- Annual Reports
Next: IP Protection Decision ->
After it has been determined that OSU has proprietary interest in a disclosure submitted to the TDC, a thorough evaluation of the disclosure is carried out to determine the commercial viability of the invention. The TDC evaluation process has two main components:
- Intellectual Property evaluation to determine the ability to protect the intellectual property (IP) of the invention
- Market evaluation to assess the commercialization opportunity for the invention
What is an Intellectual Property? Intellectual Property (IP) describes a wide variety of property created by inventors, musicians, authors, and artists. To be more precise, IP is a work or invention that is the result of creativity (a work of the mind), and can be in the form of an invention, manuscript, or a design to which one has rights and may apply for a patent, copyright, and/or trademark. An additional type of IP is a Trade Secret, which can be in the form of know-how or data. Last, an inventor may decide to publish their intellectual property to make it freely available to those interested.
Types of Intellectual Property
Patent- According to U.S Patent Law a patentable invention is: Any new, useful, and non-obvious process, machine, article of manufacture, or composition of matter that falls within the guidelines of patent-eligible subject matter. Of course, the many types of patents available complicate this. For more information, see section 7.
Copyright- Protect creative works, such as books, movies, software and photographs, giving the author protection from others trying to use copies of the copyrighted material. The duration is 70 years from first publication for works made for hire.
Trade Secrets- Information that is subject to reasonable efforts to be maintained as secret that derives independent economic value from not being generally known to or readily ascertainable by others. A Trade Secret does not expire.
Trademark- A trademark is a mark that indicates that a specific entity is responsible for the product or service. No other entity can use the mark, and if they did, legal consequences would apply. Federally registered trademarks last for 10 years, but can be renewed indefinitely in 10-year increments.
Patent Eligible Inventions
The majority of technology developed out of the university requires that a patent be obtained in order to commercialize the invention. Because we usually work with patent protection we will explain this evaluation process in detail below. However, we also work with other types of IP, such as trademarks and trade secrets. If your invention is best suited for these forms of protection, we will guide you through these processes as well.
Despite what you may have heard, you cannot obtain a patent on anything…..but you can on almost anything that is new. A quote often cited in patent law is that “anything under the sun that is made by man” can be patented ("include anything under the sun that is made by man." S Rep. No 1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep. No. 1979, 82d Cong., 2d Sess., 6 (1952). In other words, if you merely make a discovery, it does not mean that you are entitled to a patent. It was a fact all along, and you were merely the first to observe it. But if your invention uses “the hand of man,” you may be entitled to a patent. Processes, machines, compositions of matter, articles of manufacture, software and methods that embody four qualities can be patented.
What are those qualities? Statutory subject matter, utility, novelty, and non-obviousness.
Statutory subject matter – The first requirement is the claimed invention must be eligible subject matter. Because almost everything is patent eligible, it is easier to state what is not patentable: (a) laws of nature, (b) physical phenomena and (c) abstract ideas.
Laws of nature – Laws based on observations and experiments that govern how nature works. For example, Sir Isaac Newton could not have patented the law of gravity.
Physical phenomena – Similar to laws of nature, physical phenomena are naturally occurring events involving physical properties of matter and energy. For example, lightening is something you cannot patent.
Abstract ideas – This is a bit trickier than the rest. The definition of an abstract idea is that concepts that need to be visualized, as they cannot be illustrated through concrete examples. The Supreme Court has stated, “[a] principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented” (Le Roy v. Tatham,55 U.S. (14 How.) 156, 175 (1852). A great example of an abstract idea often used is mathematical algorithms.
Utility – An invention must provide some identifiable benefit and be operative. A commonly used example of an invention that has no utility is a perpetual motion machine. You cannot patent an invention that produces more energy than it consumes because of the belief that an invention cannot have utility if it does not work.
If your invention passes the utility and statutory subject matter requirement, good news! You have passed two of the four hurdles to obtain a patent. The next two are the most difficult to clear:
Novelty – An invention must be new. In other words, the invention must not be known to the public already. The purpose of this rule is to ensure that inventions that are already known to the public cannot be patented.
Non-Obviousness – An invention must not be obvious. This is often determined by the following process: 1) Determine the scope and content of what is already known 2) Determine differences between the claimed invention and prior art and 3) Resolve the level or ordinary skill in the art at the time of the invention. It must then be determined whether “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art …” (Manual of Patent Examining Procedure). In addition, there are “secondary considerations” that can be used to show non-obviousness, such as the invention’s commercial success, or failure of others to reduce the invention to practice.
