201 2-b intro-invention_management

INTRODUCTION TO INTRODUCTION TO INVENTION MANAGEMENT INVENTION MANAGEMENT

byby

Roger D. Posadas, Ph.D.Roger D. Posadas, Ph.D.Professor, Technology Management CenterProfessor, Technology Management Center

University of the Philippines - Diliman University of the Philippines - Diliman

TM-201-1-12-13, Lecture 2-B, June 2012TM-201-1-12-13, Lecture 2-B, June 2012

THE NATURE THE NATURE OF OF

INVENTIONINVENTION

“INVENTION IS THE CREATIVE PRO- CESS IN WHICH NEW LOGICAL WAYS ARE IMAGINED TO MANIPULATE NATURE FOR HUMAN PURPOSES.”

DEFINITION OF INVENTION...1DEFINITION OF INVENTION...1

THE MORPHOLOGY OF A PHYSICAL SYSTEM IS THE REPRESENTATION OR DESCRIPTION OF THE PHYSICAL PHENOMENA.

.

THE FUNCTIONAL LOGIC OF A TECHNOLOGY IS THE DESIGN OF A SEQUENCE OF UNIT FUNCTIONAL TRANSFORMATIONS TO OBTAIN A DESIRED OUTPUT FROM INPUTS. FUNCTION IS THE DEFINING CHARACTERISTIC OF A TECHNOLOGY AS A SYSTEM.

“A TECHNOLOGICAL INVENTION IS THE CREATION OF A TECHNOLOGICAL INVENTION IS THE CREATION OF A MAPPING OF NATURAL FORM TO THE FUNCTION IN HUMAN MAPPING OF NATURAL FORM TO THE FUNCTION IN HUMAN PURPOSE.”PURPOSE.”


““TECHNOLOGICAL INVENTION CONSISTS OF TECHNOLOGICAL INVENTION CONSISTS OF IMAGINING THE SELECTION OR CONSTRUCTION OF A IMAGINING THE SELECTION OR CONSTRUCTION OF A PARTICULAR PHYSICAL STRUCTURE AND THE PARTICULAR PHYSICAL STRUCTURE AND THE ARRANGING FOR THE SEQUENCES OF PHYSICAL ARRANGING FOR THE SEQUENCES OF PHYSICAL PROCESS IN THE STRUCTURE TO CORRELATE WITH PROCESS IN THE STRUCTURE TO CORRELATE WITH THE SEQUENCES OF A LOGIC SET OF OPERATIONS.”THE SEQUENCES OF A LOGIC SET OF OPERATIONS.”

““The secret of any technology is the invention of a The secret of any technology is the invention of a physical structure whose processes can be physical structure whose processes can be mapped in a one-to-one manner with a logical mapped in a one-to-one manner with a logical operation of a functional transformation.”operation of a functional transformation.”


THE PRODUCTS OF INVENTIONTHE PRODUCTS OF INVENTION

The products of technological invention characteristic- The products of technological invention characteristic- ally fulfill practical functions in contrast with the ally fulfill practical functions in contrast with the products of scientific research which typically opt for products of scientific research which typically opt for models of underlying fundamental processes.models of underlying fundamental processes.

The products of technological invention include not The products of technological invention include not only physical devices (e.g., only physical devices (e.g., fluorescent lampfluorescent lamp) but also ) but also processes (e.g., processes (e.g., float glass processfloat glass process), algorithms, ), algorithms, designed biological structures, business methods, etc.designed biological structures, business methods, etc.

The products of invention vary in their social impact, The products of invention vary in their social impact, their knowledge requirement, and their system level. their knowledge requirement, and their system level.

Stages in thetages in the Invention Process...1Invention Process...1

1. Finding an idea1. Finding an idea

● What can I invent?What can I invent?

● What problems are there to be solved?What problems are there to be solved?

How to Look for an ideaHow to Look for an idea

● BrainstormingBrainstorming

● Invention Idea SurveyInvention Idea Survey

2. Background research2. Background research

● Collect information, knowledge, facts, Collect information, knowledge, facts, feelings, opinions, and thoughts to sort feelings, opinions, and thoughts to sort out and clarify your idea more out and clarify your idea more specifically.specifically.

● What do you know about the situation, What do you know about the situation, and what do you still need to know?and what do you still need to know?

Stages in the Invention Process...2tages in the Invention Process...2

3. Problem Formulation3. Problem Formulation

● Formulate a "problem statement” that Formulate a "problem statement” that expresses the "heart" of the situation.expresses the "heart" of the situation.


4. Possible Solutions Finding4. Possible Solutions Finding

● Generate as many ideas or alternatives as possible for Generate as many ideas or alternatives as possible for dealing with your problem statement. dealing with your problem statement.

