Patents 101: What inventors need to know
UC licensing associate explains steps for turning innovations into impact
In the world of academia, innovation is often celebrated for its potential to reshape industries and improve lives.
Jill Uhl, JD, senior licensing associate, works behind the scenes on groundbreaking inventions emerging from UC faculty and staff. A UC College of Law graduate specializing in intellectual property law and patents, she helps inventors navigate the intricate world of patents, ensuring that their original ideas are protected and find their way to the marketplace.
"Inventions do us no good if they are kept on a shelf, out of sight,” Uhl said.
She explains what patents are and why it’s important to file for patent protection before marketing it to potential licensees.
What is a patent?
A patent is a federal right granted by the United States government and is limited to the U.S. only. While patents help protect commercial interests, Uhl said they are much more than that.
"Patents give you a limited monopoly for a set period of years (20) in exchange for full disclosure surrounding anything known about your invention. The system is based on this exchange of information so the rest of the scientific community can build upon it to help others," Uhl said.
In other words, patents are not just a means to make a profit but rather a way to advance scientific discovery by ensuring that new ideas are available for others to build upon.
Uhl said an idea, medicine or technology can benefit the public through this informational exchange. Through patents, inventors are required to disclose valuable inventions to society while protecting their idea. Otherwise, individuals might keep it secret.
What are the steps in filing for patent protection?
If you’re a UC faculty or staff member, the first step is to disclose your innovation to UC’s Tech Transfer office.
Then, staff will work alongside you on developing a plan for IP protection and commercialization. That includes the prosecution phase, which Uhl said can take many years. Prosecution involves obtaining U.S. patent protection through government collaboration, including:
- Drafting and filing a patent application
- Responding to actions or claims
- Creating and submitting images that show the specifications of the design or invention
- Convincing patent examiners in the U.S. Patent Office that an invention is eligible for patent protection
The end goal of these efforts is for either 1.) a company to license the IP, or 2.) the inventor(s) to form a startup company that can license the IP from the university.
How patents attract investors
Patenting valuable inventions like machines or methods attracts investors seeking to license and commercialize them. After filing a patent application, the technology transfer office markets it to potential licensees by adding the IP to UC’s Technology Database, highlighting technologies in a quarterly bulletin and contacting companies that may be interested in the technology.
Licensing doesn't entail relinquishing ownership but instead involves a contractual agreement between the patent owner and a third party (licensee) granting the licensee the right to make, use or sell the specified invention.
Why it’s important to file for patent protection before the marketing phase
Uhl uses the example of a cancer treatment. Patenting is the initial step for new developments or drugs to attract company investment to develop the invention into a commercial product. Sharing scientific innovations fosters progress, which encourages additional innovation, which is the quid pro quo upon which our patent system is based. Patent protection incentivizes idea sharing through temporary monopolies, with full invention disclosure in public applications.
Featured image at top: Jill Uhl. Photo provided
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