thing must not have existed or been done before.

Non-Obviousness: Even if novel, the invention must also be different enough from past technology that the average worker in the field would not have come up with the new invention from what was already known. If the invention does not meet this test, it is rejected as obvious. Remember that the average worker in many scientific fields may be a Ph.D. researcher. In order to meet this requirement, inventors need to be aware of prior art, barring events, and bar dates.

Prior Art: Relevant past technology that may be considered by the Patent Office in evaluating novelty and non-obviousness is called the prior art, i.e. the knowledge of prior artisans or people skilled in the relevant fields. If a patent application is filed in the U.S., anything that has been published, used in public, offered for sale, or sold by anyone before the inventor(s) made the invention, or more than one year before the application is filed, becomes a part of the prior art for that application.

The inventor's own publications made within a year prior to the filing of the patent application do not prevent the inventor from obtaining a U.S. patent. However, such publications do prevent foreign patents from being obtained, because of their requirement for absolute novelty.

Barring Events: In the U.S., the publication, public use, offer for sale, or sale of an invention anywhere in the world is known as a barring event, because if a year passes between one of these events and the date when a patent application is filed on the invention, the inventor is barred from patenting the invention.

Bar Date: This is the date where one or more barring events prevent a patent application from being filed or further prosecuted.

Patents are Easily Barred
It is very easy to do something that constitutes publication or public use without realizing it. While the patent statute refers to "printed publication" as the barring event, this term is interpreted very broadly. It includes any printed, photocopied, typed, microfilmed or otherwise fixed communication. Not only conventional academic publications but also abstracts, master's theses, Ph.D. dissertations, presentation overheads, poster sessions and even tape recordings of speeches are all considered printed publications once they are delivered to subscribers, distributed at a meeting, shelved and cataloged in a library, etc.

While the U.S. provides a one-year grace period after publication, public use, sale, or offer for sale, most foreign countries have no such grace period. Furthermore, even oral disclosures can have the same effect in foreign countries as publications.

Once again, this discussion of prior art and barring events is only a summary overview. The law includes various exceptions, and a seemingly common term, such as "printed publication", may have a special meaning. Thus, it is vital to tell the attorney drafting your application about any possibly barring event or prior art for two reasons:

• Only if fully informed can the attorney make the best possible case for your patent. Good patent claims can sometimes still be made even though the disclosed material is prior art.
• Deliberate failure to notify the Patent Office of prior art relevant to an application can make the patent invalid.

The U.S. Patent Application Process
To initiate the patenting process, the patent attorney describes the invention in a patent application. The description must be complete enough to enable a person skilled in the field to practice the invention. This enabling disclosure must also reveal the best mode of practicing the invention. In other words, the version that the inventor considers to be the best at the time of filing must be described in the patent. If the disclosure is not enabling, the application will be denied. And if the best mode is not revealed and the patent is challenged in a lawsuit, a court may find the patent to be invalid.

A patent application ends with a numbered series of statements called claims, each of which sums up the invention in a single sentence. Each claim looks at the essence of the invention in a slightly different way. The claims determine what the patent covers.

After a patent application is filed in the United States Patent and Trademark Office, the following events generally take place:

Application Review: A patent examiner reviews the application for utility, novelty, non-obviousness, and enabling disclosure.

Office Actions: The patent examiner corresponds with the patent attorney about the application, issuing formal comments and opinions called office actions. Commonly, the examiner's first office action rejects some or all of the claims.

Patent Prosecution: The attorney replies, and may adjust the claims, in order to convince the examiner to accept or allow them. These efforts are called patent prosecution. The patent prosecution process may take anywhere from a few months to several years, and, of course, is not always successful.

Patent Issuance: If the application is granted, the patent is issued, with the text of the application published as the patent document.

Terms of the Patent
Once a patent is granted, the owner has the right to limit who may practice the invention. The owner may practice the invention himself or herself, or may authorize another to do so by granting a license, generally in return for a negotiated fee. Under WiSys' inventor contract, the inventor assigns the patent to WiSys, which then becomes the patent owner. WiSys earns money for the inventors and UW System by licensing the invention to a company that commercializes the invention.

