Inventor & OEE Responsibilities
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Inventor Responsibilities |
OEE responsibilities |
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Disclose inventions to OEE using the Marquette Inventor Portal |
Evaluate invention disclosures for commercial potential |
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Assign (or give ownership) of your invention to Marquette |
Work with the ORSP to file federally required invention reports |
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Submit all relevant data and materials to help with patent filing or securing other intellectual property rights Review and edit the drafts of patent and any patent office requirements |
Coordinate patent and other filings with intellectual property attorneys |
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Assist in creating marketing materials |
Prepare marketing materials with inventor input |
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Assist in identifying commercial partners through your networks, a proven technology transfer strategy |
Work with commercial or community partners to market technology |
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Provide timely input as needed and requested by OEE on various matters pertaining to agreements |
Negotiate, draft and execute legal agreements including confidentiality, inter-institutional/joint ownership, option, license, educational research and sponsored research agreements |
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Respond to OEE in a timely fashion |
Communicate and update inventor with progress |
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Actively participate throughout the technology transfer process |
Distribute and track royalty revenue according to institutional policy |
The Technology Transfer Process is Non-Linear
Inventions
Anyone can be an inventor! However, according to patent law, an inventor must have conceived an essential element of an invention to be named on the patent application. To qualify as an inventor, an individual must have conceived of a novel, useful and non-obvious element of the invention.
To "conceive" an invention is defined in a legal sense as the "formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." This means that details needed to make the invention work must be available.
U.S. patent laws define the reduction to practice of an invention as the step or steps in the formation of an invention after its conception. An invention can be reduced to practice in two ways, actual or constructive. Actual reduction to practice refers to the generation of an actual physical embodiment of an invention that works for its intended purpose. Constructive reduction to practice means that a patent application is filed that has sufficient description to enable actual reduction to practice by one of skill in the art.
The Marquette University Inventor Portal is a feature that provides streamlined online invention disclosure capability.
Any faculty, staff or student may disclose an invention through the Marquette University Inventor Portal.
Inventors can log in to the Marquette Inventor Portal using their Marquette email and password.
Inventors using the portal for the first time will complete the login information using their Marquette email as the “user name” and their Marquette email password as the “password.” New inventors will be presented with following Create Account dialogue:
Portal users will have 24/7 access to a secure website to do the following:
Invention Evaluation
Under Marquette’s Intellectual Property Policy, a Patent Review Committee (PRC) will consist of three (3) faculty members, two (2) representatives from OEE, a member of the Office of General Counsel and an ex-officio member from the Office of Research and Sponsored Programs. Non-faculty members will be appointed by the vice president responsible for the department. Faculty members of the committee will serve at the pleasure of the provost, who will appoint the committee chair. The normal term of appointment will be two years, which may be renewed. OEE may consult with patent attorneys, industry leaders, technology sector experts, investors or other experts in the evaluation of an invention.
OEE does not assess an invention’s scientific merit; rather, we review patentability (all inventions must be patentable subject matter, novel, useful and non-obvious) and commercial potential. Factors considered in evaluating an invention include the prior art, public disclosure, reduction to practice, proof of concept data, novelty, patentability, potential applications, market need, licensing potential, possible markets, regulatory hurdles, manufacturing feasibility. Questions that come up include:
After the evaluation is complete, the outcome could be as follows:
Patenting Process
Intellectual property is a product of human innovation protected by the law from unauthorized use. Intellectual property (IP) consists of a bundle of property rights issued by the government, varying from country to country. Patents, copyrights, trademarks and trade secrets compose IP.
Intellectual property consists of four main areas: (1) patents, (2) copyrights, (3) trademarks and (4) trade secrets. The Technology Transfer Office focuses on pursuing protection for patents and copyrights.
Any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.” The inventor or an applicant to whom the inventor has assigned or is under obligation to assign the invention may apply for a patent application. A patent may only be applied for in the name(s) of the actual inventor(s).
