(Approved by the Provost and Executive Vice President by authority of Executive
Order No. 4)
a. Definition of a Patent
A patent is a grant giving the owner the right to exclude
others from making, using, or selling the invention in the jurisdiction
where issued. This right may be assigned to the employer by the inventor
as a condition of employment, or for other reasons, but the patent application
must be filed in the name of the inventor.
b. Characteristics of a Patentable Invention
In order to be patentable, an invention must pass
three tests. It must be:
- Useful (produces a desirable result, solves a problem,
improves on or proposes a new use for an existing
development—or shows promise of so doing);
- Novel (must not already be patented or described
in public literature or in public use for more
than one year); and
- Not obvious (i.e., a person skilled in the particular
art would not be expected to achieve the invention
with ordinary effort).
From a broad perspective, natural laws or scientific principles
cannot be patented since they have always existed. They can be discovered
but not invented. More specifically, the following are not usually patentable:
- Substituting one material for another, i.e., plastic
for wood.
- Merely changing the size of a device.
- Making something portable.
- Substituting an equivalent element for another element.
- Changing the shape of an item.
- Printed matter.
c. Identifying the Inventors
Only persons who made an inventive contribution to the subject
matter claimed in the patent application may be named as inventors in the
application. Persons who have made other contributions such as gathering
essential data or constructing a practical embodiment of an invention,
are not inventors—unless they make an inventive contribution. Similarly,
a project supervisor is not entitled to inventor status simply because
of his or her supervisory role; an inventive contribution is the singular
criterion. The determination of who has made an inventive contribution
may be difficult when several researchers and students have been involved
in a project. It can be fatal to an otherwise successful patent application
if the name of a legitimate co-inventor is omitted from the application
and competing applications are filed by different inventors. Therefore,
it is important to clarify inventorship before the patent application is
submitted. If there is doubt concerning a person's inventor status, it
is preferable to grant tentative inventor status at the time the invention
disclosure is prepared; patent counsel will clarify this by the time the
patent application is completed.
d. Principal Features of Federal Patent Policy
Prior to 1980, there were almost as many federal patent policies
as there were awarding agencies. In 1980, PL 96–517 (commonly known
as the Bayh-Dole Act) was passed by Congress and provided a
uniform governmentwide patent policy applicable to awards made
to nonprofit organizations, universities,
and small businesses. Certain improvements were added in 1984
with the passage of PL 98–620. These new laws marked a dramatic
liberalization of previous patent policy by allowing grantees/contractors
to take title to inventions made in the course of their federally
funded
research. To
enjoy the full benefits of this law, the University must:
- Inform the sponsoring federal agency of an invention within
two months of disclosure to the University's office
for coordinating invention matters;
- Elect within two years of disclosure whether or not the
University wants title rights;
- File a patent application within one year of electing title,
or by the patent filing deadline under U.S. patent law, whichever comes
first;
- Grant a royalty-free license to the government within six
months after filing a patent application;
- Provide the government with annual reports on utilization
of federally supported inventions administered by the University; and
- Secure written invention agreements from employees working
on federally assisted research projects.
e. Employee Invention Agreements
It is the responsibility of the OIPTT to disseminate the
Patent, Invention, and Copyright Policy to University employees. This may
include employee invention agreements, but failure of the University to
secure a signed agreement in no way affects the responsibilities or obligations
of either party under the Patent, Invention, and Copyright Policy of the
University. Employees are expected to comply with the University requirements
even if they have not signed a specific patent agreement.
