Under United States patent law, an invention is a new and useful process, machine, article of manufacture, composition of matter, or any new and useful improvement thereof. For an invention to be patentable it must be novel in view of the prior art, non-obvious to one having ordinary skill in the field, and useful.
The Importance of Invention Reporting
Technology Commercialization and Knowledge Transfer (TCO) assesses each Ohio State invention disclosure for its patentability and potential for commercial success. A decision to initiate the patenting process represents a significant investment — often tens of thousands of dollars — on the part of the University. These costs are typically split among the inventor’s department and college and TCO. An invention should appear likely to meet the requirements for patentability (particularly novelty and non-obviousness) and to have commercial viability in order to justify the expense of a patent application.
Submission of an invention disclosure form is a necessary first step for enabling TCO to evaluate and protect University inventions. A detailed and thorough confidential description of the invention will help considerably to expedite this process and enable a more cost-effective approach to the filing of patent applications, including “provisional” applications.
The invention disclosure form also requires a non-confidential abstract of the invention. These may be posted on TCO ’s web site and provided to prospective licensees as part of the marketing efforts for the invention. This non-confidential abstract should focus on the invention’s commercial application and benefits without disclosing inventive methods or other confidential details.
Protecting the patentability of an invention can be critical for ensuring its commercial potential. Under U.S. law, a patent application must be filed within one year of any nonconfidential public disclosure of the invention. However, most foreign countries require that a patent application be filed before any public disclosure in order to preserve patent rights in the invention. Accordingly, it is important to submit an invention disclosure well before any publications or conference presentations and to inform TCO of any planned public disclosures.
Adhering to accepted lab notebook practices and maintaining complete records of the development of an idea from conception through reduction to practice are also essential for the protection of inventions. Such records can be crucial evidence if a legal need arises for establishing the date of conception or the contributions to an invention.
Determining Inventive Contribution
Under U.S. patent law, an inventor is one who makes a material contribution to the subject matter of at least one claim of the patent. Since the scope of the patent claims is not determined until the end of the patent prosecution process, a definitive initial determination of inventorship may not be possible if several individuals contributed to different claimed subject matter.
The invention disclosure form asks for an identification of the persons who contributed materially to what is considered to be the novel and non-obvious aspects of the invention described in the disclosure. If there were non-OSU or student contributors, those individuals should also be listed. It is important to understand, however, that the final determination of who to list as inventors, both on any patent application and on any patent that ultimately issues, will be made by OSU’s patent counsel applying the legal standards for inventorship.
Inventions Resulting from Sponsored Research
Often, University inventions result from research sponsored by government agencies or private companies. It is important to disclose fully any outside funding of the research that led to the invention. Particularly in the case of privately sponsored research, the sponsorship agreement may give the sponsor certain rights in the invention, and it is important for TCO to be aware of such terms.
The University’s Policy on Patents and Copyrights
The University’s Policy on Patents and Copyrights was established by the Board of Trustees pursuant to University Rule 3335-13-06 and governs the handling of all “products of University research.” These include inventions that result from sponsored research or investigation conducted using University resources or facilities, and inventions by University faculty and staff within the scope of their employment. The timely disclosure of inventions to TCO is the responsibility of the researcher.
The Policy, which is consistent with Ohio law, grants ownership of inventions that are products of University research to the University. Royalties from the licensing of such inventions are distributed to the inventor(s) according to a formula set forth in the Policy. In the case of joint inventors, the inventors’ share is divided equally unless the inventors agree in writing to a different allocation.
The Plant Variety Protection Act provides patent-like protection for sexually (i.e., seed) reproduced plants, other than fungi or bacteria, and to tuber reproduced crops. The variety must be distinct from all other varieties, uniform, and stable as defined in Section 41a of the Plant Variety Protection Act. If the variety has been sold or used in the United States for more than one year or in a foreign country for longer than four years, the variety is ineligible for protection. (Use of the variety to produce and market a first generation hybrid is considered use of the variety). In addition to the OSU PVP Disclosure Form, a complete Plant Variety Protection Application form must be submitted to USDA’s Plant Variety Protection Office.