● Don't evaluate your ideas at this point, merely list them Don't evaluate your ideas at this point, merely list them as an idea pool from which you'll draw in putting together as an idea pool from which you'll draw in putting together a variety of solutions to your problema variety of solutions to your problem

● Tools for generating solutionsTools for generating solutions


5. Solution Finding5. Solution Finding

● Evaluate possible solutions systematically.Evaluate possible solutions systematically.

● Generate a variety of criteria and select the most Generate a variety of criteria and select the most important for your problem. important for your problem.

● Identify and evaluate the relative strengths and Identify and evaluate the relative strengths and weaknesses of possible solutions.weaknesses of possible solutions.

● Tools for evaluating solutionsTools for evaluating solutions

Stages in the Invention Process...5Stages in the Invention Process...5

6. Construction of Prototype

● Choose materials to be usedChoose materials to be used

● Purchase/Collect materialsPurchase/Collect materials

● Build your prototypeBuild your prototype


7. Test, Modify, and Evaluate Prototype7. Test, Modify, and Evaluate Prototype

● Test your prototypeTest your prototype

● Modify/Improve your prototypeModify/Improve your prototype

● Evaluate your inventionEvaluate your invention


INVENTION LOG OR NOTEBOOKINVENTION LOG OR NOTEBOOK

Keeping a Invention Log or Notebook is a very Keeping a Invention Log or Notebook is a very important part of the invention process.important part of the invention process.

Your Invention Log can help you keep track of Your Invention Log can help you keep track of all your ideas, and it will help you organize all all your ideas, and it will help you organize all of the steps required to complete the inven- of the steps required to complete the invention process. tion process.

Your Invention Log can help you prove that Your Invention Log can help you prove that you had the idea for this invention first.you had the idea for this invention first.

Invention DisclosureInvention Disclosure

Inventorship...1Inventorship...1

Who is the inventor? Inventorship is legally deter- Who is the inventor? Inventorship is legally determined. An inventor, according to the U.S. Patent and mined. An inventor, according to the U.S. Patent and Trademark Office, is anyone who conceives of the new Trademark Office, is anyone who conceives of the new ideas that are actually embodied in the claims of a ideas that are actually embodied in the claims of a patent application. patent application.

If a patent application, for instance, includes 10 claims, If a patent application, for instance, includes 10 claims, and you conceived of even one of those claims, you and you conceived of even one of those claims, you are considered an inventor of the entire invention, are considered an inventor of the entire invention, along with the other inventors. along with the other inventors.

Source: University of Pittsburgh GuideSource: University of Pittsburgh Guide

However, if that one claim is removed during the However, if that one claim is removed during the course of the patent reviewer’s evaluation of the course of the patent reviewer’s evaluation of the invention, you no longer will be considered an inventor invention, you no longer will be considered an inventor on that invention.on that invention.

In general, inventorship is based on your participation, In general, inventorship is based on your participation, contribution, and value to the invention, as perceived contribution, and value to the invention, as perceived by others. Keep in mind that inventorship does not by others. Keep in mind that inventorship does not work like authorship of scientific journal articles, work like authorship of scientific journal articles, which sometimes include all researchers who which sometimes include all researchers who conducted the work. conducted the work.



Establishing inventorshipEstablishing inventorship ― ― Once you determine that Once you determine that your idea is new, useful, and non-obvious, establishing your idea is new, useful, and non-obvious, establishing

inventorship still requires twoinventorship still requires two basic steps from a legal basic steps from a legal perspective, as determined by the U.S. Patent and perspective, as determined by the U.S. Patent and Trademark Office. Both must occur for an idea to be Trademark Office. Both must occur for an idea to be officially considered an invention.officially considered an invention.

1. 1. Conception:Conception: Conception is defined as a formulation Conception is defined as a formulation by the inventor of the complete means of solving by the inventor of the complete means of solving

a a problem in a way that allows a person of ordinary problem in a way that allows a person of ordinary skill “in the art” of that particular field to recreate skill “in the art” of that particular field to recreate

or or use your invention without extensive new use your invention without extensive new research research or experimentation.or experimentation.



Establishing inventorshipEstablishing inventorship ― (cont’d) ― (cont’d) By itself, though, By itself, though, conception isn’t considered an invention.conception isn’t considered an invention.

2. 2. Reduction to practice:Reduction to practice: To complete the legal defini- To complete the legal definition of invention, you have to follow through with tion of invention, you have to follow through with step step two—taking your idea and reducing it to prac- two—taking your idea and reducing it to practice. tice. In short, you must actually make your concept, In short, you must actually make your concept, test it, test it, and prove that it works. and prove that it works.

E.g., those who have conceived of time machines E.g., those who have conceived of time machines and theorized about how such machines might and theorized about how such machines might work. work. Many have achieved conception, Many have achieved conception, indeed.indeed.



