Patenting and licensing inventions can have numerous benefits for scientists and their research programs. One can derive a great deal of personal satisfaction from knowing that their work may have direct applications toward relieving illness and suffering. One’s efforts can be widely recognized if developed into a commercial product. Collaboration and intellectual exchange with the biotechnology and pharmaceutical partners may result in financial sponsorship of research endeavors. Inventor/scientists receive a share of the royalties paid to OSU in exchange for a license which can further serve to incentivize research activity.

Patent protection provides incentive for industry to license technologies from OSU. A patent gives OSU (to whom you have assigned your invention) the right to exclude others from practicing an invention for twenty years from the date of filing the application. That may seem like a long time until you consider the thousands of hours and millions of dollars it takes to develop, test, manufacture, and market a product before it is ever made available to the public. Patents are a company’s lifeblood. They offer exclusivity which reduces a company’s risk that it will be scooped during product research and development. In addition, the exclusivity gives a firm time to recoup its investment in a new product by acting as a barrier to the entry of competitors into the market.

Broad patent protection for a technology is not always appropriate or necessary. In some cases, trademark licensing or copyrights are adequate protection. Moreover, some technologies (e.g. cell lines and antibodies) can be licensed as research materials without patent protection.

• In order to develop research results and move them into the commercial realm, IP protection must be in place to enable companies to retain exclusivity in the marketplace.
• This is especially important in the pharma and biotech industries where drug development takes several hundred million dollars and a decade or more.
• Companies must be able to recoup their investments in the technologies.
• See practical applications arise from lab research; improve quality of life.
• Federal law (Bayh-Dole Act) requires that results from federally funded research be developed to benefit taxpayers.
• Attract and retain top faculty.
• Revenues (shared with inventors).
• Economic Development for the state.
• Generates income to promote and support teaching and research.

An inventor is one who conceives a definite and permanent idea of an operative invention, including every feature of the subject matter to be patented.

• NOT AN INVENTOR – A person who:
  • contributes to an obvious element of the invention
  • merely suggests an idea
  • simply follows instruction
  • explains how or why an invention works
  • adopts information derived from another
• JOINT INVENTION
  • need not have physically worked together or at the same time
  • need not make an equal contribution
  • need not contribute to the subject matter of every claim

An inventor is one who conceives a definite and permanent idea of an operative invention, including every feature of the subject matter to be patented.

A patent application must name the correct inventors. Although you may want to include all collaborators, technicians, students, etc on a patent application, it may not be the best thing for the patent. You can always opt to recognize contributors who are not inventors by sharing licensing revenues with them. Incorrect inventorship can invalidate a patent. Inventorship is a legal determination that we ask our patent attorneys to make.

As soon as possible. Waiting until the last minute before a publication or presentation can mean the loss of patent rights outside the US.

• Patents protect ideas.
  • must file a patent application
• Copyrights protect expression
  • must create the form of expression
• Trademarks protect designation of source of goods.
  • must use the trademark
• Trade secrets are trade secrets

Intellectual property strategies often involve a combination of patents, copyrights, trademarks and trade secrets.

• Utility patents: protect new, useful and non-obvious subject matter
• Plant patents: protect asexually produced new varieties of plants that are distinct and non- obvious
• Design patents: protect original and non-obvious ornamental designs for articles of manufacture

Data and Intellectual Property generated using significant university resources belong to OSU. The Policy on Patents and Copyrights governs the University’s handling of all intellectual property created by OSU faculty and students and was established by the Board of Trustees pursuant to University Rule 3335-13-06. It defines the requirements/conditions for University ownership of inventions and works of authorship and sets forth the royalty sharing formula for licensed inventions.

OSU’s Policy on Patents and Copyrights governs the way that intellectual property (IP) is managed at OSU. IP developed using university resources is owned by the university. That means that research results, software, and certain other works must be disclosed to Technology Commercialization and Knowledge Transfer (TCO). TCO will work with you to determine what makes the most sense for managing the results of your research efforts.

• New compounds or materials
• New uses for old compounds
• Isolated or purified natural compounds, including DNA, proteins, antibodies, carbohydrates, etc.
• New formulations or mixtures
• Transgenic non-human animals, plants or microorganisms
• Methods of producing new compounds or materials
• New methods of producing old compounds or materials
• New instruments, tools or accessories
• New devices
• New methods of performing a function by software or algorithms
• New methods of doing business