To be patentable, an invention must be:
The provisional patent application (PPA) is a legal document filed in the USPTO that establishes the priority date for your invention while avoiding the costs associated with the filing of a nonprovisional patent application (NPA). The PPA gives inventors flexibility to quickly protect an invention and essentially provides a one-year extension as to the filing of an NPA. A PPA provides the applicant an additional year to experiment, perfect an invention, determine commercial potential, find interested parties for licensing, etc. The PPA is not examined by the USPTO. It expires if it is not converted and filed as a non-provisional patent application within one year of the provisional filing date.
Facts about a PPA from USPTO.gov:
Inventors have one year from the priority date to generate more data for the strongest possible non-provisional patent application. During this time OEE does more due diligence to assess the marketability and commercial potential of the invention. Marquette does not have the budget to convert all provisional to non-provisional applications. OEE is most likely to file non-provisional applications on inventions with:
Although one can file a non-provisional patent application without first filing a provisional application, OEE’s practice is to first file a provisional patent application. The non-provisional patent application is the formal filing of an invention with the USPTO that forms the basis for an issued utility patent if the invention claims are allowed after being examined by the USPTO.
It is the duty of the USPTO to ensure that every patent and other intellectual property given in the name of the government is worthy of an issued patent. Every inventor must put in the work to get those rights: Know what makes your patent novel, useful and non-obvious, include prior art references in the patent application and work with OEE, patent attorney and USPTO examiner to get the claims that you need and that the USPTO will allow.
Who files the Patent Application?
Marquette engages outside patent counsel for patent application filing and prosecution to ensure access to specialists in diverse technology areas. Inventor expertise and feedback is crucial during filing and prosecution. Inventors are indispensable for obtaining meaningful patent protection – you will work closely with patent counsel in answering inventorship questions and reviewing the draft patent application. At the time of filing, inventors will sign an Inventor Declaration (an oath stating that you are an inventor) and as per Marquette’s Intellectual Property Policy, a notarized Assignment under which you, the inventor(s) assign your rights in the patent to Marquette.
Patent Prosecution
The patent process can be thought of as a negotiation – together, the goal of the inventors and patent counsel is to persuade the examiner to allow your claims. Within 12 to 24 months of filing a nonprovisional patent application, your first non-final Office action will include rejections of most, if not all, of your claims because the claims are not patentable over the prior art. A patent examiner writes this Office action document that cites prior art and gives reasons as to why the examiner has rejected and/or allowed the applicant’s claims. In certain cases, the examiner may issue a Restriction Requirement if they think your claims cover multiple inventions, segregating claims into groups and requiring you to elect one group of claims for initial examination.
The patent attorney must file a written response with inventor input by providing counterarguments as to why the examiner position is believed to be incorrect and/or amending the claims to include features that are not disclosed or suggested in the cited prior art. This procedure is referred to as patent prosecution. During prosecution, inventor input is critical to confirm the patent attorneys’ understanding of the technical aspects of the invention and/or the prior art cited against the application.
It typically takes several Office actions and responses and 2-5 years before the application is resolved. If the examiner is not convinced by your responses to non-final Office actions, they will issue a final Office action. The applicant has the option to file a further response that would result in another non-final Office action. The resolution can result in a final rejection or USPTO notice of allowance stating that the application and prosecuted claims will issue as a patent.
U.S. patents
Patent costs are uncured for preparing a patent application for filing and prosecution. Preparation includes everything until the formal filing. Prosecution includes costs for everything from filing to issuance of the patent. Between USPTO filing fees and associated attorney costs, the U.S. average for filing a patent application is $12,000. Prosecution can cost $40,000 to $50,000 – the total cost of an issued U.S. patent is $50,000 to $60,000. An issued U.S. patent is one of the best bargains, since a single patent may cost $60,000 but covers a population of 300+ million. It may cost 10 times as much to cover the same population in Europe.
