The most common and important type of IP in most academic Tech Transfer Offices (TTOs) is patents. Thus, TTPs must understand the criteria for getting a patent and determining whether a new invention disclosure is going to be patentable.
For inventions that will be pursued for patenting, the TTP should do an initial patentability analysis to determine whether the invention should then be assigned to an outside law firm for their much more robust patentability analysis.
2.2.1 The Two Types of Patent Analysis
There are two types of patentability analysis, discussed in more detail here.
The first asks whether the invention meets the basic criteria to be patentable: is it novel, useful and non-obvious?
Patentability is a key component of technology assessments, such as the Ten-point Technology Scoring Template (TPTST) and the First Look Technology Assessment (FLTA).
The second level of patentability analysis is a freedom-to-operate analysis (FTO). It presupposes that the invention is patentable and asks if broader patents exist that dominate it. If so, the TTP must get a license to those patents in order to practice the invention.
With one exception, discussed below, universities don’t do FTOs. They license patents “as is,” with a section in the license which explicitly states that the university is licensing the patent(s) with no guarantee that the invention works for the intended purpose, or that it can be practiced without infringing the patent rights of others. It’s the licensee’s job to make that determination.
The reason for this is due to the enormous liability exposure if the university gets it wrong. Law firms will provide FTOs, but charge very large sums for them,
- because they must do an enormous amount of research before they can guarantee safety from patent infringement, and
- they take on the risk of being sued if their analysis is wrong.
The only time a university will do an FTO is if it’s considering doing a start-up. Here, the university is acting as licensee, so the FTO will ensure that the start-up will be able to develop and market the products enabled by the invention. Prospective investors will ask about the FTO as part of their due diligence as they consider investing in the start-up.
This will be discussed further in Track III (Advanced-level TTP), Topic 1: Start-ups, in which the feasibility analysis for a new start-up, the First Look Venture Assessment, involves an FTO.
2.2.2 Before You Start
There are two overlapping steps to undertake before starting the patentability analysis:
- Determining what products or services might result from the invention and the vehicle by which the invention will be made available to consumers.
Doing this assists in identifying patent claims (which list out what the patent does and does not cover) that will protect the specific products that implement the invention.
- Interviewing the inventor to identify these three things:
- Specific products that will implement the invention
- Key novel components of the invention – if it builds on a prior technology, what precisely has the inventor added. Identifying this will dictate the patent claims search
- One- or two-word phrases that capture the key innovation to use in the search.
2.2.3 Criteria for Patentability
To be eligible for patent protection, an invention must be:
- Novel;
- Useful;
- Non-obvious; and
- Adequately described that it can be practiced by one ordinarily skilled in the art.
Patentability searches focus on novelty and non-obviousness – usefulness is presumed and ensuring that the invention is adequately described is the job of the patent attorney or agent that is eventually hired to write the patent application, working with the inventor.
2.2.4 Prior Art Search of the Patent Literature
All major patent offices’ websites are freely available to search. In addition, there are several sites that offer access to multiple patent office databases, including those below:
Websites for Searching for Patent Prior Art
To search for prior art, the TTP must know basic Boolean search methodology and how to use the five Boolean operators – AND, OR, NOT, (), “” Click here for a guide on how to use the five Boolean operators.
The Google searches we all do default to AND – they look for results that include all of the precise words you entered. In Boolean terms, a search for “optical mouse” would be expressed as: “optical” AND “mouse.”
Boolean terms enable more precise searches. For example, you can use partial words to capture the use of a concept as a noun, an adjective or a verb. So “detect” would find “detect,” “detector” and “detection.”
OR lets you search for alternative terms that the inventor may have suggested to capture the same inventive concept: “steerable needle” OR “manipulator,” “nanowires” OR “thin channels.” You may need to combine OR and AND to look for alternative formulations: “parallel linkage” OR “positioner” AND “linkage”.
NOT narrows down the search: “PCSK9” AND “inhibitor” NOT “antibody.”
Brackets specify the order in which the search terms will be applied: (“sniper” AND “biomimetic”) NOT “acoustic” will give different results from “sniper” AND (“biomimetic” NOT “acoustic.”)
Initial searches will probably yield thousands of hits. The TTP must narrow this list to a reasonable number (10-30) of the most similar potential prior art to see whether those results precisely describe the invention. Thus, the search should include several NOT’s and AND’s to narrow the initial hits down to a number where the TTP can read them all.
See this webinar from the USPTO on how to do a patent search. This provides an excellent primer on how to use the Patent Classification system.
2.2.5 Prior Art Search of the Open Literature
Scientific literature can constitute prior art against a patent application too, and should also be searched. The same discussions about Boolean operators and narrowing searches to a manageable number of sources also apply.
One of the issues with the scientific literature is that an increasing amount is coming out of China and is published in Chinese.
Resources to Search the Scientific Literature:
2.2.6 Pulling It All Together
You will need to iterate your search to narrow it down to a reasonable number of patents and papers to read to see if they disclose exactly what we hope to claim in their new invention. This is probably in the 10-20 patent range. If you have too great a number, make the search more specific. Reviewing the final list is generally a straightforward process: if there’s nothing claiming the exact same claims as the new invention, then there’s no prior art.
However, the closer these sources come to claiming / disclosing the exact claims of the TTP’s invention, the greater the possibility of an obviousness rejection from a patent examiner.