2. 2. Reduction to practice:Reduction to practice:

But inventors have yet to reduce it to practice and But inventors have yet to reduce it to practice and prove that their machines could work. Thus, they prove that their machines could work. Thus, they have no invention.have no invention.

Reduction to practice can occur two ways: In an Reduction to practice can occur two ways: In an actual actual reduction to practicereduction to practice, you make the invention, test it, , you make the invention, test it, and then determine that it works for its intended pur- and then determine that it works for its intended purpose. In a pose. In a constructive reduction to practiceconstructive reduction to practice, you file a , you file a patent application that sufficiently describes the patent application that sufficiently describes the invention in a way that allows a person with a skillinvention in a way that allows a person with a skill

““in the art” to practice the invention.in the art” to practice the invention.



Sometimes, filing a patent application itself is consi- Sometimes, filing a patent application itself is considered the equivalent of a reduction to practice, but dered the equivalent of a reduction to practice, but fields such as biotechnology require an inventor to fields such as biotechnology require an inventor to demonstrate actual biological activity.demonstrate actual biological activity.

The Invention Disclosure The Invention Disclosure ― ― If a researcherIf a researcher finds that finds that s/he has s/he has developed an invention with commercial developed an invention with commercial potential, then, before publishing her/his data, pre- potential, then, before publishing her/his data, pre- senting it at a conference, or otherwise sharing her/his senting it at a conference, or otherwise sharing her/his ideas with outside parties, s/he should submit an in-ideas with outside parties, s/he should submit an in-vention disclosure to her/his research organization’s vention disclosure to her/his research organization’s Technology Transfer Office or TTO for consideration.Technology Transfer Office or TTO for consideration.



The Invention Disclosure Process...1The Invention Disclosure Process...1

An invention disclosure simply allows an inventor to An invention disclosure simply allows an inventor to share enough detailed information about her/his share enough detailed information about her/his invention with the TTO to allow TTO and an indepen- invention with the TTO to allow TTO and an indepen- dent committee of technology transfer officers and dent committee of technology transfer officers and researcher-peers, known as the Technology Transfer researcher-peers, known as the Technology Transfer Committee (TTC), to evaluate its commercial potential. Committee (TTC), to evaluate its commercial potential.

It also is the first step in the process of seeking patent It also is the first step in the process of seeking patent protection for the innovation. It should be kept in mind protection for the innovation. It should be kept in mind that the university or RDI claims ownership and that the university or RDI claims ownership and control of the worldwide patent rights that result from control of the worldwide patent rights that result from the research conducted by researchers — particularly the research conducted by researchers — particularly if government has funded the work wholly or in part. if government has funded the work wholly or in part.



The invention disclosure allows the University or RDI The invention disclosure allows the University or RDI to determine whether it wishes to retain such owner- to determine whether it wishes to retain such ownership and control to pursue technology transfer or to ship and control to pursue technology transfer or to release the invention back to the inventor. release the invention back to the inventor.

Once TTO receives the invention disclosure, the Once TTO receives the invention disclosure, the University or RDI is required to report the invention University or RDI is required to report the invention within a certain period to the government agency that within a certain period to the government agency that provided the research funding.provided the research funding.

The accomplished invention disclosure form or IDF The accomplished invention disclosure form or IDF should be submitted as early as possible. should be submitted as early as possible.



The invention disclosure form itself offers no patent The invention disclosure form itself offers no patent protection for your invention, but early submission will protection for your invention, but early submission will allow TTO to act quickly in filing a patent application.allow TTO to act quickly in filing a patent application.

The invention disclosure will alert TTO to expedite the The invention disclosure will alert TTO to expedite the filing of a patent application when appropriate to avoid filing of a patent application when appropriate to avoid any public disclosure of enabling information that any public disclosure of enabling information that hasn’t yet been patent-protected.hasn’t yet been patent-protected.

What to submit: details, please What to submit: details, please ― ― The information sub- The information submitted in the invention disclosure form will determine mitted in the invention disclosure form will determine whether the University should invest in the invention’s whether the University should invest in the invention’s commercial future. So the more details provided about commercial future. So the more details provided about both the technical and commercial merits the better. both the technical and commercial merits the better.



Invention Disclosure Form (IDF) is the cornerstone for Invention Disclosure Form (IDF) is the cornerstone for all invention-based activity all invention-based activity

One-page document signed by inventorsOne-page document signed by inventors

IDF subjected to three-stage reviewIDF subjected to three-stage review

-- Protectability Protectability

- - Efficacy/feasibility Efficacy/feasibility

-- Market assessment Market assessment

FUNCTION OF THE INVENTION DISCLOSURE FORMFUNCTION OF THE INVENTION DISCLOSURE FORM

The invention disclosure document represents the first The invention disclosure document represents the first official recording of the invention and, if done properly, official recording of the invention and, if done properly, can establish an irrefutable date and scope of the can establish an irrefutable date and scope of the invention.invention.

