Patenting & Licensing Your Discovery

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Patenting and Licensing Detail

Timing of Disclosure

It's important to notify a WARF Intellectual Property Manager as soon as possible.

The WARF IP management team is an important resource for UW–Madison faculty members. They are experts in the fields they support; most hold graduate degrees and are registered patent agents. The IP Manager acts as a catalyst between cutting-edge research and commercialization, and can answer even your most basic questions early in the process. It is important to speak with your IP Manager early, before discussing your idea in public, or some patent rights will be lost.

After a patent application is filed with the U.S. Patent and Trademark Office, it undergoes a thorough examination. The examiner reviews the application with questions in mind regarding your invention's utility (Is it useful?), novelty (Is it new or innovative?), and obviousness (Is it something other people in the field would have known or expected?).

The examiner also will determine whether the patent application provides enough information to enable someone else in the field to make and use the invention. It should!

Office Actions

The patent examiner enters into a correspondence with WARF through the patent attorney, issuing comments and opinions called office actions. These actions may include rejecting all or some of the patent's claims, which distinguish the protectable aspects of the invention. WARF's IP team will coordinate the interface with the patent attorney.

Patent Prosecution

The patent attorney responds to the office actions by defending or trying to adjust the claims and convince the examiner to accept them. This rebuttal and allowance process may take several years. In fact, a patent may never be issued, and if it is issued, may not include some of the claims that were initially filed in the application. If the application is granted, the patent issues and a final version of the patent is published.

Patent Term

An issued U.S. patent has a life of 20 years from the date the application was filed.

Licensing

Active marketing of your invention can begin as soon as a patent application has been filed. Once filed, the patent application enables a company to assess the value of your invention. It's a good idea to keep your Licensing Manager informed about any industry inquiries you receive about your invention.

The licensing process entails marketing the new technology to companies that may be interested. The terms in a licensing agreement may include a payment of upfront and royalty fees.

The license agreement may be exclusive, meaning that only one company can sell and/or use your invention, or nonexclusive, meaning more than one company may hold license to your invention.

The WARF licensing team has technical knowledge as well as industry experience in sales and negotiations. They serve as your business partners—commercialization consultants who work to find the best market and/or market application for your invention.

WARF works with knowledgeable internal legal counsel throughout the licensing process to ensure resulting agreements conform to applicable laws.

Ongoing Contract Management

WARF also provides license agreement administration, supplied by an experienced contract management team. Services include scheduling and monitoring a calendar of fees and royalty details, payment dates and development plans, as well as ensuring the obligations of the licensee and of WARF are met.

Royalty Distribution

WARF shares royalty revenue generated by a licensed invention with you as the inventor. Your department also may receive a portion of the money WARF gives to the Office of the Vice Chancellor for Research and Graduate Education.