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.

 Who is an inventor?

Unlike determination of authorship, which is collegial, inventorship is guided by a legal definition.  The first individual or group to make an invention that is novel, useful and non-obvious is termed an inventor.  Under US patent law only inventors are permitted to receive a patent on an invention.  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.  In other words, an idea alone is insufficient for patenting, it must be demonstrated that the invention works.  Although a working model is not necessarily needed, the concept should be shown to work through detailed drawings, procedures, prior work, and the like.

 When is an invention patentable?

Inventions must be:

  • NOVEL
    The novelty requirement means that the invention must be new and cannot have been publicly known before. The novelty requirement can have a profound effect on the patentability of an invention and inventors should be aware of the consequences – you are advised to contact the OTD to avoid inadvertent loss of patent rights due to public disclosure prior to protecting the IP.
     
  • USEFUL
    The usefulness or utility necessitates that a patent requires inventions to have at least one specific use.
     
  • NON-OBVIOUS
    This requirement of a patent means: a person knowledgeable in the field of use and with ordinary skill in the art would not likely develop the same invention. It differs from novelty in that novel inventions might only constitute insignificant changes. The non-obvious requirement thus is a significantly larger barrier whereby a patent examiner can disallow a patent even though it is not specifically disclosed anywhere in the prior art.
 What is intellectual property?

Intellectual property is any product of the human intellect that is unique, novel, nonobvious, and has some value in the marketplace.  Intellectual property includes patents, copyrights, trademarks, trade secrets and know-how.  Intellectual property allows people to own their creativity in the same way that they can own physical property.  The owner of IP can control and can be rewarded for its use, and this encourages further innovation to the benefit of society.

The writers of the Constitution understood that a U.S. Citizen has the right to protect the useful products can result from mental labor as well as physical labor. Over the years, a number of federal and international laws and best practices have evolved to protect so called “intellectual property.” The table below compares “intellectual property” with “real property.”
 

 

Real Property

Intellectual Property

Example

Personal Automobile

Formula for a Synthetic Compound

How Acquired

With Cash 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 in its initial construct, intellectual property has no tangible form, it can be described in the “physical” 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.

 Does my invention have commercial value?

If the product arising from your invention solves a current problem and meets a market need, you may have an invention with commercial value.

If you have developed something that might have wider use or could be more broadly applied, it could have commercial value.

The key to commercialization is 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.

If an industry partner has already expressed interest in your work, that is a strong sign of commercial value.

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

You should contact the OTD when you have conceived of a novel invention, before an enabling public disclosure is made.  Examples of public disclosure include poster presentations, thesis presentations, oral presentations, written research papers, grant abstracts, web-page descriptions, e-mail communications, and phone calls with colleagues not employed by your institution.  Once an idea is disclosed publically, international patenting will not be possible, although some limited protection in the US may be possible.  Please consult the OTD prior to making a public disclosure.

An OTD staff member will contact you within 48 hours of receipt of the disclosure to arrange for a meeting as step one of our evaluation process.

 What is the evaluation, patenting and licensing process?

Our new three-level evaluation process is designed to be a surrogate for industry, leverage both internal and external expertise early in the development process, in order to objectively and transparently review technologies, make informed and timely decisions, and provide multiple opportunities for communicating with inventors during the process.  The first level involves the inventors and OTD staff.  Composed of scientists, technology sector experts, clinicians, IP experts, business leaders and investment professionals, our Technology Review Committee involved in the second level, is a brain trust of experts who provide valuable feedback to our inventors, the OTD and the College.  The third level solicits input from MCW senior leadership as warranted.  The outcome at each level, based upon answering the questions in the following diagrams could be:

  1. Go – move forward with protecting an developing the IP
     
  2. Hold – more R & D is needed to provide enabling Proof of Concept data, or
     
  3. Revert – offer the IP rights back to the inventors

We will seek to address the following questions during the three levels of evaluation:

 

 What can I do to streamline the process?

Please disclose your invention to the OTD via our Invention Disclosure Form (doc) before any anticipated public disclosure, adopt our covenant and remain actively engaged throughout the disclosure, evaluation, IP protection, marketing and licensing processes.

 What are my rights and responsibilities?

The OTD is your partner during the technology development process and as such, we view our partnership as a “covenant” as described below, which when followed will serve to efficiently accomplish our respective goals of commercializing your technology:


Inventors – OTD Partnership

Inventors

OTD

Document and disclose all new inventions to the OTD

Record, review and perform a robust 3-part evaluation on your invention disclosure

Send abstracts, posters or papers to OTD for BEFORE submission for review of potential IP

Provide feedback on your invention disclosure

Work with OTD to execute agreements BEFORE discussing ideas with or sending materials to external parties

Prepare and execute Confidential Disclosure (CDA) or Nondisclosure Agreements (NDA)

Participate in patent drafting & responding to all patent office actions

Protect your IP via Patents and/or Copyrights, venture all related costs

Assist in identifying commercial partners

Identify potential commercial partners

Assist in preparing marketing materials & met with potential partners

Negotiate and execute license (LA) and/or option agreements (OA), inter-institutional agreements (IIA)

Remain active in further development of the technology

Monitor agreement compliance

Meet as needed with the OTD to discuss progress

Distribute licensing revenue per MCW policy

Disclose potential conflicts of interest

Provide federal invention reporting


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