Patents and Intellectual Property
The following content outlines information and general policies of the University as it pertains to the management of Intellectual Property at UMDNJ. For specific questions and concerns please call the Office of Technology Transfer and Business Development .
What is Intellectual Property?
Intellectual Property ("IP") is a general term which can include inventions and discoveries, whether patented or not, know-how, and trade secrets. IP may be technological, artistic, creative and other tangible forms of expression and may range from software to new life forms. IP may be protected by patents, copyrights, or trademarks or may be protected by simply maintaining the know-how as a secret. Intellectual Property is an asset which may, under the proper circumstances, be bought, sold, licensed or leased, as well as assigned and inherited, much as any other piece of property.
What is a Patent?
A patent is a property right granted, in one form or another, by the governments of most countries in the world, including the United States. A patent gives the patent holder the right to exclude others from making, using, or selling the invention covered in the claims of the patent, absent the patent owner's permission. This grant lasts for a defined period of time, generally 15 - 20 years. This unusual right is granted both to stimulate and reward the inventive process, and to encourage inventors to fully describe and employ their invention without fear of predatory competition. Access to patent protection is a Constitutional right in the United States.
To qualify for patent coverage a discovery must be novel, and it must be actually useful. As a practical matter, "novelty" requires that the discovery not be previously published, known to the public, or an obvious extension of publicly available knowledge ("prior art"), while "utility" requires that the invention be taken from the idea stage and reduced to useful practice.
What may (and what may not) be Patented?
Patents are granted for inventions that are new and useful. This may include compositions of matter (new compounds), machines, manufactured products, useful processes, designs, and improvements to existing processes. New biological methods have made the invention of new life forms possible, ranging from bacteria to mammals, while hybrid plants have been patented for a number of years.
United States patent laws require that all patent applications be examined for novelty and non-obviousness, and utility. Novelty means that the discovery is new and has not been previously used, offered for sale, or described in a public forum, such as a public seminar or a published paper. Closely related is the requirement that the discovery be non-obvious to a person skilled in the art to which the discovery is related. Even the inventor's own publications are used to determine the novelty or non-obviousness of an invention claimed in a patent application (since, once published, the discovery is no longer new.) Utility means that the discovery has a demonstrated use which generally requires that the inventive idea be converted into tangible object or substance.
Moreover, the United States patent laws require that patents be granted only for patentable subject matter. Non-patentable subject matter includes, as simple examples: theories, ideas or plans, laws of nature, methods of doing business and scientific principles At one point, new life forms, i.e., newly developed bacterial strains were considered non-patentable subject matter. This is no longer the case.
Who are the Inventors?
All patents have inventors who, in the US and in many other countries, must be individuals. An inventor is a person who made a mental contribution to the conception or development of the new, useful, and non-obvious discovery. Those who are "merely" skilled in the art and who reduced these ideas to practice working under the direction of others are not necessarily inventors, while they might well be co-authors of publications which subsequently describe the invention. Care should be taken in determinations of inventorship. Patents may be invalidated for including inventors who were not contributors, and, even more seriously, not including inventors who made qualifying contributions. A patent attorney can be of great value in helping to make this determination.
Who Owns the Patent?
The default owner of a patent is the inventor. A typical condition of employment, however, is that the employee assign ownership of any inventions developed by that employee to his or her employer. This results in assignment of patents disclosing those inventions to the employer. Such is the case at UMDNJ. This duty to assign patent ownership applies to individuals employed by the University and to anyone who uses University property or funds in the course of making an invention. The University is, in nearly all cases, the assignee of the patents even when the inventive work is sponsored by the Federal or State Government and/or by private industry.
In return, the University will evaluate the patent, support the cost of the patent process and actively market the invention at an appropriate time.
What is the process if I believe I have an invention?
Call us. We will be happy to explain the process and talk with you about what you have. We will particularly want to know about possible publications that might compromise our ability to secure a patent. We will ask you to fill out an Invention Disclosure Form which can be downloaded here in Microsoft Word format.
When we receive the completed form from you, we conduct a brief internal evaluation. We will evaluate the invention to determine both its patentability and market potential. The patentability review consists of determining if the invention meets the standards for patentability outlined above. Marketability assessment is a judgment about the size of the market for the invention if patented, and the relationship of this market potential to the relatively well defined cost of obtaining a patent. Please provide as much information on the Invention Disclosure Form as possible to assist us in making this determination.
If this evaluation is positive we may send the disclosure out to an appropriate patent attorney, one with undergraduate and graduate training in your field. This will result - after a month or two - in a formal patentability decision. If this decision is positive, and we are in agreement that the invention would be marketable, we may file for patent coverage. The time period between disclosure and filing is normally several months; however, this process can be dramatically accelerated to avoid interference with a publication you know will appear shortly.
After the patent application is prepared and filed, the patent prosecution phase (the negotiations between the Patent and Trademark Office and our attorney to give us the widest possible scope of coverage in the patent) begins. The Patent and Trademark Office will issue "office actions" to which our attorney will respond. First office actions from the Patent and Trademark Office are rarely received in less than six months and patent issuance can take from a few months to several years, depending on the number of applications being examined in the particular technology area, the degree to which the patent examiner objects to the patent claims and the degree to which we wish to contest the examiner's decisions.
Within a year after US filing, we will need to decide on the wisdom, the need, and the extent of foreign filing. Patents are only enforceable in the country in which they are issued. Therefore, to prohibit another party from making, using, or selling your invention in Japan, for example, a patent must be obtained in Japan for the invention. Many foreign Patent Offices will allow an application filed in their country to be accorded the filing date of the earlier-filed United States application, as long as the application is filed in their country within one year of filing the United States application. This allows the foreign application to be examined without considering any patent or publication which issued before the foreign filing date, but after the United States filing date
The patenting process is expensive. Thus, as soon as possible, we will begin to explore licensing of the technology, a process that frequently results in external sponsorship of the patenting costs.
What 's in it for me? The Royalty Distribution Policy
The conversion of a research idea into a tangible product with actual sales can be a richly rewarding experience. Beyond the intellectual satisfaction, there can be substantial financial incentives. The income the University receives is divided according to the formula in the Patents and Licensing Section of the University Policy.