Occasionally, someone infringes a patent by practicing the invention without the permission of the inventor. All patent infringement negotiations and litigation are managed by WiSys.

As a result of a 1995 change in U.S. patent law, the life of a utility patent is now 20 years from the filing date of the application (for applications filed on or after June 8, 1995). This change harmonizes U.S. patent law with that of most of the rest of the world. Formerly, a U.S. patent had a life of 17 years from the date of issuance. WiSys patents and applications filed prior to June 8, 1995, have the advantage of having a life that is the longer of the two periods.

Provisional Patent Application


In 1995 the U.S. introduced a new type of patent application, called a provisional patent application. This provisional application is essentially the same as similar provisional filings offered by some foreign countries. These provisional filings have been very important overseas, since most other countries follow a first-to-file invention convention, instead of the first-to-invent convention used in the U.S. The provisional application allows an early filing date to be created before all the details are written in the final patent application.

A provisional patent application is a document filed with the U.S. Patent and Trademark Office that meets the statutory requirements for a patent, but need not contain claims. The provisional application must be followed by a regular patent application on the disclosed material before one year has elapsed. The provisional may be used to create an early filing date if a patent has a bar date due to a prior disclosure. A provisional application may also move the entire patent period into the future by as much as a year. This is an advantage when it is expected that the technology will have a stronger royalty stream later in its patent life, as is the case with many pharmaceuticals.

However, provisional patents have a downside, as well. Many foreign patent offices will not recognize that a U.S. provisional has established a prior filing date if the provisional does not meet all their criteria. It is also unclear how much detail should be included in a provisional application. WiSys files provisional applications in appropriate circumstances and continues to monitor developments on this form of protection.

Foreign Patents


Please note that foreign patent law in certain respects can be quite different from U.S. law. At the same time, most foreign countries tend to follow similar rules. This section discusses foreign patent law in general. There may be exceptions on a country-by-country basis.

If a U.S. patent application is made prior to public disclosure of the invention anywhere in the world, then in most cases patents can be filed in foreign countries. Please note that prior disclosure anywhere in the world before a U.S. patent application is filed normally bars foreign patentability. Also, some material that is patentable in the U.S. may not be patentable in all countries (e.g. medical procedures).

Foreign patents typically are very expensive; the cost of a portfolio of patents in ten key overseas countries is approximately $100,000. With many technologies, the U.S. market alone can be 30%-50% of the world market, making the selection of other markets even more important.

Copyrights


Copyright is a form of protection that is available for original "works of authorship." Under the Copyright Act of 1976, copyright is actually a bundle of rights giving the owner the exclusive rights to reproduce, distribute, publicly perform, or publicly display the copyrighted work, or to prepare derivative works based upon it.

Copyright Coverage
The Copyright Act recognizes eight categories of works of authorship that may be copyrighted: literary, musical, dramatic, choreographic, pictorial, audiovisual, sound recordings and architectural works. These categories are interpreted quite broadly; for example, a computer program can be copyrighted as a literary work, and a map can be registered under pictorial, graphic, and sculptural works.

The general criterion for a work of authorship is that it be "fixed in a tangible form of expression." That is, copyright law generally distinguishes between the concrete expression of an idea, which can be protected, and the abstract idea, concept or information behind the work, which cannot.

Copyright Creation, Notice and Registration
The author (or authors) who creates a work by fixing it in a tangible form of expression immediately acquires a copyright in the work. This copyright protection applies to all unpublished works.

Before March 1, 1989, work published in the United States had to bear a copyright notice to preserve copyright protection. Now, when a work is published, it should bear a notice of copyright. If the work does not carry a proper notice, the defendant in an infringement suit can claim "innocent infringement" and may gain a reduction of damages. For "visually perceptible copies" the notice of copyright consists of three elements:

• the symbol ©, or the word "Copyright" or the abbreviation "Copr."
• the year of first publication
• the name of the owner of copyright

For example, Copyright 1999 WiSys Technology Foundation, Inc.

