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A patent for an invention is the legal grant of a property right to the inventor. Patents are issued domestically by the U.S. Patent and Trademark Office and by similar foreign government offices. In the United States, patents are valid for 20 years from the filing date of the application. U.S. patents are valid only within the U.S., U.S. territories, and U.S. possessions. U.S. Patents grant “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. In the U.S., a patent is granted to the actual or true inventor, not to the first person to file an application with the U.S. Patent and Trademark Office. U.S. Patent Law states that any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent." "Process" is defined by law as a process, act or method, and usually refers to technical or industrial processes. "Machine" is self-explanatory. "Manufacture" refers to manufactured items. "Composition of matter" pertains to chemical compounds and compositions. "Useful" in this context refers to the condition that the invention/improvement has a useful purpose and functions in line with its intended purpose. Some inventions are patentable. A researcher or research team may have an “invention” if the research activity results in:
Potential inventions need to be reported to the OIPL to determine if the invention is patentable and to ensure that the University of Alaska complies with obligations to the research sponsor and federal funding guidelines for dissemination of inventive works created with federal funding. Types of patents The United States grants three types of patents.
What makes an invention patentable? For an invention to be patentable in the United States, it must pass a three–prong test. The invention must be new, useful and nonobvious.
How can I protect my invention before a patent application is filed? Patent rights are most often lost through public disclosure. Public disclosures includes describing your invention in proposals and published papers, presentations and posters, and describing your invention to others without a non-disclosure agreement. Public disclosure results in a loss of foreign patent rights and a limit of one year of date of disclosure to file for a patent in the U.S. The U. S. grants a one–year grace period after the first public disclosure to file a patent application. If a patent application is not filed within the one–year grace period, the ability to obtain a patent is lost. Three common forms of public disclosure are:
We make every effort not to delay prompt communication of research findings to the academic community and general public. Prompt disclosure of inventions to the OIPL allows the inventor and OIP to plan how to preserve patent rights while fulfilling academic publishing obligations. If you think you have made or are developing an invention, please contact the us and complete a UA Invention Disclosure Form. Your disclosure will describe your invention or software, the sponsoring agency, when your work is scheduled for publication, and list any co–inventors. Your disclosure will be reviewed and you will be notified whether the university will support your invention by filing a patent application and seeking a licensee to commercialize the invention. University of Alaska regulation , United Academics - AAUP/AFT, and ACCFT collective bargaining agreements require that rights to inventions made with University support be assigned to the University. In additional to regulation and agreement, the obligation to assign these rights to UA is mandated by the Bayh–Dole Act for government funded research. Why is a laboratory notebook important? Maintaining an accurate and authentic laboratory notebook is a vital tool of academic research. Because the U.S. grants patent to the true inventor, not first to file, a well–kept laboratory notebook can be indispensable in legally establishing dates of invention, i.e. when the invention was conceived and when it was made. A bound laboratory notebook may become indispensable evidence of the dates you conceived of the invention and reduced it to practice as well as model tests and the test results. You may need to prove whether or when an invention occurred in the course of your research if your inventorship is ever questioned. In general, you can establish date of invention conception with a sketch and a brief written description. Reduction to practice requires construction and successful testing of a device that incorporates the invention. The date of successful testing or a compound or particular setup or piece of equipment (signifying the reduction to practice) is critically important.What does a good lab notebook look like? The best lab notebooks have either a sewn or perfect binding. The idea is to avoid potential problems caused by loose materials and lost or substituted pages. Some publishers offer oversized lab notebooks. With these, you can print and paste your laser printouts directly onto the pages. You should make tables of all test data, and these belong in the lab notebook. Your notebook should clearly state the nature of your project, when it started, what ideas were considered, what was made or built and tested, the test results, and the final conclusions. When these various events occurred should also be obvious from the dates on the individual pages. Ideally, use a notebook with a preprinted page format. For example, the notebook will have consecutively numbered pages, spaces for the project title and number as well as the book number (assuming the project leads to more than one lab notebook), and signature blocks on each page that say “Recorded by/date” and “Verified by/date.” Admittedly, lab notebooks with preprinted pages can be expensive, but if you follow these basic principles you will go far to protect your research. Organize your notebook well. Always use ink, never pencil. Accurately, completely and clearly record both successful and unsuccessful experiments. Do not trust your memory, record events as they happen. Tape worksheets, drawings or computer printouts in your notebook. Sign and date each page of your laboratory notebook. Periodically have someone who you trust and understands your work read, witness and date your notebook. Make sure important events are witnessed and dated. Here are some tips for keeping a professional laboratory notebook:
In short, a fastidiously kept lab notebook can be your best ally if your patent is infringed, and it can be your best defense if you are sued by someone else for patent infringement. Federal (Bayh-Dole Act (Public Law 96-517, Patent & Trademark Act Amendments of 1980) Public Law 96–517, commonly known as the Bayh–Dole Act, and subsequent amendments reshaped the federal patent and licensing policy relating to inventions made by universities and small businesses under federal funding. The act, which became effective in July 1981, created a uniform federal patent policy. For the first time universities were allowed to elect title to inventions made under federal sponsorship. The Act encourages universities to collaborate with private industry to promote the full utilization of inventions created under federal sponsorship. The Bayh-Dole Act created a uniform patent policy among the many federal agencies that fund research, enabling small businesses and non-profit organizations, including universities, to retain title to inventions made under federally-funded research programs. This legislation was co-sponsored by Senators Birch Bayh of Indiana and Robert Dole of Kansas and was enacted on December 12, 1980. Some of the key points of the act are:
Royalties must be shared with inventors. |
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Office of Technology Transfer |
UAF is an affirmative action/equal opportunity employer and educational institution. Site maintained by: fnlvc@uaf.edu | Last updated on October 15, 2007 |
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