1. Investing in research, making a difference. Patent Basics for UW Researchers Leah Haman Intellectual Property Associate WARF lhaman@warf.org 1

2. Investing in research, making a difference. WARF Overview Established in 1925 by Prof. Harry Steenbock An independent, tax exempt, nonprofit, supporting organization for UW-Madison and Morgridge Institute for Research (MIR) Official designated technology transfer office for UW- Madison and MIR WARF’s Mission: To support scientific research at UW- Madison and MIR by: –Moving inventions into the community –Investing licensing proceeds to fund further research Since its founding in 1925, WARF has: –Obtained over 2,300 patents –Completed over 1,600 license agreements 2

3. Investing in research, making a difference. WARF’s Annual Margin of Excellence Gift Overall, WARF has given over $1.2 billion to UW-Madison since its founding –Research projects, named professorships, graduate fellowships, faculty retention, research facility construction 3

4. Investing in research, making a difference. Conceive and start to develop your idea for a new technology or an improvement to an existing technology. Research and Discovery

5. Investing in research, making a difference. Make your invention known to WARF.  Submit an Invention Disclosure Report.  Meet with a WARF Intellectual Property Manager.  Explain your invention to WARF. Make your invention known to WARF.  Submit an Invention Disclosure Report.  Meet with a WARF Intellectual Property Manager.  Explain your invention to WARF. Invention Disclosure

6. Investing in research, making a difference. The WARF Disclosure Committee assesses your idea.  Is it protectable?  Is there a market for it?  Can we license it? Some disclosures may be determined a “predisclosure,” in which case, WARF can reconsider your disclosure if you decide to develop the technology further. The WARF Disclosure Committee assesses your idea.  Is it protectable?  Is there a market for it?  Can we license it? Some disclosures may be determined a “predisclosure,” in which case, WARF can reconsider your disclosure if you decide to develop the technology further. WARF Decision

7. Investing in research, making a difference. We either accept or don’t accept the invention; either way there’s a Graduate School Equity Review to determine funding sources and ownership rights to the invention.  If we accept, you sign a Memorandum Agreement, in which you agree to assign your idea to WARF, and WARF agrees to share 20 percent of any licensing revenue with the inventor group. We either accept or don’t accept the invention; either way there’s a Graduate School Equity Review to determine funding sources and ownership rights to the invention.  If we accept, you sign a Memorandum Agreement, in which you agree to assign your idea to WARF, and WARF agrees to share 20 percent of any licensing revenue with the inventor group. Inventor Is Notified by WARF

8. Investing in research, making a difference.  You meet with your WARF Intellectual Property Manager and a patent attorney who is retained by WARF.  An experienced patent attorney drafts the application with your input.  The application is filed with the U.S. Patent and Trademark Office (USPTO).  The application is examined by the USPTO  A patent issues and the inventor is notified.  You meet with your WARF Intellectual Property Manager and a patent attorney who is retained by WARF.  An experienced patent attorney drafts the application with your input.  The application is filed with the U.S. Patent and Trademark Office (USPTO).  The application is examined by the USPTO  A patent issues and the inventor is notified. Patenting

9. Investing in research, making a difference. What Is a Patent? A patent is: –Grant of a property right to the inventor “Right to exclude” –Issued by the United States Patent and Trademark Office –Utility (regular or provisional) –Design –Plant The U.S. Constitution: –“Promote the Progress of Science and useful Arts by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”

10. Investing in research, making a difference. Patent Requirements and Criteria Patent application includes: –Specification describing the invention, enabling the practice of the invention, and disclosing the best mode of carrying out the invention –Drawings –Claims, which must be definite and reference an appropriate written description Patent must be new, useful, and non-obvious –New: The invention must be demonstrably different from publicly available ideas, inventions, or products ("prior art") –Useful: The invention must have some application or utility or be an improvement over existing products and/or techniques. –Non-Obvious: The invention cannot be obvious to a “person of ordinary skill in the art“.

11. Investing in research, making a difference. Leahy-Smith America Invents Act (AIA) The U.S. moved from a “first to invent” to a “first inventor to file” system for applications filed on or after March 16, 2013. Actions and prior art that bar patentability will include public use, sales, publications, and other disclosures available to the public anywhere in the world as of the filing date, other than publications by the inventor within one year of filing –Intervening publications based on the inventor’s publication may be an issue The U.S. still has the grace period for the inventor’s own work; many countries have a requirement of “absolute novelty” Public participation in examination process more typical internationally and new provisions in U.S. law allow this as well

12. Investing in research, making a difference. Patent Examination Timeline EXAMINATION FIRST OFFICE ACTION RESPONSE TO OFFICE ACTION FURTHER OFFICE ACTIONS FINAL OFFICE ACTION NOTICE OF ALLOWANCE Application assigned to an examiner Examiner searches for prior art Examiner applies tests for novelty, non-obviousness and utility Initial rejections of some or all claims are common Office action spells out issues that need to be addressed Arguments to persuade the examiner that the prior art was incorrectly applied Claims may be amended to further distinguish the invention from the prior art Examiner reviews arguments and/or amendments If arguments are persuasive, claims may be allowed or new rejections may be made Applicants can respond if only minor amendments are needed Otherwise, a request for continued examination or an appeal can be filed Congratulations! Claims are allowable and the patent can issue Issue and publication fees are paid

13. Investing in research, making a difference. WARF Licensing Manager identifies companies that may be interested in the invention and pro-actively markets the technology to those companies.  WARF Licensing Manager identifies the commercial space for your invention.  A summary of the technology is written and posted on the WARF Web site.  Other marketing materials may be developed. WARF Licensing Manager identifies companies that may be interested in the invention and pro-actively markets the technology to those companies.  WARF Licensing Manager identifies the commercial space for your invention.  A summary of the technology is written and posted on the WARF Web site.  Other marketing materials may be developed. Marketing

14. Investing in research, making a difference.  A patent license is negotiated with a potential licensee.  A patent license is a contract between the patent owner (WARF) and a commercial partner that gives the Licensee permission to make, use, sell or import the invention.  Licensing revenue is returned to the Inventor and the University, where it is used to support further research.  A patent license is negotiated with a potential licensee.  A patent license is a contract between the patent owner (WARF) and a commercial partner that gives the Licensee permission to make, use, sell or import the invention.  Licensing revenue is returned to the Inventor and the University, where it is used to support further research. Licensing

15. Investing in research, making a difference. Questions?