It is often advisable, but not normally required, to register a copyright with the Copyright Office. Registration is required (for U.S. authors) to enforce the copyright in court. Registration may be done by the author, by the owner of any exclusive right in the work, or by the agent of the author or owner.

U.S. Copyright Office
For specific information on copyrights, contact the U.S. Copyright Office.

Trademarks


In contrast to both patents and copyrights, trademarks protect not the substance of an invention or other work, but rather the name or logo under which a good or service is marketed. That is, a trademark is any word, name, symbol, device or combination thereof adopted by a manufacturer (or merchant) to identify its goods and to distinguish these goods from those manufactured or sold by others.

Acquiring Trademark Rights
The strongest trademark is one that is fanciful or arbitrary with respect to the goods or services on which it is used. The scope of protection for this type of mark against potential infringers will be greatest, because an infringer cannot justify using a similar mark on the grounds that it was merely intended to describe or praise the goods.

Enforceable rights in a trademark can be acquired simply by using the trademark. These rights are generally limited to the geographic area of actual use.

Trademarks can also be registered with the U.S. Patent and Trademark Office. A federally registered trademark carries rights throughout the United States. To acquire a registered trademark, the owner must:

• apply to the Patent Office for trademark registration
• apply the trademark to the actual goods that are sold

The owner of a registered trademark acquires several rights, such as the right to bar importation of goods bearing an infringing trademark. Once a trademark has been registered, the owner is entitled to use the symbol "®" or the words "Registered in U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." The registration symbol may not be used before registration has issued. Furthermore, trademark registration cannot issue until actual use of the trademark has started.

U.S. Patent and Trademark Office
Additional information on trademarks is available from the U.S. Patent and Trademark Office.

Plant Variety Protection


In the U.S., new plant varieties can be protected in three different ways, depending on the specifics of the plant.

Plant Variety Certificates and Plant Patents
Plant variety certificates are issued by the U.S. Department of Agriculture (USDA) rather than the U.S. Patent and Trademark Office (USPTO). They protect sexually propagated plants, tubers (since 1994) and F1 hybrids (since 1994). Plant variety certificates have also been expanded to include new plant varieties where the "essential biological characteristics" of the original variety are retained.

Plant patents are issued by the USPTO. They protect asexually propagated plants, but tubers (potatoes, etc.) are specifically excluded.

Utility Patents
Utility patents are issued by the USPTO to protect sexually propagated plants, asexually propagated plants, tubers and F1 hybrids. In general, utility patents are considered superior to plant patents, because the claims in utility patents offer a broader coverage. Utility patents may also complement the protection offered by a plant variety certificate. Utility patents can be difficult to obtain, however, because of the Patent Office's tendency to reject new varieties for "obviousness."

Plant Variety Protection in Foreign Countries
With few exceptions, most countries overseas do not permit plant patents. Instead, they offer a protection system that is generally called "plant breeder's rights." Overall, this system is similar to the U.S. plant variety certificates, except that plant breeder's rights include almost all plant types, including sexually and asexually reproducing plants, tubers, and certain hybrids.

Plant breeder's rights are conferred by the international organization known by the French acronym UPOV. UPOV certificates are provided for in the Treaty of Rome regulations. Under the UPOV system, the actual rights and protections available in a particular country are determined by the national laws and regulations in this area.

Trade Secrets


A trade secret is knowledge that is possessed by an individual or institution and kept secret in order to prevent others from using the knowledge in a competitive manner (or for other reasons). Trade secrets can never be patented, since a patent must publicize the knowledge. A trade secret can exist in an unpublished work that is also protected by copyright.

Probably the most cited example of a trade secret is the recipe for Coca-Cola. If the formula for Coca-Cola had been patented, another manufacturer could have obtained a copy of the patent and modified the formula slightly, without a great deal of work. Moreover, the protection offered by a U.S. patent would have expired after 17 years from patent issuance (the patent life at the time). After the patent's expiration date, any competitor could have used the recipe and, by offering a lower price, could have cut into Coca-Cola's market share. While today the Coca-Cola "trade secret" may have greater value as a marketing concept than as a useful technology, other secret processes can offer great competitive advantage.

