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A policy outlining the process of disclosing and protecting an invention.
An important objective of the Technology Transfer Office (TTO) is to benefit society by enabling the transfer of inventions and knowledge from the academic enterprise to the public. If you believe you have an invention these guidelines take you through the general process of protecting it. The process is often case specific and requires close interaction between the inventor and TTO.
1. Contact TTO as early as possible so that we can help you through the process of securing proprietary rights to the invention.
2. The inventor(s) completes and submits an invention disclosure with related supporting materials to TTO. This step is important as it establishes inventorship and the date of invention.
3. TTO reviews the disclosure internally to note any deadlines and/or public disclosures that may impact the invention's patentability. In addition, we review related grant requirements, material transfer agreements, rights of private research sponsors and other ownership issues.
4. After internal review, we submit the Invention Disclosure for outside evaluation by a patent attorney. We inform the evaluator about imminent public disclosure dates (conference presentations, imminent publications, etc.)†. The invention is evaluated for patentability according to the U.S. Patent Law, i.e. to be patentable, an invention has to be novel, non-obvious and useful. The patent application must enable the practice of the invention with sufficient written description.
To establish novelty, a prior art search is done to determine whether there are issued patents, published articles or other published information capturing major features of the invention in question.
In addition to being novel, to be patentable an invention must also be non-obvious. "Obvious" means that the prior art provides a suggestion or motivation to modify teachings in the prior art to make a similar invention by somebody "skilled in the art".
To be patentable an invention must be capable of some beneficial use in ways that represent improvements over existing products or techniques.
The enablement and written description requirements generally relate to how well the specification (narrative part of the patent application preceding claims) describes the invention and provides a manner and process of making and using the invention in terms enabling any person skilled in the art, to which it pertains, to make and use the invention.
This analysis also helps us to determine how desirable it would be for a private company to obtain a license to a possible patent.
To avoid potential problems associated with incomplete or inconclusive research data, we also consider the timing of filing. Premature filing not only starts a patent life clock running (20 years from the filing date), but it also might create prior art against the new findings.
5. Once the evaluation is returned to TTO, we share results with the inventor and, if necessary, arrange for further discussions between the inventor and a patent attorney to be sure that we have captured all aspects and embodiments of the invention.
6. If we decide to file for a patent, we proceed by filing a provisional patent application (place holder for one year) assignable to the Trustees of Dartmouth College and naming all the inventors. TTO will direct the patent prosecution and the costs will be paid by the College. Note: Costs will be recovered from royalty or equity payments.
7. If the inventor wishes to start-up their own company based on the invention, we will work with the inventor and the inventor's representatives to draw up the necessary license and other agreements. Faculty should be aware of the policy about the use of Dartmouth space for start-up ventures.
Also read the policy on acceptance of equity.
8. Once a patent or patent application is licensed, license revenue is distributed in accordance with the Dartmouth College Patent Policy.
9. If the College decides not to proceed with patenting the invention, the title may be released to the inventor(s), subject to the requirements of the sponsor(s) of the research from which the invention arose. TTO facilitates this process. Subsequent to the release, the inventor may pursue patent rights herself.
†IMPORTANT TO KEEP IN MIND
Pending TTO's evaluation of the invention, inventors should not disclose any confidential information pertaining to the invention. Once an invention is disclosed publicly, in oral, visual or written forms (including e-mail or internet posting), foreign patent rights are immediately forfeited and the clock begins ticking on a 12 month grace period to file in the US. If an inventor must discuss the technology before TTO files a patent application or otherwise concludes its evaluation, the TTO provides Confidentiality Agreements for individual and corporate discussions (potential licensees, sponsors of further research, venture capitalists, etc.). It is important to understand however that there is no such protection of an invention in public forums, such as conferences. On the other hand, a grant application to a federal agency is not considered a public disclosure until it is awarded.