Often the disclosure document has been used to defeat Often the disclosure document has been used to defeat challenges to dates of invention, inventorship, challenges to dates of invention, inventorship, invention scope, and prior art.invention scope, and prior art.

Conversely, improperly written invention disclosures Conversely, improperly written invention disclosures many times have resulted in disastrous losses of patent many times have resulted in disastrous losses of patent rights.rights.

UP Diliman Invention Disclosure Form…1UP Diliman Invention Disclosure Form…1

1.1. TITLE OF INVENTION TITLE OF INVENTION

The title should describe what the invention does, but not The title should describe what the invention does, but not how it is made or how it works. how it is made or how it works.

2.2. SEARCH TERMS (up to 10) SEARCH TERMS (up to 10)

The OVCRD uses the Internet as a research tool when The OVCRD uses the Internet as a research tool when searching databases and markets. To make our searches searching databases and markets. To make our searches efficient, please provide a short list of words, common efficient, please provide a short list of words, common industry phrases, and/or categories directly related to your industry phrases, and/or categories directly related to your invention. invention.


3. BRIEF OVERVIEW OF THE INVENTIONBRIEF OVERVIEW OF THE INVENTION (3 - 4 para- (3 - 4 paragraphs)graphs)

a) Provide a short, general layperson’s description of Provide a short, general layperson’s description of the the invention and how it works. invention and how it works.

b) What is the purpose of the invention? For example, b) What is the purpose of the invention? For example, “What problem does it solve?”“What problem does it solve?”

c)c) Is it a new product, process, or composition of matter? Is it a new product, process, or composition of matter?

Or is it a new use for or improvement of an Or is it a new use for or improvement of an existing existing product, process or composition of product, process or composition of mattermatter

d)d) What benefits can the invention give? (Please use What benefits can the invention give? (Please use extra sheet/s if necessary.)extra sheet/s if necessary.)


4. TECHNICAL DESCRIPTION, DETAILS AND TECHNICAL DESCRIPTION, DETAILS AND SUPPORTING DATASUPPORTING DATA

Provide results, data or other evidence demonstrating how Provide results, data or other evidence demonstrating how the invention works. You may attach papers, pilot projects the invention works. You may attach papers, pilot projects or visual material, published or unpublished, in response to or visual material, published or unpublished, in response to this question. this question.

5. PRIOR METHODS, APPARATUS, AND DEVELOP-PRIOR METHODS, APPARATUS, AND DEVELOP-MENTS (1)MENTS (1)

a) Methods or apparatus in existence closest to your a) Methods or apparatus in existence closest to your invention and the problems of each that the present invention and the problems of each that the present invention solves. invention solves.


5. PRIOR METHODS, APPARATUS, AND DEVE- PRIOR METHODS, APPARATUS, AND DEVE- LOPMENTS (2)LOPMENTS (2)

b)b) Cite any of your own publications and patents, Cite any of your own publications and patents, and those of anyone else believed by you to and those of anyone else believed by you to disclose ideas most closely related to the disclose ideas most closely related to the invention. Please attach all relevant publications, invention. Please attach all relevant publications, patents, advertisements, etc, if available. Please patents, advertisements, etc, if available. Please consult with RDUO-OVCRD on how to do Prior consult with RDUO-OVCRD on how to do Prior Art Search. Art Search.


6.6. STAGE OF DEVELOPMENT (2-3 paragraphs)STAGE OF DEVELOPMENT (2-3 paragraphs)

Describe the development status (concept only, Describe the development status (concept only, laboratory tested, prototype, etc) and briefly indicate laboratory tested, prototype, etc) and briefly indicate what further development may be necessary to what further development may be necessary to commercialize it.commercialize it.

7.7. POTENTIAL LICENSEESPOTENTIAL LICENSEES

Identify companies or market sectors that you think Identify companies or market sectors that you think could benefit from your invention.could benefit from your invention.


8.8. PUBLICATIONS/PRESENTATIONS/OTHER FORMS OF PUBLICATIONS/PRESENTATIONS/OTHER FORMS OF PUBLIC COMMUNICATION (DISCLOSURE)PUBLIC COMMUNICATION (DISCLOSURE)

Please identify all past and future seminars, talks, Please identify all past and future seminars, talks, ab- stracts, publications, web postings, and other ab- stracts, publications, web postings, and other venues used to describe the invention. These may venues used to describe the invention. These may affect the scope of patent protection and the timing of affect the scope of patent protection and the timing of filing. Disclosure is the oral, written, or electronic filing. Disclosure is the oral, written, or electronic dissemination of the invention to a person outside dissemination of the invention to a person outside U.P. Dili- man that would enable someone working in U.P. Dili- man that would enable someone working in the field to practice the invention or repeat its the field to practice the invention or repeat its development. development. Note:Note: any communication with any communication with colleagues and students within the U.P. Diliman colleagues and students within the U.P. Diliman community does not count as disclosures.community does not count as disclosures.

