If, in the course of conducting research or providing patient care at TJU or TJUH, an employee conceives of and/or reduces to practice a discovery/invention, s/he is obligated to report such discovery/invention to OTT by completing a Report of Invention (ROI) form, which will provide important information for the invention review process.
A public disclosure of a patentable discovery/invention makes it unpatentable in the majority of foreign countries, if, prior to the public disclosure, a patent application has not been filed and/or a Confidential Disclosure Agreement (CDA) has not been executed by TJU and the third party in recipient of the discovery/invention. However, in the United States and Canada, there is a 1-year grace period from the time of the first public disclosure to seek patent protection.
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Publications, conference abstracts, posters, graduate students’ theses (online or hardcopy, whichever occurs first), or oral presentations to or communication with any third parties outside of TJU, constitute a public disclosure. However, submitting a manuscript to a journal for review, or submitting a grant application to a funding agency for review, does not constitute a public disclosure until the manuscript is published (online or hardcopy, whichever occurs first) or the grant application is awarded.
Please click here to view the “Discovery to Invention” presentation by a patent attorney about public disclosure.
According to United States patent law, a patentable invention needs to be Novel, Non-obvious, and Useful.
Not all discoveries/inventions require patent protection in order to be commercialized. Patent protection is just one of the tools to assist discovery/invention commercialization. Universities usually do not seek patent protection on research tools. Examples are transgenic mice, plasmids, methods, and pathways or targets for potential therapeutic compounds.
Biological material(s) could be provided under a material transfer agreement for a fee. Such fee will be distributed to the creator(s) of the biological material in accordance with the TJU Patent Policy and Tangible Research Property Policy. Please click here for further information about the policies and a reference copy.
At times, a discovery/invention on a method could be marketed as know-how, provided that the detailed steps of the method are not published.
Unless modulators of a pathway or target are identified, the pathway or target itself is generally considered to be of limited commercial value by the industry. Patent protection of a pathway or target does not extend to the modulators of such pathway or target. Modulators have to be identified and validated in order to seek sound intellectual property protection.
Inventorship determination is a legal issue and can only be determined by a patent attorney in accordance with United States patent law. Co-authorship of a published paper is not equal to inventorship. Incorrect inventorship makes a patent invalid and may jeopardize any potential licensing opportunities or cause potential legal risk, if the discovery/invention is licensed. Ownership follows inventorship.
For a discovery/invention that TJU jointly owns with other institution(s), an Inter-Institutional Agreement (IIA) needs to be negotiated and executed by all joint-owners prior to making any decisions on patent protection. All joint owners need to agree on the patent protection strategy before any patent prosecution-related action is taken
In the News
Jefferson will be represented at the BIO 2014 International Convention in San Diego, CA!
Check back for events in Fall 2014!
INNOVATION CORNER is taking a break until September.
For any questions about furthering your ideas and inventions and how OTT can help, feel free to call the office.