Brandeis Innovation

• A patent is a monopoly, granted by the government, allowing you to exclude others from making, using, selling or importing your invention for 20 years.
• Patents are limited by territory. A U.S. patent only protects your invention in the United States, a French patent in France, and so on; inventors often need to patent their inventions in multiple locations for effective patent protection.
• Every country has its own patent laws and pattern of patent enforcement.
• Patent law came about because the government wanted to encourage dissemination of information, and did so by granting limited-term monopolies to inventors in exchange for the sharing of information.
• Patent law is part of the U.S. Constitution.

There are three types of patents granted in the US: utility, design and plant. They apply to different types of inventions, as follows: 

Utility Patent: A utility patent applies covers physical products or processes for creating or doing something. Utility patents can be for a:

• Machine — such as a robot, motor, or circuit

• Process — such as a method of manufacturing

• Article of manufacture — such as a frying pan or hair comb

• Composition of matter — such as a newly-developed chemical compound

Design Patent: A design patent covers the appearance, ornamental or industrial design of a functional product. Examples include:

• A specific color and shape for a cellphone or handbag

• The specific arrangement of buttons on a device, when they are special for esthetic and not functional reasons

Plant Patent: A plant patent covers any new and distinct variety of plant. They can be hybrid plants or genetically modifed organisms. 

The U.S. Patent Office has strict guidelines on what can be patented. Not every new idea can be patented. However, it's always worth contacting us at OTL to see if you have an idea that is eligible for a patent.

The requirements for a patentable idea are that it has to be:

• Novel (that is, no one, even yourself, has published it before).
• Non-obvious (that is, to someone skilled in your field).
• Useful (you must have a use for your invention).

Whether something is patentable or not is a complex issue. Please contact us to discuss, with one of our experts, any new discoveries.

It can take many years to get a patent granted from the patent office. Here is a brief description of the process in the United States:

• First, your patent application is prepared and filed. We will work with you and file for you.
• At that stage, your invention becomes Patent Pending. While this does not offer legal protection yet, it's important to note, on any invention, that it's Patent Pending, thus alerting stakeholders that we have applied for patent protection.
• The U.S. Patent Office will respond to the application with whether your invention is eligible, in what is know as an "office action." This response will typically include limitations on the patent, including industries and uses.
• We then reply to the Patent Office.
• This process is iterative, and we will typically have several cycles before the full extent of the patent is established.
• The patent application is then published. This normally takes place 18 months after the initial filing.
• The patent is then "allowed," which means that the U.S. Patent Office examiner has found that it meets all eligibility requirements.
• The patent is then issued, and full legal protection for the invention begins.
• Finally, the patent is printed.

Inventorship is decided according to patent law. To be an inventor, you must make a novel, useful and non-obvious contribution to at least one claim of the patent. Sharing materials or testing an invention is not sufficient to make someone an inventor.

Correct inventorship is important. Incorrect inventorship can lead to invalidation of a patent. The Office of Technology Licensing can help you figure out who is, and who is not, an inventor.

In most of the world, all patent rights will be lost if an invention is published before a patent application is filed. In the United States, you can file a patent up to one year after a public disclosure.

A public disclosure is a disclosure of enough of an invention, that someone knowledgeable in the field, can re-create the whole invention. This is called an "enabling" invention. Disclosure can include a journal publication, a Web publication and may include abstracts, posters and public talks. Federal grants are not considered public disclosure until they are funded, at which point the may become publicly available. Be aware of early web publication of journal articles and conference abstracts.

You can discuss and present your matter to others at your institution, although they should be aware of the imperative not to broadcast information on your matter.

Avoid discussing, publishing and/or presenting your matter in any significant detail with personnel outside of your home institution or media (journals, external presentations, websites, dissertations, etc.) before it is protected, unless the communication is formally covered by a confidentiality agreement. In the case of a PhD dissertation, it is possible to write, defend and submit the completed dissertation, but place a hold on its public release until a patent application (or an application for some other form of protection) is submitted. Confidentiality agreements provide a useful mechanism to enable in-depth discussion with folks outside of your home institution. Your IP office should have a template.

