Managing Patentable Inventions

Invention disclosures are forwarded by the University Authorized Official to the PASSHE Technology Transfer Office (TTO), a system-wide, central clearinghouse serving all PASSHE Universities. It is the responsibility of the University to maintain and transmit an accurate record of invention, ensuring that University personnel has agreed to transmit and assign the invention by signing the Intellectual Property Agreement.

The PASSHE TTO evaluates the Invention Disclosure for patentability and market potential. (At this time, these services are contracted to a third-party.) A preliminary patent search is generally performed by the PASSHE TTO. If this process suggests that the invention has significant commercial potential, the following sequence is set in motion.

1.      The PASSHE TTO, in concert with the Technology Licensing Officer (TLO), will attempt to identify companies whose technology interests coincide with the invention in question. A TLO will be assigned to work with the inventor. Non-enabling disclosures are sent to these companies to inform them of the general nature of the invention, without divulging its essential elements. Upon the expressed interest of a potential licensee, additional detailed information about the invention is released following the execution of an appropriate Confidentiality Agreement. The TLO directly negotiates any licensing (and similar) agreements, accepting input and guidance from the University Authorized Official, but University personnel do not directly enter into negotiations.

2.      In return for rights to an invention, licensees will be expected to file a patent application at their expense in the name of the University. If an invention requires further research to bring it to the point of commercial utilization, companies will be encouraged to provide the necessary research support as part of either a Research and License Agreement, or an Option Agreement. Where an option is involved, companies are offered an exclusive right to negotiate a license in return for a research commitment and/or appropriate payment.

3.      The University (University Authorized Official) in consultation with the PASSHE TTO may, under certain circumstances, elect to apply for a patent concurrent with the search for a licensee. This option is very selectively applied as a consequence of the limited funds available for this purpose, and is restricted to unusually promising inventions in dynamic, highly competitive fields. Where this option is contemplated, the results of the preliminary patent search will be submitted to a patent attorney who specializes in the appropriate technical area for a patentability opinion. A decision to proceed will be based on a judgment that the invention is patentable, is not encumbered by other patents, and has sufficient commercial potential to justify patent expense.

4.      If, in concert with the inventor, the PASSHE TTO is unable to identify a licensee in a timely fashion, the disclosure will typically be returned to the University for further evaluation. The University Authorized Official, in consultation with the PASSHE TTO may thereafter elect to accept the disclosure, file a patent application, and initiate the licensing process. The PASSHE TTO provides monitoring of licensing agreements, including paying all patent maintenance fees, performing due diligence requirements and ensuring licensee obligations are fulfilled.

5.      The inventor may petition the University for the assignment of invention ownership rights to them when it:

·         Is consistent with the policies and best interests of the University.

·         Would advantage the transfer of technology to the private sector.

·         Is in accord with the University’s obligations to sponsors and other third parties.

Note:  For example, should the PASSHE TTO fail to identify a licensee, and the University Authorized Official subsequently elects not to accept the invention, the inventor may petition the University for the assignment of invention ownership rights to them as described above.

The foregoing procedure is based on the premise that a close working relationship between University inventor and the PASSHE TTO is important for the successful management of inventions. The reasons are varied:

·         The inventor’s knowledge of their research areas, and of companies active in related technologies, is a key element of the technical and market assessments for an invention, and of the search for licensees.

·         Inventions can serve as powerful catalysts for industrial research support. The search for such support is greatly enhanced by close collaboration between inventors and the PASSHE TTO.

·         The search for licensees willing to underwrite the cost of concept refinement and/or patent prosecution represents a useful "market test" for an invention.

VIDEO: Penn State Research Foundation Services