9. DATES OF CONCEPTION AND REDUCTION TO 9. DATES OF CONCEPTION AND REDUCTION TO PRACTICE PRACTICE

These dates have to be documented to respond to any These dates have to be documented to respond to any challenges to the patent that may arise. challenges to the patent that may arise. ConceptionConception is is the formulation in the mind of the inventors of the ulti- the formulation in the mind of the inventors of the ultimate working invention. mate working invention. Reduction to practiceReduction to practice can be can be accomplished either “actually” or “constructively”. accomplished either “actually” or “constructively”. Actual reduction to practiceActual reduction to practice is the physical creation of is the physical creation of the invention. the invention. Constructive reduction to practiceConstructive reduction to practice is a is a detailed written description that demonstrates the in- detailed written description that demonstrates the invention will work as conceived. Describe the circum- vention will work as conceived. Describe the circum- stances and dates surrounding the development of stances and dates surrounding the development of your invention: (You may attach extra sheet, if your invention: (You may attach extra sheet, if needed). needed).


10.10. SPONSORSHIPSPONSORSHIP

Identify all grants, contracts, and other sources Identify all grants, contracts, and other sources of funds contributing to the research that led to of funds contributing to the research that led to the invention. You should list all agencies that the invention. You should list all agencies that you would acknowledge in a publication. The you would acknowledge in a publication. The OVCRD will check out the contractual reporting OVCRD will check out the contractual reporting obligations associated with your funding. obligations associated with your funding.


11. OTHER AGREEMENTS AND INTERACTIONS11. OTHER AGREEMENTS AND INTERACTIONS (1)(1)

Identify any agreements or interactions that you have Identify any agreements or interactions that you have entered into that are related to the invention and might entered into that are related to the invention and might grant rights to a company or other party outside of grant rights to a company or other party outside of the University (material transfer agreements, the University (material transfer agreements, commercially sponsored research agreements, con- commercially sponsored research agreements, con- sortia agreements, consulting agreements, etc.)sortia agreements, consulting agreements, etc.)

Did this invention use any materials which were Did this invention use any materials which were obtained from a company or another institution? NO obtained from a company or another institution? NO __ YES __ (Please provide details, and indicate if there __ YES __ (Please provide details, and indicate if there is a Materials Transfer Agreement.) is a Materials Transfer Agreement.)


12. INVENTORS12. INVENTORS

List all those who helped contribute to the con- List all those who helped contribute to the conception of the ultimate working invention. The ception of the ultimate working invention. The people you include ultimately may or may not be people you include ultimately may or may not be legal inventors. Please place an asterisk (*) next legal inventors. Please place an asterisk (*) next to the name of the inventor to whom correspon- to the name of the inventor to whom correspon- dence should be sent. If any person holds a sole dence should be sent. If any person holds a sole or joint appointment with any other university, or joint appointment with any other university, company or governmental agency, please note company or governmental agency, please note that fact. that fact.


Laboratory Notebooks as Invention Disclosures...1Laboratory Notebooks as Invention Disclosures...1

Laboratory notebooks are frequently relied upon to Laboratory notebooks are frequently relied upon to ascertain the actual date of invention and to identify ascertain the actual date of invention and to identify the inventor. the inventor.

Unfortunately, most lab notebooks are incomplete, ille- Unfortunately, most lab notebooks are incomplete, ille- gible, and not witnessed, or witnessed erratically—if gible, and not witnessed, or witnessed erratically—if they are kept at all. they are kept at all.

However, if kept appropriately, a laboratory notebook However, if kept appropriately, a laboratory notebook can easily suffice as an invention disclosure.can easily suffice as an invention disclosure.

Source: David McGee (2007)Source: David McGee (2007)


The information must at least include a detailed des- The information must at least include a detailed description of the invention and signed and dated pages cription of the invention and signed and dated pages by the inventor and appropriate witness(es). by the inventor and appropriate witness(es).

The actual discovery (that is, the invention) must be The actual discovery (that is, the invention) must be clearly explained.clearly explained.

IP professionals should educate scientists about the IP professionals should educate scientists about the need for complete disclosure if the notebook is to be need for complete disclosure if the notebook is to be useful at all.useful at all.



The scientists should also be trained to avoid writing The scientists should also be trained to avoid writing off-hand remarks in the notebook (e.g., “this was an off-hand remarks in the notebook (e.g., “this was an obvious experimental approach” or “I used an obvious obvious experimental approach” or “I used an obvious extension of Dr. X to conduct this research” or “there extension of Dr. X to conduct this research” or “there is a paper that is prior art to my research”).is a paper that is prior art to my research”).

