Patenting

An invention must meet certain qualifications before it is considered eligible for a patent under US Patent Law. Inventor involvement is important to the entire patent and licensing process. Inventor expertise is especially helpful during the evaluation for patentability, in the patent application process, in identifying licensing prospects and in meeting with companies who might be potential investors. Inventors usually provide technical evaluation of previous patents and publications in their field, supply information to our patent attorney and review draft applications and responses to government actions and discuss technical aspects with interested companies. Inventors are kept informed of the evaluation process and any actions taken. Their input is essential in the decision making process regarding the University’s protection and licensing of the invention/innovation. However, the final decision rests with the OTT. The disclosure evaluation process may take several months or longer depending on the complexity of the invention and the target industry.

An invention must be novel, unobvious and have utility to be patentable. The novelty prerequisite stipulates that your invention must be different from what is already known or made available to the public. The unobvious condition requires that your invention must be unknown to a person skilled in the same area of technology at the time the invention was created. The only instance where a product can be granted a patent without utility is if it is receiving a design patent.

To determine if your product qualifies for a patent, OTT will conduct a Prior Art (Patent and Publication) search.

OTT will notify the inventor in writing whether UNCG will accept the invention for patenting, licensing and/or commercialization. If OTT decides to pursue commercialization of the invention, OTT will continue to work with the inventor to develop a commercialization plan for the invention. It is essential that the inventor read UNCG’s Patent and Invention Policy which can be found on the Office of Technology Transfer’s website: http://www.uncg.edu/ott/policies.html. As defined by the UNC policy, all inventions of UNCG employees and students that are conceived or reduced to practice as part of or as a result of UNCG research or other activities within the scope of the inventor’s employment and/or matriculation at UNCG or activities involving the use of UNCG time, facilities, staff, materials, UNCG information unavailable to the public domain or funds administered by UNCG are considered property of the university. Therefore, it is the responsibility of faculty, staff and students to disclose such inventions to the Office of Technology Transfer for review.

Inventions conceived by UNCG employees and students on their own time and without UNCG facilities, materials or resources are considered as their exclusive property and not under the ownership of the University. These individuals may avail themselves of the opportunity to submit the invention to UNCG for possible patenting and/or commercial exploitation.

If the University decides not to pursue patenting and/or commercialization of your invention disclosed by a UNCG inventor, the inventor may petition the UNCG Patent and Commercialization Committee, in writing, to release the rights of the invention to the inventor. In cases where the invention is the result of federally funded sponsored research, there may be a requirement to waive ownership rights to the sponsor. The inventor can request the university or sponsor for rights to pursue commercialization of the invention. As a condition of releasing ownership rights of the invention, UNCG shall be entitled to ten percent (10%) of all future revenues or other monetary or financial considerations resulting from the invention.

OTT will prosecute the patent application using outside intellectual property firms. UNCG will contract with outside persons or organizations for the obtaining, managing and defending of patents to ensure the claims of the invention are fully protected under US Patent Law. After filing a provisional patent application the technology is actively marketed to the private sector in an attempt to identify a patent sponsor and potential licensee. After a patent is issued, (typically 1-3 years) the University’s protection lasts for 20 years. It may take five years or longer for commercial sales to begin, depending on the amount of work necessary to develop and market a product based on an invention. It is not unusual for eight years to pass from the time an invention/innovation is disclosed to begin receiving significant royalties on sales.

Commercialization

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