How do you show your invention is novel and non-obvious? By finding the knowledge already known to the public prior to the priority date of the invention (the day you file a patent application), and comparing that knowledge to your invention. If your invention provides a novel and non-obvious inventive step, then you may be entitled to a patent.
Prior art is the term used for existing information that will demonstrate an invention is not novel and/or non-obvious. This includes printed publications, public use, sale offers or inventions otherwise made available to the public. If prior art is found from other groups, it can lead to a bar for the ability to patent an invention if that prior art demonstrates the invention is not novel and/or non-obvious.
A public disclosure is when an inventor makes his invention known outside the university, which can also lead to a bar for obtaining a patent. The most common type of public disclosure we deal with at a university is “printed publications.” This is misleading however, because any disclosure can be used against a patent application if it teaches someone with ordinary skill in the art to practice the invention without undue experimentation. This is true whether it is a publication or poster presentation. Even a grant that is only available through the FOIA may be considered a public disclosure (link).
Another form of public disclosure occurs when the inventor performs a public use of the invention or offers it to another party in a public sale, whether it enables someone to practice the invention or not. A new inventor-friendly rule is that the public must be aware of the use of the invention. For example, if the invention was used on public land in the middle of the desert that only the inventor knew about, that is not considered a public use. Overall, what constitutes a public disclosure causes some of the most confusion in patent law.
This is why it is absolutely critical to inform the TDC of your invention before any potential public disclosure is made. Please contact the TDC to help preserve your patent rights if you believe a public disclosure of your invention will occur. Luckily, even if you already made a public disclosure all is not lost.
In the US, inventors have a one-year grace period for public disclosures that originate from their work. However, most other countries do not have a grace period. This means that any public disclosure may bar the ability for us to patent the invention in other countries.
Market evaluation consists of identifying where the invention fits into an industrial system. Is there a cadre of companies that might use the invention? TDC uses many different resources to make this evaluation. SIC (Standard Industrial Classification codes are four-digit numerical codes assigned by the U.S. government to business establishments to identify the primary business of the establishment.) and NAICS (North American Industry Classification System is used by businesses and governments to classify and measure economic activity in the United States, Canada, and Mexico. NAICS is 6-digit code system that is currently the standard used by federal statistical agencies in classifying business establishments) codes are a good place to start. Often, however, the PI is the best source to start looking for commercial partners.
The Total Available Market is then determined. This is the whole size of the market, with all the players (companies) in it. Then the TDC determines the Potential Available Market, or how much of that market the new invention can expect to serve. This is an inexact science. It mostly depends on the structure of the industry and how likely the technology can attract either a major player in the industry (think Google) or an up-and-comer who is willing to attack the major player and might need a technological innovation for an advantage (think Tesla). It also depends on how disruptive the technology is. A very disruptive technology might be able to capture a greater share of the market. However, a very disruptive technology carries a lot more risk, because persuading customers to switch away from current technology can be very difficult.
This depends on several things. First, how developed is the invention? TDC uses Technology Readiness Levels for relevant inventions [https://en.wikipedia.org/wiki/Technology_readiness_level] (TRL). If the TRL is 3 or less, then it still needs more development to begin to determine its commercial potential. At TRL 7 and above, it becomes easier to both attract a commercial partner, and to demonstrate the features and benefits of the invention.
However, if the invention is promising, and can potentially provide a competitive advantage to a company, then it may be possible to get sponsored research funding to get from TRL 3 to 7 (or higher).
Once suitable industry and market(s) are identified, TDC does several things. First, TDC provides a non-confidential abstract of the invention using key words that are common in the given industry which is published on a commercial website [http://okstate.flintbox.com/ and www.ibridgenetwork.org]. Also, licensing associates at TDC may make contacts at companies that might be interested in the technology. This is where the PI’s experience comes in: the PIs are more likely to know the players in a given industry or company. Licensing associates might also attend one or more conferences (scientific, industrial or trade) at which a collection of companies in an industry might be in attendance. TDC might also (although rarely) send large scale blast notices via email to potential companies in an industry. TDC is also beginning to use social media to get word out (Facebook, Twitter).
Additional Resources (CIE Scholars Program, I2E)
TDC works with other groups on the OSU campus to help get market information. The Spears School of Business’ School of Entrepreneurship has a program called CIE Scholars where promising entrepreneurial students use an invention in a ‘Lean Startup’ format to gather information about markets, industry and customer interest in a potential product. Similarly, I2E runs a ‘Lean Startup’ program for actual entrepreneurs and OSU has had several inventions vetted through this program.