Industry makes use of trade secrets to protect manufacturing processes and other technology where the details are not evident from an examination and analysis of the final product. To maintain trade secret protection, the use of the trade secret is usually confined to a small, high-security area and to a few carefully screened individuals, each of whom may know only a part of the trade secret. These individuals must be contractually bound to preserve the trade secret.

Knowhow


Knowhow is specialized knowledge that is possessed by one person or a few people, and has commercial value. Knowhow often serves as a basis for consulting agreements where an hourly fee is typically set for the services rendered, or less frequently, a project fee is negotiated. Some types of knowhow may also qualify as trade secrets.

Knowhow is also involved in transfers of biological materials, engineering drawings, and other property. Fees often take into account the value of the cost and time that would have been otherwise expended in reverse engineering and other methods to accomplish the same objective.

Licensing Process

Your Licensing Team


The day your technology is accepted by WiSys for patenting and licensing, it is assigned to a WiSys licensing manager. These technology managers have technical degrees and years of industry experience in sales and contract negotiations. All licensing managers have access to your technology for licensing; however your assigned licensing manager is the one with the most knowledge of your technology and who shepherds it through the licensing process.

Your primary contact on licensing and commercial issues is your licensing manager. But your licensing manager is also part of a larger team that will work together to patent and license your technology.

The entire technology team consists of the following:

• You and your co-inventors
• Your intellectual property manager
• Your primary licensing manager
• Other licensing managers
• Outside patent counsel
• WiSys' support staff
• WiSys' general counsel and associate general counsel
• WiSys' research and marketing specialists

Outside legal counsel will prepare your patent application and will help to ensure that licensing agreements conform to applicable laws. WiSys' research and marketing team will assist your licensing manager with market analysis and in the preparation of marketing materials. WiSys also has an experienced support staff and a computerized tracking system to make certain that royalties are paid on time and that other agreement obligations are met.

One very important service provided by WiSys is license agreement administration. Information on license agreements is entered into WiSys' proprietary database system, including license fee and royalty details, payment dates, development plans and report timetables, and licensee and WiSys obligations. If any anomalies occur, such as missed royalty payment dates, they are recognized, a report is generated and the assigned licensing manager reviews it. This system and the dedicated people who work with it help to ensure that WiSys' licensing efforts are successful.

How You Can Help


WiSys fully recognizes the busy schedules that UW System researchers maintain. Once a patent application has been filed and patent office objections are dealt with, WiSys can usually proceed with the licensing process with limited time involvement on your part.

Experience has shown, however, that when the inventor is willing to spend a reasonable amount of thought and time in assisting with licensing efforts, the licensing success rate is much higher than when the inventor is not available. Here are some ways you can help:

Educate Your Team
Your licensing manager, intellectual property manager, and patent attorney all have strong technical backgrounds. You are likely to find them "quick studies," but they need you to clearly explain the technical details of your discovery in order to do the best job for you. Remember that your technology, by the very definition of a patent, is novel and non-obvious even to skilled researchers in your field.

List Potential Licensees
As an inventor, you read the technical journals and trade magazines in your field. You also know the industry people who call you and visit your lab, as well as those who are active with competing technologies.

Provide this information to your licensing manager. Often the best potential licensees are those already known to the inventor. Give your licensing manager old copies of the publications you read, materials from meetings you attend, and any other information that relates to the marketing and commercialization of your own or related technologies.

Help to Identify Commercial Advantages
Sometimes there may be other ways to accomplish the same or similar results as with your technology. Tell your licensing manager about these competing technologies as well as the potential commercial advantages of your invention. If you inform the WiSys team about these issues in advance, the licensing manager will be in a better position to properly represent your technology to potential licensees. Be candid in this process. WiSys always wants to present potential licensees with a full and accurate picture of all technologies.

Be Available to Answer Questions
Unexpected questions often arise when your licensing manager is meeting with potential licensees. You are the best and perhaps only source to fully answer these questions. Sometimes these very questions are a source of ideas for future research that may further increase the benefits of your technology.

