I gave a talk last year on this; can we file a patent?

Public disclosure of an invention more than one year before a patent application is files serves as an absolute bar to a patent.  Any public disclosure prior to filing a US patent application serves as a bar to patent protection in all foreign countries.

I have a good idea, but haven't done any lab work on it. Can we patent it?

To be eligible for patent protection, an invention must meet certain criteria including the following:

• It must be more than an idea; it must relate to a process, machine, manufacture, composition of matter, or new use of any of these.
• It must be novel; the inventor must be the first person in the world to invent the invention.
• It must be non-obvious; the invention must not be obvious to a person of reasonable skill and knowledge in the art to which the invention relates.
• It must be useful; the invention must have some utility.

However, a provisional patent application may be filed on inventions that have not yet been reduced to practice.

What is a provisional patent application?

A provisional patent application is one that is used to establish an early effective filing date with the US Patent and Trademark Office (USPTO).  The use of a provisional patent application allows the inventor up to one full year to further develop the invention, determine whether it is marketable, secure any necessary funding sources, or seek a corporate sponsor to license the invention, before the university undertakes the major expense of a regular patent application filing.

A provisional patent application will contain a complete description of the invention, any drawings that are necessary, and all specifications.  It need not include any of the requisite formal drawings or claims of conventional patent applications as it will not be searched or examined on its merits by the USPTO. Therefore, a provisional patent application will never become a patent and does not start the patent term running. Essentially, a provisional application extends patent protection for up to one year.

Prior to one year after filing the provisional application, the applicant must file a non-provisional patent application claiming priority from the provisional application or the provisional application will be considered abandoned by the operation of law.  When the non-provisional application is filed claiming priority from the provisional application, the applicant may include additional subject matter to supplement the original provisional application.

If the university decides not to file for a patent for my invention, can I pursue patenting on my own?

Perhaps, this practice is known as releasing an invention.  If OTAM decides not to patent an invention after receiving an invention disclosure form, OTAM may release the invention to the inventors, who may then file for a patent on their own. After the invention has been released, it is important to remember that additional work done on the invention (e.g. later data) will likely be owned by Wake Forest. Therefore, it is important that the inventor work on a release invention away from Wake Forest and not use Wake Forest staff, equipment or funds for further work.

May I call the patent attorney to talk with her directly about this application?

Questions about a patent application should be directed to the case manager for your invention in OTAM.  When a patent application is being prepared by an attorney, you may be contacted by the attorney to clarify issues and to ensure that the application adequately protects the inventions.  During this preliminary phase of the patent application, dialog between the attorney and the inventor is encouraged.

Administrative inquiries should be directed to your OTAM contact.  Additionally, please remember that all telephone calls to the attorney cost the university (and therefore the inventors) money.

My graduate student was very helpful in executing the experiments for this invention; should she be listed on the patent?

Inventor ship is a legal determination that is made by the patent attorney. Only inventors are listed on patents. Inventor ship is very different than authorship. An inventor is the person(s) who conceived the invention.  So, if your graduate student did not contribute to the conception of the invention, she is not an inventor.  Who actually conducted the experiment is usually irrelevant in determining inventor ship for patent purposes.

However, if your graduate student, in executing the experiment, substantially altered the invention or improved the invention, she may eligible to be included as a co-inventor.  Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice.

If you would like to reward significant but non-inventive contribution to an invention, you may list co-contributors on a separate sheet of paper signed by all of the inventors granting some of the inventor's share of any income generated by the invention.

Can we change the order of the names on our patent? I feel I was the "lead inventor"!

The order of names on a patent, unlike on a scholarly publication, is not significant.  The order of names may be changed on a patent application prior to issuance. However, once a patent has issued and assuming that it is a valid patent, the USPTO will only correct minor typographical errors made by the applicant or its own clerical errors.