A Guide to Intellectual Property and Commercialization at UGA
A patent is a limited duration grant of property right to the inventor to exclude others from making, using, selling, importing and offering to sell the claimed subject matter.
Eligible subject matter include processes or method, machines, an article of manufacture, or compositions of matter. This includes genetically modified organisms and artificially chemically modified natural compounds, leading to unnatural compositions, which are considered patentable compositions of matter.
- For more information, see the USPTO FAQ.
Generally no. A variation of a naturally occurring substance may be patentable if an inventor can show substantial advantages of using the variant compared to the normal substance and show that the variant is not also naturally occurring.
The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that issues patents to inventors and trademark registration for products. The USPTO employs patent examiners who are skilled in all technical fields to appraise patent applications.
Under the U.S. patent law, an inventor is a person or persons who contribute to the claims of a patentable invention. An employer or person who merely highlights a problem or furnishes money to build or practice an invention is not an inventor. Inventorship is a legal issue and may require an intricate legal determination by the patent attorney prosecuting the application.
Innovation Gateway contracts with outside counsel for IP protection. Individual technology managers work with inventors and outside counsel to manage patent drafting and any responses required by the USPTO.
The licensing managers at Innovation Gateway and the inventor(s) together will discuss relevant factors in deciding whether to file a patent application. Ultimately, Innovation Gateway will make the final decision as to whether to file.
Potential commercialization partners (licensees) often require patent protection because it protects the generally sizable investment needed to bring the technology to the market. Patent prosecution is time consuming, taking three to five years or more, expensive, and there is no guarantee of success. Therefore, it is not possible or appropriate for all UGA intellectual property to obtain patent protection. Innovation Gateway carefully reviews the commercial potential for an invention before investing in the patent process. Because the need for commencing a patent filing usually precedes finding a licensee, we look for creative and cost-effective ways to seek early protections for as many promising inventions as possible.
Provisional patents don’t exist, but provisional patent applications are an important tool in protecting new technologies. By filing a provisional patent application, although the examiner at PTO will not perform an appraisal of the application, the applicant will receive the benefit of the earlier filing date for the material that is adequately described in the provisional patent application.
The main difference between a provisional patent application and a regular non-provisional patent application is that a provisional patent application does not entail formal set of patent claims, oath or declaration, any information disclosure (prior art) statement, and other formalities as required by the nonprovisional patent application. PTO does not examine provisional applications. A provisional must be filed as nonprovisional, regular application within one year of the filing. If a provisional application is filed for an invention, then it provides the effective filing date for the nonprovisional application.
Rights granted by a patent are limited to the issuing country’s territory and foreign patent protection is subject to the laws of each individual country. In general, the process works much the same as it does in the United States; however, in foreign countries, an inventor will lose any patent rights if he or she publicly discloses the invention prior to filing the patent application, whereas in United States, the inventor has a one year grace period for public disclosures.
While there is no such thing as a worldwide patent, the Patent Cooperation Treaty (PCT) provides a unified procedure for filing patent applications to protect inventions in each of its contracting territories. For U.S. applicants, a PCT application is generally filed one year after the corresponding U.S. application (either provisional or regular) has been submitted. The PCT applications must be filed in the national patent office of any country in which the applicant wishes to seek patent protection, generally 30 months of the earliest claimed filing date. Patents are only valid in the country in which they are issued.
In applying a PCT application, the need to file costly foreign applications is delayed until the 30-month date. During this period, the applicant has the opportunity to further develop, evaluate and/or market the invention for licensing. In addition, the international preliminary examination often allows an applicant to simply the patent prosecution process by having a single examiner speak to the patentability of the claims, which can save significant costs in prosecuting foreign applications. The Paris Convention treaty permits a patent application filed in a second country (or a PCT application) to claim the benefit of the filing date of an application filed in a first country. However, pursuant to this treaty, these so-called “convention applications” must be filed in foreign countries (or as a PCT) within one year of the first filing date of the U.S. application.
From start to finish, the patent process in the U.S. can cost $20,000 or more and broad foreign patent filing can easily reach $250,000 or more.
Innovation Gateway will work with the other institution or company to find the best solution to manage the invention. If you created an invention under a sponsored project or consulting agreement, the licensing manager will need to review the agreement to determine the ownership and rights associated with the contract to determine the next steps. If the technology is jointly owned with another academic institution, the licensing manager will usually propose “inter-institutional” agreement that provides for one of the institution to take the lead in protecting and licensing the invention, sharing the expenses associated with the patent process, and allocating any licensing revenues. If the technology is jointly owned with another company, the licensing manager will work with that company to determine the appropriate patenting and licensing strategy.
Innovation Gateway may start the patent process before a licensee has been identified. After the University licenses the technology, the licensee generally pays the patent expenses. If Innovation Gateway cannot identify a licensee after a reasonable period (after a year or two) or if Innovation Gateway cannot obtain reasonable coverage of claims from the PTO, Innovation Gateway may decline further patent prosecution.
Other Legal Protections of IP
Copyright is a form of IP protection granted by law for original works of authorship such as literary, dramatic, musical, artistic, and certain other IP works like computer software. This protection is available to both published and unpublished works. The Copyright Act generally gives the owner of the copyright the exclusive right to conduct and authorize various acts, including reproduction, public performance and making derivative works. Copyright protection automatically occurs when a work is fixed into a tangible medium such as a book, software code, video, etc.
The University owns copyrightable works created by an employee in the course of employment. A faculty member’s or student’s general obligation to produce scholarly works is not considered a work for hire or a specific University assignment.
Copyrightable works are protected automatically and do not require copyright notice or registration. Registration with the U.S. Copyright Office is required if you want to bring a lawsuit for infringement of a U.S. work.
It is not necessary to have copyright notice, but it is still helpful as copyright notice informs the public that the work is protected by copyright and identifies the copyright owner.
An example of UGA copyright notice is below.
©20XX University of Georgia. All rights reserved. This material may not be reproduced, displayed, modified, or distributed without the express prior written permission of the copyright holder. For permission, contact [email or mailing address].
Trademark is any word, phrase, symbol or design, or combination of words, phrases, symbols or designs that identifies and distinguishes the source of goods of one party from those of others. Service mark is the same as trademark, except that it identifies and distinguishes the source of service rather than a product. Trademark and service mark serve as brand name.
Trademark registration is a legal proceeding to federally register a mark with the USPTO. Although federal registration of a mark is not mandatory, it has several advantages: trademark registration serves as a nationwide constructive notice of ownership; registered mark may achieve incontestable status after 5 years of continuous use; actions can be brought in federal suit; U.S. registration can serve as a basis for foreign registration; and filing the registration with U.S. Customs prevents importation of infringing foreign goods.