 | | | Please note: the information below is not meant to constitute or replace legal advice, but rather as a general overview. IP is a complex area, and handling it should be left to professionals; contacts for NUCATS investigators are provided below. Protection of intellectual property (IP) is vitally important to potential products in the biosciences, perhaps more so than any other industry. An invention can be protected through several means, but of most interest to biomedical investigators is the use of patents.
A patent is an exclusionary form of protection that gives the patent owner exclusive rights to exclude others from practicing (i.e., making or selling) the invention for a set period of time. Thus, having a patent does not necessarily guarantee the patent owner the right to make or sell anything. Other background patents related to the invention may therefore need to be licensed for the intellectual property to be commercialized.
Patent protection enables companies to recoup their investment in product development and create a source of funding for future R&D. Without this protection it may be difficult to find a company willing to invest the necessary time and resources for product development and commercialization.
| Want to Learn More? | | The US Patent and Trademark Office (USPTO) is a rich resource for more information and also includes a powerful tool for searching issued US patents and most patent applications more than 18 months old. |
- the term of a patent extends 20 years from the filing date in the US system
- patents may take 5 years or more to issue and subsequently become enforceable.
- To be patentable, the invention must be novel (unique and new, never made public in any way, anywhere in the world – not just in patents – before the date of the filed patent application), useful and non-obvious (to someone skilled in the art). The invention must be described in sufficient detail that someone "ordinarily skilled" in the art can replicate it, so concepts in the life sciences are usually not enough to patent - the innovative concept needs to be reduced to practice.
There is no such thing as a provisional patent, but a provisional filing with the United States Patent and Trademark Office (US PTO) offers some advantages to the formal filing of a utility patent application: - it effectively establishes a date of filing and provides inventors an extension of a full year to file the formal utility patent application
- the additional year can be spent further reducing the invention to practice as well as obtaining a better understanding of the invention's commercial applications, any prior art and potential licensees
- it is a more cost-effective option than filing a full utility patent application
- a patent’s priority date is determined on a "first-to-file" basis in other countries, while the US operates on a "first-to-invent" basis
- in the US, one can still file for patent protection within a year of public disclosure of the invention but in other patent systems, once the invention is made public, one can no longer seek patent protection
- an inventor typically has 30 months from the first filing with the USPTO (either full or provisional) to file for foreign protection
All NUCATS investigators are subject to the intellectual property guidelines of their host institution and encouraged to engage their respective technology transfer representatives early in the process of invention.
The Northwestern University Technology Transfer Program (TTP) maintains a web site with useful information on intellectual property and patents, as well as NU policy and invention disclosure forms. TTP is the sole agent responsible for licensing of NU intellectual property. Licenses may occur with either an established company or a new “startup” company.
A license is a contractual agreement, in which one party (the licensor) grants rights to another party (the licensee). When the license involves intellectual property developed for example at a research institution, the owner can either exclusively or nonexclusively license its rights to the patent(s) to a company or other organization, usually in exchange for a financial stake, including cash payments, equity and/or royalties based on future sales of a product.
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