Protecting Your IP – FAQs

What is Intellectual Property?

Intellectual Property (IP) is an intangible asset that is a creation of the mind. IP results from a person’s creative efforts, including artistic ingeniousness or inventiveness.

What is a patentable invention?

Inventions include new processes, products, apparatus, articles of manufacture, compositions of matter, living organisms, or improvements to existing technology in those categories. A process is a method of producing a useful result. A process can be an improvement to an existing system, a combination of old systems in a novel manner, or a new use of a known process. A machine is an apparatus that performs a function and produces a definite result or effect. It can range from a simple device to a complicated combination of many parts. Compositions of matter include chemical compounds, mixtures such as drugs and, more recently, living matter. Abstract ideas, principles and phenomena of nature cannot be patented.

Who is considered an inventor?

The inventor(s) 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 perform the actual experiments to translate the concept into practice are not considered co-inventors unless they add to the original concept of the invention.

Why is The Feinstein Institute interested in technology transfer?

A primary mission objective of The Feinstein Institute is to rapidly and effectively translate discoveries made within the Health System into new diagnostic and therapeutic solutions. The Feinstein Institute, as owner of technologies (in the form of patentable inventions, copyrights or tangible materials) developed by its investigators, can license these technologies to companies that know how to turn them into commercial products or services. In the ideal case, developing new diagnostic and therapeutic solutions can improve health and quality of life for many. It can also provide additional revenue to the inventor and The Feinstein Institute through licensing fees.

What is a patent?

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. It is impossible to give a precise definition of what constitutes a patentable invention, since the answer depends upon many factors and, in the last analysis, is a unique decision made by the U.S. Patent and Trademark Office. In general, under the Patent Policy, The Feinstein Institute employees should disclose ideas they may have for any new apparatus, systems, methods or processes, and compositions of matter to the Director of Technology Transfer. It is one of the functions of the Office of Technology Transfer, with the assistance of Patent Counsel, to determine whether or not a disclosure appears to contain patentable subject matter.

What are the criteria for a patent?

In the United States, patent-ability is determined by novelty, utility and non-obviousness:

  • Novel: The invention must be demonstrably different from publicly available ideas, inventions, or products (so-called “prior art”). This does not mean that every aspect of an invention must be novel. For example, new uses of known processes, machines, compositions of matter and materials are patentable. Incremental improvements on known processes may also be patentable.
  • Useful: The invention must have some application or utility or be an improvement over existing products and/or techniques.
  • Non-Obvious: The invention cannot be obvious to a person of “ordinary skill” in the field; non-obviousness usually is demonstrated by showing that practicing the invention yields surprising, unexpected results. Non-obviousness 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.

The three criteria of novelty, usefulness and non-obviousness generally are the focal points of the Patent Office’s evaluation of patent applications. Obviousness is the reason most frequently cited by patent examiners as to why an invention is not patentable. Finally, patent law states that inventions may be patented if they have been reduced to practice, even if a physical embodiment of the invention has not been realized (“constructive” reduction to practice).

Can you publish while applying for a patent?

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. Grant applications, once awarded, are put into the public domain and may also constitute a public disclosure. Electronic transmission of abstracts, articles or research reports is also a form of publication or public disclosure. Scientists should be aware that many journals and scientific societies often place material on the World Wide Web prior to written publication, creating an increased potential for loss of patent rights. 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 twelve months. Foreign protection is important to many international licensees, so inventors are urged to use discretion, take advantage of Confidential Disclosure Agreements available from the Office of Technology Transfer, and file invention disclosures with The Feinstein Institute well in advance of presentations or publications.

What is the Invention Disclosure process?

If you are a full-time or part-time employee at The Feinstein and think that you have developed intellectual property that could be patented or copyrighted, you should file an Invention Disclosure Form with the Office of Technology Transfer. After a review (including patent-ability and marketability studies), the disclosure may be forwarded to a patent attorney to provide appropriate legal protections. The Feinstein has the ultimate authority to maintain or decline an interest in the intellectual property.

Are there any special rules I should keep in mind?

Yes, most importantly is the law stating that all U.S. patents, a patent application must be filed with the United States Patent Office one year after “publication” or public use of the invention. However, unlike US policy, international patent protection must be secured before publication or presentation. It is important to realize that “publication” is a public presentation, whether it be an oral presentation, a scientific meeting, or an abstract in a journal. If you are at all unsure what constitutes a “publication,” consult the Office of Technology Transfer well in advance.

What if The Feinstein does not assert my interest?

If The Feinstein does not assert its interest in the intellectual property it is formally released to the inventor(s). In a letter provided to the inventor(s) by the Office of Technology Transfer, the Feinstein identifies the conditions under which the invention is being released.

What about sponsors of my research?

Sponsoring agencies sometimes require The Feinstein to disclose inventions that arise from work they fund. This is always true for Government Sponsors (i.e. NIH), and usually true for industry sponsors. If the research that led to your invention was sponsored, please give details and a reference to the contract or grant agreement. The Office of Technology Transfer will provide the appropriate notifications to sponsors once informed.

I am in the process of soliciting external support for my research and will be discussing it with an outside company. How do I protect my intellectual property rights?

It is always important to protect your own interests before public disclosure. In general, you should not communicate the details of your IP in writing or oral in order to minimize the risk of theft. However, if you contact the Office of Technology Transfer we will negotiate a Confidentiality Disclosure Agreement that protects both parties. This prohibits the company from divulging your information to any other company.