International patents
International patent filings are typically managed by filing a Patent Cooperation Treaty (PCT) application. An advantage to filing a PCT application is it delays the filing of costly foreign applications until 30 months after the provisional filing date. This gives us time to further develop, market and license the invention. We must choose within 18 months of the PCT filing, which of the 190 PCT countries in which to file national phase applications. Foreign filings are expensive due to translation costs and because foreign attorneys need to be engaged. A multination filing can easily cost well over $100,000. Annual maintenance fees for all pending applications and issued patents adds to the total cost over the lifetime of a patent. Decisions to file international patent applications must thus be made judiciously and hopefully with input from a licensee about their global business strategy and needs.
For those technologies disclosed to OEE that are pursued after the evaluation process, Marquette pays patent filing, prosecution and maintenance costs until such time as a licensee is identified. After the technology is licensed, OEE will typically seek reimbursement of past and ongoing patent costs from the licensee.
The right conferred by an issued patent is “the right to exclude others from making, using, offering for sale or selling” the invention in the United States or “importing” the invention into the United States.
Market Your Invention
In the market phase, which could last from 6 to 24 months, OEE partners with inventors to develop marketing materials, to find and recruit commercialization partners.
OEE uses many sources and strategies to identify prospective licensees, including existing OEE and inventor relationships, market research and conferences. A best practice is to market technologies to companies that might be interested in dedicating the resources to commercialize your invention. Marketing allows OEE to better assess the value of an invention and provide fair access to avoid preferential treatment toward certain parties.
Companies and entrepreneurs have many choices. OEE needs your help to communicate the value of your technology – we want the company to choose our technology. Generally, OEE prepares a non-confidential marketing summary (NCS) with your help. As the inventor, you are the expert on your technology. As such, OEE sends the NCS template to you for technical content. The NCS should have an exciting title, include the Marquette Technology ID number, hyperlinked patent numbers and publications, inventor websites, key advantages, brief description of the technology, potential applications, key data or figure and contact information.
OEE posts the NCS to our website, sends the NCS directly to potential partners and leverages conferences to make direct contacts. OEE may use the services of a third party to conduct a marketing campaign. If a potential licensee requests additional technical information or asks to speak/meet with the inventors, OEE will request you to respond to the company request. This is often done under a confidentiality agreement.
As an expert on your invention, you are in the best position to help OEE market your invention. Studies have shown that the best licensing leads often come from inventors. Inventor research and consulting relationships are often valuable sources for potential licensees. Your active involvement can dramatically improve our chances of finding a potential licensee. Your publications and presentations are often excellent marketing tools. Make special note of which industry representatives contact you about a publication or visit your poster/presentation at a conference. This does not happen by accident – companies strategically plan whom they will contact. Please share OEE contact information with such representatives, get their contact information and share the same with OEE.
It can take months or sometimes years to identify a potential licensee. Factors that play a role include the nature and field of the invention, the stage of development, competing technologies, market need and market size. Most academic inventions are at an early stage and require a partner to invest substantial resources for further development and commercialization, making it more challenging to attract a licensee.
A licensee is chosen based on its ability to commercialize technology for the benefit of the public. An established company may be appropriate for some inventions while a startup company may be better positioned to commercialize other inventions.
License Your Invention
In keeping with our Jesuit principles, Marquette is committed to responsible technology licensing. We concur with “In the Public Interest: Nine Points to Consider in Licensing University Technology.” We recognize that each license requires careful consideration with respect to which provisions are included to ensure that the fruits of research are translated to new products and services. We strive to increase the likelihood that new knowledge is not only transferred, but that it will be in the public interest and for the benefit of society. OEE will negotiate a license based on equitable terms as efficiently as possible.
A license is a legal agreement through which the owner of intellectual property grants permission to another party to act under some or all of the owner’s rights. Different licensing strategies may be appropriate for different inventions. An invention requiring significant investment by a company is typically exclusively licensed to incentivize the company to risk and commit resources required for product development, while a non-exclusive license might be better suited for a research tool.