Be Curious
Your role at many of the research conferences you attend may be primarily research-oriented. However, please take the time to look at any commercial exhibits:

• Is there an exhibitor directory that might be useful to your licensing manager?
• Does it look like any company is already using your technology?
• Are companies using other methods to get a similar result?
• How might your technology help them?

Please give your licensing manager a call as soon as possible after research meetings to discuss your observations while they are still fresh in your mind.

When Licensing Activities Begin


As a general rule, active licensing begins when a patent application has been filed with the U.S. Patent and Trademark Office. Once this has occurred, a company is able to evaluate the worth of WiSys' intellectual property protection. By evaluating a company's response, WiSys can in turn obtain an idea of the invention's commercial value. During this phase, you may be asked to review the technology with your licensing manager and to provide any post-disclosure developments affecting its value and marketability.

This timetable is subject to change, depending on the circumstances. If you and your licensing manager are able to identify a good licensee, licensing activities may begin earlier. In other cases, the technology may be so advanced that the market has not yet caught up with it. Then, the best strategy may be to wait until a potential licensee is available who can fully understand the commercial value of the invention.

The first step in WiSys' marketing approach is to contact qualified existing customers and licensees. We prefer to provide interested companies with a publication by the inventor describing the technology. If this is not available, WiSys considers patent applications without claims to be nonconfidential, and we can provide these to companies for review. Other WiSys marketing activities are outlined below.

Marketing Activities


Your licensing manager will use one or several methods to license your technology, depending on what is warranted for the particular technology involved. Possible methods include:

Direct Personal Contacts
Before a technology is licensed, your licensing manager will discuss the technology personally with the potential licensee. Frequently, the first meeting will be the result of a telephone contact and visit to the licensee. This helps to clarify interest early in the process and enables the licensing manager to meet many of the individuals who are interested in the technology from various perspectives.

Direct Marketing
WiSys' direct mail program is sometimes used to supplement direct contacts. This is particularly the case where there are many smaller potential licensees that can benefit from a processing method or other refinement. Inbound telemarketing with follow-up by your licensing manager is integrated with this program.

WiSys Web Site
All of WiSys' active technologies are listed on our Web site and can be easily searched by technology field, keyword, inventor name, and more. Potential licensees are also alerted to new WiSys technologies through an email alert system on the WARF website.

Technical Presentations
Your own presentations and papers at scientific meetings can be important in licensing. Contacts made in connection with such presentations can be a good source of potential licensees. Please remember to send copies of these presentations to WiSys along with any commercial contacts made.

Conferences and Trade Shows
WiSys and WARF participate in a number of conferences and trade shows each year. Attendees at these shows include industry managers and directors of business development as well as representatives from technology transfer offices across the country. WiSys' computerized technology database is available at these meetings to run detailed technology searches for potential licensees.

The License Negotiation


During the entire licensing process, it is important to keep your licensing manager aware of your activities with potential licensees. If you receive direct contacts from potential licensees, please inform your licensing manager. Also please make an effort to answer a reasonable number of questions from potential licensees regarding your technology. This often significantly enhances the licensing process. At the same time, refer all commercial and contract matters to the licensing manager.

If the potential licensee becomes too demanding of your time or too probing of your current research activities, please let your licensing manager know so that he or she can give the potential licensee a gentle reminder. Under no circumstance should a potential licensee consider you an unpaid consultant to their organization.

Once the right licensee has been identified and makes a decision to obtain a license, your licensing manager will negotiate the details of an agreement with the interested company. Licensing negotiations deal with commercial matters, and at this point the inventor normally is not involved. WiSys treats licensing terms as confidential between the company and WiSys, so your licensing manager will not be able to share details of the licensing agreement with you. But your licensing manager can normally answer your general questions concerning the status of the negotiations.

WiSys's experience has been that even if we finalize an agreement with a reluctant licensee, problems with payment delays and other matters make the license marginal at best. Sometimes WiSys is forced to move on to another potential licensee rather than continue with a difficult candidate.