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Invention Evaluation

Patent Review Committee

Patent Review Committee 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.

Evaluation considerations

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:

  • Is the invention ready for patenting?
    If the patent application is filed too early, you may have insufficient data. This can be problematic because each invention application must be enabled – it must include sufficient details for others in the field (“skilled in the art”) to re-create it. Moreover, if your original provisional application is incomplete and new matter is added to the non-provisional application, patent offices will change your priority date to the conversion date. You would lose your priority date if another inventor files an application between your original provisional filing data and the new conversion date.
  • Can the invention be commercialized? Is there a market for the product?
    OEE’s goal is to file patent applications for inventions that can become a product or service and are licensable. Some inventions can be commercialized without patents. Examples include research tools, software, copyrights, methods.

Evaluation outcomes

After the evaluation is complete, the outcome could be as follows:

  • Yes, invention is ready for patent filing: OEE will file a provisional patent application (PPA) - refer to patenting process.
  • Hold, invention is premature: Invention is put on hold and may go through a second round of evaluation after you share the new data with OEE.
  • No, OEE will not move forward with patenting. The invention is marked as closed in our database. It is released to the inventors if they request the same. After the invention is so reverted, an inventor may seek ownership of the IP. OEE can assist the inventor to obtain the necessary waivers for research sponsor approval to transfer ownership from Marquette to the inventors.

Patenting Process

What is intellectual property?

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.

Types of intellectual property

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.

  1. A utility patent protects inventions — new and useful processes, machines, articles of manufacture, compositions of matter, or any new and useful improvement thereof. A patent protects innovation by granting the right to exclude others from unauthorized use of the invention. A patent protects an invention for 20 years.
  2. Copyright protects original works of authorship fixed in a tangible medium of expression. A copyright protects software, media, artistic or written works, instructional materials and more. However, copyright law does not protect ideas, systems or methods.
  3. A trademark is a name or symbol that identifies a product or service. To receive protection, a mark must be distinctive and used in commerce. Trademarks are protected by law for as long as the mark remains in use.
  4. A trade secret is information a business develops that is valuable and not widely known by others. Often, trade secrets are patentable. Protection of a trade secret persists so long as the information remains a secret.

    Marquette researchers often know or develop trade secret information in the course of research. It is difficult, if not impossible, to maintain a trade secret in academia — we publish, present, patents get published, etc. and there are strict guidelines that need to be followed to prove that something had indeed been maintained as a trade secret.

The patent application process

Who can file a patent application?

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).

What can be patented?

To be patentable, an invention must be:

  1. Patentable Subject Matter: subject matter that is eligible for patent protection under patent law. Subject matters that cannot be patented include mathematical formulas, scientific principles, naturally occurring substances, laws of nature and processes done entirely with the human body. Ideas are patent ineligible. To be patentable, the idea must be embodied in one or more of:
    • A new composition of matter: e.g., a new compound
    • A process or method: e.g., a new way to manufacture an article
    • A machine: i.e., something with moving parts or circuitry
    • A manufactured article: i.e., a tool that achieves results with few or no moving parts e.g., a pen
    • An asexually reproduced and new variety of plant
  2. Novel: The invention must be new – it must differ from knowledge that already exists in the public domain, prior patents, published patent applications, any publication available to the public and items on sale (together referred to as “prior art”).
  3. Useful: Utility under United States patent law means an invention must have at least one specific use. If an invention works for its intended use, it has utility. Very few inventions fail the utility test. Under European patent law the invention must be susceptible of industrial application.
  4. Non-Obvious: Under United States patent law, “The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention.” A "person having ordinary skill” is not the average person, but someone who is actually skilled in the inventive field.

What is a provisional patent application?

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:

  • A PPA expires after one year.
  • You cannot extend a PPA.
  • You cannot renew a PPA.
  • A PPA will never become a patent.
  • You cannot file a PPA for a design.
  • The USPTO does not examine PPAs.
  • The USPTO does not conduct a prior art search on PPAs.
  • The USPTO does review PPAs to make sure they meet minimum filing requirements.
  • PPAs are not published by the USPTO (unless claimed as priority in a later-issued or published nonprovisional application).
  • You can use the term "patent pending" for the duration of the one-year pendency of a PPA.

Converting provisional to a non-provisional application

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:

  • High likelihood of patentability
  • Minimal prior art issues
  • High commercial potential
  • Identified potential licensees

What is a non-provisional patent application?

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.

Parts of a non-provisional patent application

  • Title
  • Reference and describe related art: description of the current state of the art
  • Statement of federally sponsored research or development, if any
  • Names of the parties to a joint research agreement if applicable
  • Background
  • Field of invention: description of your invention
  • Summary: objectives of your invention
  • Description of drawings
  • Detailed description: provides as much detail as possible on your invention, includes preferred embodiments and different embodiments
  • Claims: the most valuable part of the application, typically a claim is a one-sentence recitation of your invention. Claims are exactly what the applicant owns, namely, the intellectual property on which others cannot infringe.
  • Abstract
  • Sequence listing if any

What is the patent process?

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.

How much do patents cost?

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.

Who pays for patent costs?

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.

What right is conferred by a patent?

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

How does Marquette University market my 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.Summary

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.

How can I help to market my invention?

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.

How long does it take to find a licensee?

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.

How is a company selected to be 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

Responsible licensing

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.

What is a license?

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.

Licensing: Negotiate the deal

What is a license agreement?

A legally binding agreement between:

  • Licensor = owner of IP = University
  • Licensee = party seeking to license, develop and commercialize IP
  • Licensee agrees to develop and commercialize IP

Rent versus own

  • Licensor usually retains ownership of IP
  • Licensee pays the licensor for the right to develop IP


  • Terms for IP licenses are widely understood among licensing professionals
  • Start with our pre-approved template
  • Refer to licensing survey data
  • Market need? Product - pipeline fit?
  • Relative value of Marquette IP in final product
  • Negotiating a license

Win-win: Create more value, together

Licensing term sheet

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.

Non-financial terms

  • Exclusive or non-exclusive
  • Due diligence milestones
  • Confidentiality
  • Control of patent prosecution
  • Due diligence milestones
  • Reservation of rights for Marquette
  • Waiver of liability
  • Dispute resolution
  • Term and Termination

Financial terms

  • Upfront fee
  • Annual license maintenance fee
  • Patent cost reimbursement
  • Due diligence milestone payments
  • Royalty payments
  • Payments on other consideration
  • Reports and records
  • Note: Terms may vary significantly between early stage startup companies and established companies

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.