Such notebook disclosures would be discoverable Such notebook disclosures would be discoverable during litigation and could result in loss of patent during litigation and could result in loss of patent rights. As always, scientists should be counseled to rights. As always, scientists should be counseled to completely disclose the invention and to provide only completely disclose the invention and to provide only absolutely truthful disclosure.absolutely truthful disclosure.


Evaluation of Inventions Evaluation of Inventions

The Invention Evaluation Process...1The Invention Evaluation Process...1

The inventions that will be considered here are early, The inventions that will be considered here are early, “university-stage inventions”“university-stage inventions” arising out of basic arising out of basic research, rather than development projects.research, rather than development projects.

Thus, most of these university-stage inventions will Thus, most of these university-stage inventions will require substantial investments in both money and require substantial investments in both money and time to develop them into marketable products.time to develop them into marketable products.

Such investments will usually be very risky since nei- Such investments will usually be very risky since nei- ther the technology’s technical feasibility nor its ther the technology’s technical feasibility nor its commercial viability will be known with any certainty.commercial viability will be known with any certainty.

Source: Lita Nelsen (2007)Source: Lita Nelsen (2007)

Technology transfer offices evaluate early-stage inven- Technology transfer offices evaluate early-stage inventions in order to make three decisions:tions in order to make three decisions:

1. whether or not to file a patent on the invention1. whether or not to file a patent on the invention

2. whether to market the invention to existing compa- 2. whether to market the invention to existing companies or try to do a spinoutnies or try to do a spinout

3. what to charge for the invention 3. what to charge for the invention

The Invention Evaluation Process...2The Invention Evaluation Process...2


These three decisions do not usually have to be made These three decisions do not usually have to be made at the same time. Of course, if the answer to the first at the same time. Of course, if the answer to the first question is no, then the other two questions are moot.question is no, then the other two questions are moot.

If money for filing patents is available but limited, the If money for filing patents is available but limited, the decision to file a patent should take into account an- decision to file a patent should take into account answers to the following questions:swers to the following questions:

1. Is this invention likely to get awarded a patent with 1. Is this invention likely to get awarded a patent with broad enough claims to protect a product or a broad enough claims to protect a product or a

prod- prod- uct line—not just a minor variation of an existing uct line—not just a minor variation of an existing technology?technology?


Whether or Not to File a Patent...1Whether or Not to File a Patent...1


The decision to file a patent should take into account The decision to file a patent should take into account answers to the following questions:answers to the following questions:

2. If patented, will this invention likely attract a licensee 2. If patented, will this invention likely attract a licensee or investment for commercialization that will or investment for commercialization that will

produce produce enough of a return to the institution to enough of a return to the institution to justify the justify the patenting expense?patenting expense?

3. Is patenting the right route to maximize social 3. Is patenting the right route to maximize social access access to the technology?to the technology?



The answer to the first question on patentability is The answer to the first question on patentability is fairly easy to determine with relative (though not fairly easy to determine with relative (though not absolute) certainty. If time allows, a search of the absolute) certainty. If time allows, a search of the literature that includes past and published pending literature that includes past and published pending patents will reveal prior art.patents will reveal prior art.

When possible, this search is best done by a pro-When possible, this search is best done by a pro-fessional search librarian working side-by-side with fessional search librarian working side-by-side with one of the inventors. one of the inventors.



If potentially important prior art is found, a patent agent If potentially important prior art is found, a patent agent may be called in to evaluate its significance and the may be called in to evaluate its significance and the likely claims to be achieved by patent filing. likely claims to be achieved by patent filing.

The prior art search may also turn up dominating pat- The prior art search may also turn up dominating patents that may have to be taken into account.ents that may have to be taken into account.

The second question — The second question — will the technology attract in- will the technology attract investment for commercialization if it is patentedvestment for commercialization if it is patented — is far — is far more difficult than the first to answer with any certainty. more difficult than the first to answer with any certainty. Market research studies take both time and labor. Market research studies take both time and labor.


If the technology transfer office receives many inven- If the technology transfer office receives many invention disclosures, there will not be enough resources to tion disclosures, there will not be enough resources to perform a market research study on every one. perform a market research study on every one.

In addition, there may not be enough time for such a In addition, there may not be enough time for such a study before publication (particularly in academic insti- study before publication (particularly in academic insti- tutions with a policy against delaying publication for tutions with a policy against delaying publication for patenting or other commercial reasons). patenting or other commercial reasons).

The requirement for confidentiality before patenting The requirement for confidentiality before patenting also limits the depth of any market research study.also limits the depth of any market research study.


