Patenting and Licensing Process

Steps to Filing a Patent Application
Choosing a Patent Attorney
Licensing Strategy
Finding a Commercial Partner

Steps to Filing a Patent Application

• The Director of Business Development and inventor(s) meet to discuss the technology and make a preliminary evaluation of novelty, potential applications, possible markets, and manufacturing feasibility.
  
  
• Inventor completes an Invention Disclosure Form, thus creating a record of the invention. See How to Disclose an Invention for more information.
  
  
• Wistar's Intellectual Property Committee may also discuss the invention, and a patentability assessment may be obtained from an outside patent counsel.
  
  
• Based on this information, the Office of Business Development will determine whether or not Wistar will file for a patent on the invention.
  
  Wistar does not file patent applications for all invention disclosures it receives due to the high cost of filing ($6,000-$10,000 to start with continued costs in future years). It is desirable to have at least one interested potential licensee before committing to patent filing. In some cases, however, the commercial potential may justify filing when guarantees of cost reimbursement by potential licensees are not reasonably assured.
  
  
• In recognition of our Inventors' hard work and dedication to research, Wistar has a policy of awarding a patent bonus to Wistar inventors when the US patent from a new invention issues.

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Choosing a Patent Attorney

An outside patent attorney, contracted by Wistar, will file and prosecute patent applications. Technical competence, prior experience in similar cases, and inventor preferences are considered in the selection of the appropriate patent attorney. The inventor's cooperation is essential in patent filing and prosecution. The chosen patent attorney will be familiar with the field of the invention, but he or she is unlikely to be an expert at the level of detail needed to prove that the invention is patentable under current patent law by being novel, useful, non-obvious, and able to be practiced. You, the inventor, by providing both written and verbal information, will make an important difference and are indispensable for obtaining meaningful patent protection. (For more information about patents, go to What is a Patentable Invention.)

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Licensing Strategy

A preliminary licensing strategy will be developed since different inventions require different licensing strategies. For example, a basic new scientific tool is typically licensed on a non-exclusive basis. In contrast, an invention that requires significant investment of resources by a company is typically licensed on an exclusive basis. The exclusive license provides an incentive to the licensee to commit risk capital investments required for product development. The process of developing a license strategy involves seeking information and feedback on market risk from various sources such as potential licensees or investors. Sometimes we may sign a confidentiality agreement with a potential licensee in order to provide them with unpublished information on the invention and related work at Wistar. Disclosing certain information about an invention before appropriate steps have been taken to protect it (e.g. filing of a patent application) may limit our ability to obtain international patent protection for that invention.

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Finding a Commercial Partner

• Concurrently with making the patent decision, the Office of Business Development will market the technology and, if successful, begin negotiations with potential licensees. Companies likely to be interested are approached and are given an opportunity to evaluate the invention (if required, on a confidential basis).
  
  
• New technologies are posted on Wistar's Web site as well as several external professional Internet sites designed to showcase technologies available for licensing.
  
  
• Inventor's suggestions of companies to be approached are extremely valuable. A license proposal is prepared by the Office of Business Development (often in collaboration with Wistar's General Counsel) when the company shows strong interest in licensing the technology.
  
  
• Negotiations follow, which may require flexibility and creativity by both parties in order to arrive at a mutually satisfactory agreement. Every license has circumstances that necessitate special considerations, so the licensing negotiations may take a few months to complete.

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