A patent is a 20-year monopoly that allows the patent owner to prevent others from making, using, or selling the patented invention without permission. In return for the monopoly, the inventor must make known the details of the invention so that others can seek improvements or new uses. The inventor gains by exclusive access to the invention, and society gains by using the detailed description of the invention to further advance technology.1
An inventor is the one who first conceives of an invention, in detail, and with enough specificity that one skilled in the field could construct and practice the invention. Those who translate the concept into practice are not considered co-inventors unless they add to the original concept of the invention. With the agreement of the inventor(s), however, they may share in financial benefits of the invention.2
Inventions include new processes, products, apparatus, compositions of matter, living organisms, and/or improvements to existing technology in those categories. Abstract ideas, principles, and phenomena of nature cannot be patented.
Process: A method of producing a useful result; it can be an improvement on existing systems, a combination of old systems in a novel manner, or a new use of a known process.
Machine: An apparatus from a simple device to a complicated combination of many parts that performs a function and produces a definite result or effect.
Manufactured product: An article that is produced and has a usefulness.
Compositions of matter: Chemical compounds, and mixtures such as drugs and, more recently, living matter.
In the United States, patentability is determined by novelty, utility, and nonobviousness.
- Novelty: An invention is "novel" if nothing identical previously existed. How does your invention differ from what already exists? In what ways might it not be unique?
- Utility: An invention is useful if it produces an effect, if the effect is the one claimed, and if the effect is desirable to society, at least in principle. Who might find your invention useful, and why? What companies might be interested in making or selling it, and why? Is there other technology that currently provides similar utility? If so, what is the unique advantage of your invention?
- Nonobviousness: Nonobviousness measures the degree to which an invention differs from the totality of previous knowledge, and the degree to which an invention could not have been anticipated from that knowledge. At the time it was conceived, why might your invention not have been obvious to people reasonably skilled in the field? Are there ways in which it might be an evolutionary step? What is the difference between the proposed invention and what has previously existed?
Publishing and applying for patent protection are not mutually exclusive: they can be done simultaneously under the proper circumstances. U.S. patent laws allow one to apply for a patent no later than one year after a public disclosure, such as a published paper, a widely available abstract, or an offer of public sale. However, the moment a public disclosure or publication is made, rights to foreign patents are lost unless a U.S. filing has been made within the preceding 12 months. Foreign protection is important to many international licensees, so inventors are urged to use discretion, take advantage of Confidential Disclosure Agreements available from CU Innovations, and file invention disclosures with the university well in advance of presentations or publications.5
Sponsoring agencies sometimes require the university to disclose inventions that arise from work they fund. If the research that led to your invention was sponsored, give details and a reference to the contract or grant agreement in the Invention Disclosure Form.
The U.S. grants patents to those first to conceptualize an invention and diligently reduce it to practice—therefore, the date the full conception of the invention occurred, the date the idea was put into practice, and diligence in translating concept to practice are key items to document. Inventors can document their research process from conception to reduction to practice by keeping journals written in ink in bound notebooks, each page dated and signed, with witnessed signatures. Notebook witnesses must be able to testify that they understood what the invention was and how it operated and that what you wrote in your journal was actually witnessed on the date entered. If additional materials are pasted in, a written reference should be made to them at the time of entry.7