A legally binding agreement between:
Licensing discussions generally begin with a term sheet that lays out non-financial and financial terms that will be included in the license agreement. OEE negotiates these terms with the prospective licensee. Negotiations typically necessitate flexibility and creativity by both parties to arrive upon a mutually agreeable agreement. OEE strives to execute win-win agreements. Although inventors do not participate in the actual negotiation of license agreements, OEE may ask them about the licensee’s ability to develop products using the licensed intellectual property. Once the parties reach agreement on the terms, they are included in the formal license agreement which is a legally binding document executed by signatory authorities of the respective parties.
Resources
Marquette Law School Intellectual Property & Technology Law
The nationally recognized Marquette University Intellectual Property and Technology Program fosters a rich learning environment dedicated to understanding intellectual property and technology law. The program is anchored by students who are committed to becoming intellectual property lawyers. Students choose from over 15 different courses in the program, permitting them to develop course sequences tailored to their individual interests.
Marquette Law and Entrepreneurship Clinic (LEC)
The LEC is a clinical program at Marquette University Law School. It operates as an independent law office staffed by LEC Director Nathan Hammons and law students. Participating students earn academic credit as they counsel entrepreneurial clients under the close supervision of the clinic director, and they also work with volunteer attorneys in the private bar. The LEC has a three-part mission:
Start a company
OEE is excited to partner with entrepreneurial inventors. OEE strives to maximize the successful technology transfer of Marquette technologies while prioritizing Marquette’s research and education mission. Launching a successful startup company calls for commitment, dedication and dogged perseverance. With the right permutation of the following ingredients, a startup has the potential to bring significant benefit to society: compelling and innovative concept or technology, competitive advantage, strong market need, experienced leadership team and sound business plan.
Every new company has unique needs and may embark upon the following steps at different times:
When Marquette inventors found or are involved with a startup company, Marquette needs to manage conflicts of interest and commitment. As such OEE needs to maintain an arms-length relationship during the license negotiation and other transactions. The Marquette inventor will be requested to appoint a third person or party to negotiate on their behalf with OEE.
OEE will sign off on a final license agreement only after the appropriate conflict reviews and approvals are complete. Faculty inventors are held responsible for separating their Marquette research and education duties from personal interest in the company, financial or otherwise. Intellectual property and personnel cannot flow freely between your Marquette laboratory and your company – Marquette facilities should not be the research and development arm of the company.
BioForward Wisconsin is a member-driven organization promoting the growth of Wisconsin’s biohealth industry and defining the future of health care through leadership and integrated solutions. BioForward is the only Wisconsin organization representing more than 200 biohealth member companies, including biotech, biopharma, medical device, diagnostics, digital health, as well as research institutions and service providers. BioForward programs and memberships support members through business networking events, advocacy on behalf of the industry, exclusive rebates through our select savings program, and educational and speaker programming.
Catalyst BioConsulting (formerly PICO – Postdoc Industry Consultants) is a business consulting group composed of highly trained scientists that provides a broad range of consulting services for the many challenges faced by startup and established firms. It offers pro-bono services geared towards the sustainable development and growth of innovative biotech and health technology companies in Wisconsin and beyond.
FedTech builds startups around breakthrough technology from the world’s most advanced research facilities. The FedTech team consists of seasoned entrepreneurs; early-stage startup investors, advisers and mentors; former U.S. government leaders in the rapid innovation space; former CXOs; and all-stars. The primary sponsor, the National Security Innovation Network (formerly known as MD5), works to build networks of innovators that generate new solutions to national security problems.
gBETA is a program of nationally ranked startup accelerator gener8tor. gBETA is a free, seven-week accelerator for early-stage companies with local roots. Each program is capped at five teams, and requires no fees and no equity.
Gener8tor's turnkey platform for the creative economy connects startup founders, musicians, artists, investors, universities and corporations. The gener8tor platform includes pre-accelerators, accelerators, corporate programming, conferences and fellowships.