Just because you have discussed your matter with someone outside of your home institution does not necessarily mean that you cannot file a disclosure. In many cases, the level of such discussion will not rise to the level of an "enabling disclosure." However, discussions that provide key details that would allow someone to replicate your work could be a big problem.

A confidentiality or nondisclosure agreement is an agreement in which two parties agree to keep certain information "confidential" and not to disclose it to third parties. If you wish to speak to a company about your invention prior to filing a patent, we recommend doing so under a confidentiality or nondisclosure agreement to preserve the university's right to file a patent. The Office of Technology Licensing can provide sample agreements or negotiate the agreements with companies.

The cost of disclosure and subsequent applications and legal fees for IP is typically covered by Brandeis through OTL.  

As the inventor of the protected matter, you are entitled by Brandeis’ IP policy to receive a significant fraction of any income generated by the licensed use, sale, or any other transaction involving your matter. 

The cost of patenting an invention depends on a range of factors: 

• To file a U.S. patent application: about $10,000
• To complete the process, what is called to "prosecute to issuance" in the United States: about $20,000
• To file a foreign (PCT) application: about $5,000
• For life of foreign patents (in Europe, Canada and Japan): about $200,000

A copyright is a form of legal protection, separate from a patent, that protects original works, fixed in a tangible medium, such as:

• Written words
• Computer code
• Mask works
• Design schematics
• Architectural drawings
• Musical works
• Choreography

Copyright gives owners the exclusive right to:

• It's important to remember that copyright protects expression of ideas, not ideas themselves.
• Reproduce the copyrighted works
• Create derivatives works, such as a play based on a novel
• Distribute the works (such make copies, online or in a tangible medium, and/or sell the items)
• Perform the works, in the case of choreography or music
• Display the items

Copyright lasts for 100 years from creation or 75 years from publication. Protection is automatic, but you must register to sue infringers.

A trademark is a symbol, design, word, slogan, combination of words and pictures used to identify products and distinguish them from those of competitors (e.g., Coca-Cola slogan is words, design and colors).

• To ensure legal protection, you must actively protect it.
• A trademark must be different than generic product (e.g., Rollerblades vs. in-line skates).

• U.S. Patent and Trademark Office
• Association of University Technology Managers

Document the conceptualization and development of your "matter" in writing (as in a lab notebook) or some other medium.

As soon as your matter is developed in conceptual detail and/or actually fleshed out in tangible form ("reduced to practice"), file a disclosure with us at OTL. Disclosures can be filed for patentable innovations including chemical matter, software/ apps, content (written document, music, video, etc.), and biological materials.

OTL will work with you to determine if a patent application, copyright application, or another form of protection is appropriate. If so, OTL will work with you to prepare and submit such applications through external attorneys. There is no expense to you for filing such applications.

Once a patent application has been filed, it is OK to present your work in any form.

The time period between disclosure and a completed patent application is often short (a few weeks) and can be often expedited. However, do note that one possible outcome of disclosure is that your matter may be deemed promising, but that a patent application can be submitted only after you collect additional "reduce to practice" results, which could take considerable additional time.

It is OK if your matter is directly related to research being undertaken with the support of existing or proposed federal grants, at least in the United States. It is the grantee institution's responsibility to facilitate the commercial development of innovations stemming from federally supported research (Bayh-Dole Act), and your IP and grants offices should be well-prepared to assist you with disclosures to funding agencies as a standard component of grants reporting. Federal statutes require universities to protect, commercialize and report any inventions made using government funding.

At least here in the U.S., the government does not have a claim to a share of revenue but does have a claim to a free license to the invention for government purposes alone.OTL manages the legally required reporting/communications with the appropriate government agencies on your behalf.

Please contact OTL. The office supports inventors in new ventures and provides logistical support. The startup has to work out a license for any intellectual property rights with Brandeis.

OTL can help with company formation, and help identify potential investors, executives and advisors that can help your company launch and grow.