For Laboratory Staff

Technology Transfer is the process of developing practical applications for the results of scientific research. For instance, a research result may be of scientific and commercial interest, but patents are commercially valuable when applied to practical processes, and so someone -- not necessarily the researchers -- must come up with a specific practical process. The process to commercially exploit research varies widely. It can involve licensing or setting up joint ventures and partnerships to share both the risks and rewards of bringing new technologies to market. Other corporate vehicles, like spin-outs, are used where the host organization does not have the necessary will, resources or skills to develop a new technology. Often these approaches are associated with raising venture capital (VC) as a means of funding the development process.

A patent is a form of intellectual property that essentially grants to an inventor the right to exclude others from making, using, or selling his or her invention. Patents are necessary for successful commercial developments of inventions. While there are several types of patents, generally the one of interest to you will be a utility patent. Utility patents are granted for machines, articles of manufacture, compositions of matter, and processes (or any useful improvement of these) that are novel, useful, and non-obvious. Patent protection is governed by the scope of the claims of the issued patent. Patent protection is only effective in the country (and its territories) where the patent has issued.

Requirements for a patent

The three basic requirements for a patentable invention are novelty, non-obviousness, and usefulness. Generally speaking, an invention is useful if it has a functional purpose, is operable, and is of some benefit to society. A novel invention is one that is not known to the public. In general, an invention will NOT meet the novelty requirement if: 

• It was known to the public
• It was described in a publication
• It was used publicly, or offered for sale prior to the application filing date. In addition, the invention must be non-obvious. This means that the invention must not be obvious to one of ordinary skill and creativity in the art and is a determination made by the U.S. Patent and Trademark Office by comparing the invention to the prior art (such as publications related to elements of the invention, including your own publications). To help meet this requirement, make sure the patent attorney or agent working on the application has a good understanding of the invention and provide them with any prior art you know. This will allow them to draft the patent application so that the invention is clearly distinguishable from prior art.

A copyright is a form of intellectual property that grants its holder the sole legal right to copy their works of original expression; such as a literary work, movie, musical work or sound recording, painting, computer program, or industrial design. It is possible to protect software that you have developed by getting a copyright or releasing it under an Open Source Software License. Please consult with TCP or IPLG for assistance with copyrights.

Disclosure of an invention is any public announcement or discussion, which includes written abstracts, talks, presentations, seminars, posters, publications (including electronic publications and postings), news releases, emails, and use of the invention in public. Disclosure will limit the right to obtain a patent. Until a patent application has been filed, you must be very careful what you say, send in an email, present in public, post on the Internet, or publish regarding the invention. There should be no public disclosure of an invention until a patent application is filed. Even if you have filed a Record of Invention, contact the IPLG or TCP prior to giving seminars, providing copies of papers, abstracts, overheads, or making any public disclosure.

The simple answer to this question is yes, you can publish your work before an invention is patented. But, the real question is what happens if you publish before a patent application is filed. In some instances, a patent in the United States may be obtained if the patent application is filed within one year of the date of publication which first disclosed the invention. A major distinction must be made between a patent and a patent application. These two distinct terms should not be used interchangeably because they convey separate meanings. A patent application does not carry the same protection provided by a patent because a patent excludes others from making, using, or selling an invention. In order to obtain a “patent” for an invention, a patent application must be filed. The patent application fully and publicly discloses the information of the invention (if there are questions about the meaning or examples of public disclosure please refer to question 5). When a patent application is filed, it does NOT mean that the invention is patented. Be aware that the patent process can take several years or more to finalize, However, once a patent application is filed then an inventor can publicly disclose the information of an invention in a publication.

From the moment you think you have an invention until the filing of the patent application, it is important to follow the proper procedures. A critical step in the patent process is maintaining accurate research records. .Below is a short list of guidelines for maintaining research notes that must be followed: •Notebooks must have sewn bindings and sequentially numbered pages.

• Make sure all entries are original, handwritten in ink, and do not skip any pages.
• Make corrections by drawing a line through the incorrect material so that it is still legible.
• Sign and date each page upon completion. Have a witness read, sign, and date each experiment uponcompletion.
• Record everything you do, as you do it, including small calculations, changes to procedure, and results.
• Record your hypotheses as they form the basis of the conception of an invention.
• Avoid disparaging commentary or other characterizations of the data in your notebooks.

More about Patent Licensing Responsibilities, Benefits and Guidelines for Laboratory Notebooks in SBMS.

All programs released, even those under an open source license, contain end user license agreements (EULAs). These EULAs typically require a user to accept or decline the license prior to activating the software in question. Under the Laboratory’s prime contract with the Department of Energy, there may be provisions in the EULA which cannot be agreed to. Examples might be restrictions in a license, such as the ability to modify or distribute the source code, or the requirement to make the entire source code available in a program that incorporates the software under the EULA. As in other cases, this technology-related agreement is reviewed by IPLG prior to use. Please consult TCP or IPLG for assistance.