On the Market for the Invention...1On the Market for the Invention...1

The more innovative the invention, the harder it is to The more innovative the invention, the harder it is to get good market feedback. Potential users of new get good market feedback. Potential users of new technology cannot easily judge the value of something technology cannot easily judge the value of something they have never thought about before. they have never thought about before.

Business histories are replete with gross underestima- Business histories are replete with gross underestima- tions of the potential of innovative products (e.g., tions of the potential of innovative products (e.g., photocopy machines and home computers). photocopy machines and home computers).

Innovative inventions from basic research in universi- Innovative inventions from basic research in universi- ties should expect to suffer similar challenges.ties should expect to suffer similar challenges.



So what is a technology transfer office to do? Below So what is a technology transfer office to do? Below are some questions to consider. They will be an- are some questions to consider. They will be an- swered, for the most part, throughswered, for the most part, through

● discussions with the inventors, discussions with the inventors,

● some library work perhaps, some library work perhaps,

● some discussions with potential users or investors some discussions with potential users or investors maybe, andmaybe, and

● the experience and judgment of the technology the experience and judgment of the technology transfer stafftransfer staff




It will be important to try to answer these ques- It will be important to try to answer these questions about what the market for the invention tions about what the market for the invention might be:might be:

●What need does this invention satisfy? Is What need does this invention satisfy? Is this a major, well-recognized need or a minor this a major, well-recognized need or a minor one?one?

●How is this need being met now? Or is it How is this need being met now? Or is it satisfied at all?satisfied at all?



What the market for the invention might be: (2)What the market for the invention might be: (2)

●What size is the market? Huge, large, small, What size is the market? Huge, large, small, miniscule? miniscule?

● Is the market already established, or will it Is the market already established, or will it need developing?• Is this a growing field or need developing?• Is this a growing field or a dying one?a dying one?


On the Nature of the Technology...1On the Nature of the Technology...1

The institution will need answers to these The institution will need answers to these questions about the new and existing techno- questions about the new and existing technology and how to develop the invention: (1)logy and how to develop the invention: (1)

●How would this technology change how the How would this technology change how the market presently addresses the need? market presently addresses the need?

● Is the new technology not only different from Is the new technology not only different from what is already available, but better? If what is already available, but better? If better, what are the major benefits it offers? better, what are the major benefits it offers?


On the Nature of the Technology...2On the Nature of the Technology...2

Questions about the new and existing techno- Questions about the new and existing technology and how to develop the invention: (2)logy and how to develop the invention: (2)

●How certain is it that the technology will How certain is it that the technology will work? Can this be demonstrated to a work? Can this be demonstrated to a potential licensee or investor? potential licensee or investor?

●How long and how much money will it take How long and how much money will it take to develop the invention into a commercial to develop the invention into a commercial product?product?


The Role of the Inventor in Technology TransferThe Role of the Inventor in Technology Transfer

► Prepare and Submit Invention DisclosurePrepare and Submit Invention Disclosure

► Help Identify Potential LicenseesHelp Identify Potential Licensees

► Assist in Developing Marketing MaterialsAssist in Developing Marketing Materials

► Participate in Patent Preparation and Prosecution Participate in Patent Preparation and Prosecution (sporadic but long-term)(sporadic but long-term)

► Present to Potential Licensees/Developers Present to Potential Licensees/Developers

► Be available for continued support post-transactionBe available for continued support post-transaction

Questions about the Inventor...1Questions about the Inventor...1

Inventor participation in the development of university-Inventor participation in the development of university-stage technology is usually critical. The inventor is stage technology is usually critical. The inventor is most familiar with the technology and is most likely to most familiar with the technology and is most likely to have a vision for its use. have a vision for its use.

Some inventors (particularly students or research Some inventors (particularly students or research associates) may wish to leave the research institution associates) may wish to leave the research institution and join (or help form) a company. and join (or help form) a company.

Most professors or senior researchers, however, will Most professors or senior researchers, however, will probably choose to stay at the research institution, al- probably choose to stay at the research institution, al- though they may consult or work part time for the though they may consult or work part time for the company developing the invention.company developing the invention.



On the other hand, if the inventor has no interest in On the other hand, if the inventor has no interest in seeing the technology developed and will not help to seeing the technology developed and will not help to market the patent, these tasks can be hopeless.market the patent, these tasks can be hopeless.

The following questions should be considered to de- The following questions should be considered to de- cide how effective the inventor might be in finding a cide how effective the inventor might be in finding a licensee or investor for the technology: (1)licensee or investor for the technology: (1)

● Is the invention in the inventor’s major field of Is the invention in the inventor’s major field of research? If not, is he or she at all familiar with the research? If not, is he or she at all familiar with the market’s needs for the invention? market’s needs for the invention?