Milwaukee NSF I-Corps Initially funded by the National Science Foundation (NSF) in 2015 and renewed in 2018, the Milwaukee I-Corps Program offers researchers and entrepreneurs a chance to explore the viability of their technologies and ventures through the “Lean Startup” or “Lean Launch” process of direct engagement with the potential markets. Through a five-week workshop, participants are coached on designing and validating a business model around their idea and deciding whether the idea is a go/no-go decision based on their business model. Regardless of the go/no-go outcome, teams will develop valuable skills in discovering the market – skills that will inform their research, business and careers.
Wisconsin Technology Council is the science and technology adviser to the governor and the Legislature. Launched in 2001, the Tech Council was created by a bipartisan act of the governor and the Legislature. It is an independent, nonprofit and nonpartisan board with members from tech companies, venture capital firms, higher education, research institutions, government and law.
Center for Technology Commercialization provides one-on-one assistance to early-stage emerging technology businesses throughout Wisconsin. From agriculture to biotechnology, Center consultants are experts in commercialization processes. We have more than 60 years of combined experience and have supported clients in acquiring more than $195 million in federal and additional funding.
The 707 Hub
Powered by the Kohler Center for Entrepreneurship and Social Innovation Initiative, the 707 Hub is where ideas are shared, stretched, challenged and realized. Part of the Office of Research and Innovation, the 707 Hub is open to all students. It provides unique spaces designed to foster collaboration, innovation and a cross-disciplinary approach to solving problems. Intros and Innovators features a “reverse pitch” from startups, nonprofits and innovative companies that have project work, internships and full-time positions available and will conclude with a networking reception.
The Dorm Fund is a Marquette student-run venture capital firm.
The Brewed Ideas Challenge is a funding competition for Marquette students who have the next great innovative idea.
Student-Run Business Program
Marquette University's Student-Run Business Program (SRB) offers students one-of-a-kind opportunities for hands-on, experiential learning in business. Based out of the College of Business Administration but open to students campus-wide, the SRB program offers unique opportunities for students to get involved. The SRB program is partnered with Blue and Gold Ventures, an independent non-profit that holds all matured SRB businesses and employs SRB student-executives and employees gain leadership experience, learn business acumen, apply their knowledge, run businesses, and break the bubble that separates students from the world around them.
U.S. government-funded inventions
Marquette University must comply with the Bayh-Dole Act (Patent and Trademark Law Amendments Act) of Dec. 12, 1980, which changed the nation’s technology transfer system by enabling universities to own the rights to inventions funded by the U.S. government, and take the lead in patenting and licensing novel discoveries. Marquette University must timely disclose each such invention through the Office of Research and Sponsored Programs, all inventions, patenting and licensing activity through the government’s iEdison portal.
OEE works with other Marquette offices on technology transfer matters
The Technology Transfer Office partners with the Office of Research and Sponsored Programs on sponsored research and the legally authorized representative for grants, contracts and assurances. Together, we help faculty and administrators build bridges between Marquette and our community.
OEE works closely with the Office of the General Counsel regarding all legal matters affecting technology transfer activities and agreements, including patent prosecution, copyrights, license agreements, joint ownership agreements, sponsored research agreements and non-disclosure agreements.
OEE partners with the Office of Research and Innovation to advance the university’s strategic initiatives for research and innovation and to provide an infrastructure to support entrepreneurship and commercialization.
Other Agreements
For matters involving OEE, Marquette investigators who need a confidentiality or non-disclosure agreement (CDA/NDA) to receive or disclose confidential information to an external party should contact OEE. OEE will negotiate the CDA/NDA terms with the external party, update the investigator and coordinate signatures.
The Office of Research and Sponsored Programs (ORSP) reviews and manages any material transfer agreement (MTA) when an external party request material from or wishes to send material to investigators at Marquette. Please contact the ORSP and please also inform OEE about transferring to external parties any materials that are the subject of an invention disclosure, patent application or issued patent.
University Policies
The intellectual property is owned by the university if the invention is first conceived or reduced to practice by faculty, staff or students:
The intellectual property is owned by the inventor if the invention is first conceived or reduced to practice by faculty, staff or students:
Under Marquette’s current Intellectual Property Policy, net proceeds are divided as follows.
Other University Policies & Forms
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