Education

What is a patent?

According to the United States Patent and Trademark Office, the right conferred by the patent grant is “the right to exclude others from making, using, offering for sale, or selling” an invention in the United States or “importing” the invention into the United States. The United States Patent and Trademark Office (USPTO) grant three different types of patents: Utility Patents, Design Patents, and Plant Patents. The most common patent granted to Harvard is a Utility Patent, which is defined as any new and useful process, machine, article of manufacture, composition of matter, or any new and useful improvement thereof. For example, a new drug for the treatment of cancer would be a considered a composition of matter and therefore filed as a utility patent.

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How does the conception of an invention relate to patents?

For patent purposes, inventions are made in two stages:

  1. "Conception," which is the intellectual act of creating a complete inventive concept, including ideas for making the invention and methods of using it.
  2. "Reduction to practice" of the inventive concept. This is defined either as "constructive" reduction to practice (patent application), even though physical embodiment of the invention may not have been realized, or "actual" reduction to practice which involves making a physical embodiment of an invention (for example, a prototype), and using it successfully for its intended purpose.

For example, a scientist might claim to have invented a novel surgical instrument or a new environmental monitor and a patent application could be filed on the invention even though the device had never actually been built. In this example, the conception would be the intellectual concept of the instrument and its use for medical or environmental applications. The reduction to practice would be a constructive reduction to practice achieved by the filing of a patent application describing the instrument and its intended use. (If the invention had been built and used, actual reduction to practice would have been achieved.)

For chemical and bio-pharmaceutical products, however, it is usually not possible to obtain patent protection unless at least one example of the product has actually been made. If the invention claimed is broad enough to cover a class of products, it will be necessary to have made a representative number of the products of that class. In general, it has not been necessary to have proof of the product's usefulness if the claim of usefulness is plausible.

In order to obtain a patent, all inventors, through their patent attorneys, ultimately have to convince the U.S. Patent and Trademark Office (USPTO), and its foreign counterparts, that their invention meets the requirements of patent law.

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Why protect your invention?

It has been said that patents are the instruments of partnership between science and the economy. Obviously, a for-profit company's decision to license university technology is purely a business decision; thus, a strong economic incentive must be present. In many cases, patents can provide that incentive. Patents give Harvard, to which you will have assigned your invention, the right to "exclude others from practicing the invention" for a period of 20 years from the patent application's filing date.

Twenty years may seem a long time to have a monopoly, but long after you have demonstrated that your invention works, hundreds of thousands of dollars in product testing and development, production engineering and marketing still may be required before a product will be available to the public. A period of exclusivity presents a barrier to entry to other companies, allowing the firm that developed the invention sufficient time to recoup its investment.

The broad protection provided by patents is quite effective for most concepts and ideas, but may not be possible or suitable for all "inventions." Copyright or trademark protection may be a better choice for many. In fact, some inventions may not require any formal protection, but may be licensed as a tangible research material - for example, biological materials.

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Is your idea patentable?

For an idea to be patentable, it must consist of statutory subject matter. United States patent law permits the granting of a patent on the following statutory subject matter:

  •     A process, such as a method of applying a vapor barrier for silicon materials.
  •     A machine, such as a new instrument to deposit uniform layers of metallic compounds.
  •     An article of manufacture, such as an assay kit for an infectious disease or class of diseases.
  •     A composition of matter, such as a new molecule (characterized by amino acid sequence or base-pairs) or a new chemical compound.
  •     New and useful improvements of the above.
  •     Any distinct and new variety of plant which is asexually reproduced.
  •     Any new, original, and ornamental design for an article of manufacture.

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What about the patentability of biological materials?

Although it is clear that patents may be obtained on novel biological materials, there are a number of reasons why seeking to patent such a material may not be desirable or necessary. For example, while an individual cell line may be valuable, the United States Patent and Trademark Office (USPTO), however, often will not award patent claims broad enough to cover alternative cell lines with similar properties, and thus the patent obtained has limited value in a commercial sense. At the same time, a transgenic animal or a hybridoma that produces an especially useful antibody may be so difficult or labor-intensive to re-create and validate, that a company will prefer to license the original published material, even if it has not been patented, thereby saving expensive development time.

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Am I an inventor on a patentable invention?

In broad terms, an inventor is one who has made a substantial intellectual contribution to an invention. The OTD does not grant patents nor decide inventorship of patentable inventions but does evaluate patentable opportunities and work with outside counsel in filing and prosecuting patents. A patent examiner at the USPTO determines the patentability of inventions and is responsible for granting patents. Inventorship is determined by a patent attorney according to United States patent law.

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Why is it important to be mindful of public disclosure when filing for a patent?

To ensure eligibility for U.S. patent rights covering your work, a patent application must be filed within one year of publication. To maintain patent rights in the rest of the world, a patent application must be filed prior to publication. Therefore, if you are interested in developing your new inventions commercially, please contact OTD immediately if and when you are about to disclose new ideas or research results through the following: 1) submission of a pre-publication manuscript, 2) submission of a meeting abstract, 3) any kind of seminar (large or small) or other presentation.

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Are patents pursued for all inventions?

At times, OTD may conclude that the cost of pursuing a patent application is not justified. OTD may also decide not to pursue patenting when there is extensive prior art, the resulting patent protection would be narrow, enforcement of the patent would difficult, or the relevant industry is unlikely to be receptive to licensing. In those cases, rights to sponsored inventions are handled according to the provisions of the sponsored agreement (e.g., for government sponsored inventions, rights are returned to the government). Alternatively, if the inventor is interested in developing and commercializing the technology, OTD may consider releasing the invention to the inventors or to license the invention to an inventor or inventors on reasonable terms and conditions.

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Who decides whether to file a patent application?

Generally, the Director of Business Development is responsible for filing a patent on an invention, working in coordination with OTD’s Director of Intellectual Property.

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Do OTD use inside or outside patent counsel?

OTD retains outside patent counsel to prepare and prosecute patent applications. However, outside patent counsel are closely managed and supervised by OTD’s Director of Intellectual Property and the relevant Director of Business Development, who ensure that the work product is of high quality.

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Does OTD file foreign patents?

Yes, when appropriate, at the discretion of the Director of Business Development and the Director of Intellectual Property.

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