Questions on how effective the inventor might be in Questions on how effective the inventor might be in finding a licensee or investor for the technology. (2)finding a licensee or investor for the technology. (2)

● Does the inventor have business connections in the Does the inventor have business connections in the field of the invention? Is the inventor famous? (It’s a field of the invention? Is the inventor famous? (It’s a lot easier to market a patent with a Nobel Laureate’s lot easier to market a patent with a Nobel Laureate’s name!)name!)

● Will the inventor be cooperative in meeting with Will the inventor be cooperative in meeting with potential licensees or investors to share his or her potential licensees or investors to share his or her vision of the invention’s potential and the means of vision of the invention’s potential and the means of developing it?developing it?



Questions on how effective the inventor might be in Questions on how effective the inventor might be in finding a licensee or investor for the technology. (3)finding a licensee or investor for the technology. (3)

● Does the inventor have realistic expectations about Does the inventor have realistic expectations about the magnitude and uncertainty of the development the magnitude and uncertainty of the development task and the potential financial returns?task and the potential financial returns?

● Can relationships with investors or companies Can relationships with investors or companies proceed reasonably or is the inventor too naïve or proceed reasonably or is the inventor too naïve or overly paranoid? overly paranoid?


INVENTIONINVENTION PREDISCLOSUREPREDISCLOSURE INVENTION INVENTION DISCLOSUREDISCLOSURE

RECEIPT BY OFFICE OF RECEIPT BY OFFICE OF TECHNOLOGY TRANSFERTECHNOLOGY TRANSFER

REVIEW BY TT REVIEW BY TT COMMITTEECOMMITTEE

ASSESSMENT BY OTT OF ASSESSMENT BY OTT OF PATENTABILITY & PATENTABILITY &

COMMERCIALIZABILITYCOMMERCIALIZABILITY

TECH APPRAISAL BY TECH APPRAISAL BY AD HOC PANEL OF AD HOC PANEL OF

REVIEWERSREVIEWERS

DECISION OF DECISION OF TT COMMITTEETT COMMITTEE

RELEASE TO RELEASE TO INVENTOR FOR INVENTOR FOR

PUBLICATION OR PUBLICATION OR WORKSHOPWORKSHOP

RELEASE FOR RELEASE FOR DISSEMINATION DISSEMINATION OR EXTENSION OR EXTENSION

SERVICESERVICE

HOLD FOR HOLD FOR FURTHER FURTHER

EVALUATIONEVALUATION

PURSUE PURSUE PATENTINGPATENTING

TEST THE TEST THE MARKETMARKET

The Process of Appraising a University/Government InventionThe Process of Appraising a University/Government Invention

By the way,By the way,

WHO REALLY INVENTED

THE FLUORESCENT LAMP?

WAS IT A FILIPINO BY THE NAME OF AGAPITO FLORES?

WAS IT REALLY A FILIPINO, AGAPITO FLORES, WAS IT REALLY A FILIPINO, AGAPITO FLORES, WHO INVENTED THE FLUORESCENT LAMP? WHO INVENTED THE FLUORESCENT LAMP?

The invention of the fluorescent lamp is credited to the

following inventors:

The American inventor, Peter Cooper HewittPeter Cooper Hewitt (1861- 1921), who obtained a patent (US Patent 889,692) in 1901 for the first mercury vapor lamp – now acknowledged to be the very first prototype of the modern fluorescent lamp.

The German inventors (Edmund Germer, Friedrich Meyer, Edmund Germer, Friedrich Meyer, and Hans Spannerand Hans Spanner) who got a German patent in 1927 for a “low-voltage metal vapor lamp” but did not pursue its commercialization.

The American chemist, The American chemist, George InmanGeorge Inman, who led a team , who led a team of GE scientists and engineers that succeeded in of GE scientists and engineers that succeeded in designing the first practical and viable fluorescent lamp designing the first practical and viable fluorescent lamp in 1934 and who was awarded a patent for it in 1941 (in 1934 and who was awarded a patent for it in 1941 (US US Patent No. 2,259,040Patent No. 2,259,040). This modern fluorescent lamp ). This modern fluorescent lamp was commercialized by GE and first sold in 1938.was commercialized by GE and first sold in 1938.

There is no patent record or documentation, in the There is no patent record or documentation, in the Philippines or abroad, of an Philippines or abroad, of an Agapito FloresAgapito Flores inventing inventing the fluorescent lamp.the fluorescent lamp.

And it is not true that the word “And it is not true that the word “fluorescentfluorescent” is derived ” is derived from from FloresFlores..

WAS IT REALLY A FILIPINO, AGAPITO FLORES, WAS IT REALLY A FILIPINO, AGAPITO FLORES, WHO INVENTED THE FLUORESCENT LAMP? WHO INVENTED THE FLUORESCENT LAMP?

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