BU - Office of Technology Development - Technology Transfer - Invention - Process

The Technology Transfer Process - Evaluation

The second step in the disclosure process is generally a meeting with you so that we can ensure that we understand your Invention, specifically, what is novel and useful about it, and its stage of development – what experimental data or prototype has demonstrated feasibility. We will also discuss with you what the commercial implications of the Invention are – what sort of products will result from the Invention, the characteristics of that market, and so forth. This allows us to ask the right questions of the attorney whom we ask to evaluate the disclosure for patentability. Finally, it is an opportunity for you to ask questions about the process.

There are a number of questions that must be asked and answered before a technology can be taken beyond the invention disclosure phase. Significant costs in dollars and time are required by both the Office of Technology Transfer and the inventor to get an invention patented. We receive around 100 invention disclosures a year and significant resources would be needed to patent all of them. Pursuing only patents that have a real prospect of being licensed and utilized requires difficult decisions. Some inventions are never sent for patents, some are delayed until the invention is more complete or the market is ready, and some are processed quickly.

When we visit to discuss your invention, we will be exploring the following questions with you.

Is it ready?

Is the invention complete?
Has a patent search been done?
Is a prototype available to demonstrate the invention?
Is it premature for the current market?
Will people easily grasp its utility?
Will the potential licensee have to fully develop this invention?

Does somebody need or want it?

Are there similar products currently on the market?
If so, is this invention a lot cheaper, better, and/or faster than the competition?
Who are the customers for this invention?
What are the different markets for which this invention might be used?
Can the prototype be used to help license the technology?

Is it worth it?

Is the inventor willing and interested in championing this invention to potential licensees?
Will we recover and exceed initial patent cost from royalties?
Will foreign patents be necessary/desirable?
Even if a patent is issued, can it be enforced?
Does it need government approval or certification?

If the conclusion of this meeting is that an invention has been made, that there is a potential market for the invention, and that the invention either has been reduced to practice or is on track to be reduced to practice, then the next step will be to ask a patent attorney to evaluate the invention. We will write to the firm we select enclosing a copy of the Invention Disclosure and describing what we believe the commercial manifestation of the Invention will be and ask them to assess its patentability. The three criteria they will examine are:

Novelty
Utility
Non-obviousness

They will carry out a prior art search and identify whether there is invalidating prior art or sufficient pointers to your invention that a patent examiner will find it obvious. You will receive a copy of their report.

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