Frequently Asked Questions (FAQs)

What is an Invention Disclosure Form?

By submitting an Invention Disclosure form to OTC, this creates a record of the invention that includes the inventor(s) involved, who sponsored the work, and public disclosures and/or publications. The case manager assigned to your technology can then use this information as a basis for determining whether a patent should be filed. To achieve optimum results, a description of the technology should be submitted at least three months in advance of first publication or other public disclosure. This will allow the case manager to review the materials and engage outside counsel in the drafting of a patent application.

What is a patentable invention?

An invention is the physical embodiment or the ?reduction to practice? of a discovery. For an invention to qualify for a patent, the invention must be novel, non-obvious, and useful. Inventions may be a device, a manufacturable article or reagent, a composition of matter, a method of use, or a new, useful improvement.

  • Utility: The patent statute specifies that an invention must be useful, that it must be good for some applied purpose.
  • Novelty: The patent must be new, i.e., the exact same thing must not have existed or been done before.
  • Non-Obviousness: Even if novel, the invention must also be different enough from past technology that the average worker in the field (?skilled in the art?) would not have come up with the new invention from what was already known. If the invention does not meet this test, it is rejected as obvious.

What is prior art?

Prior art is relevant past technology that may be considered by the patent office in evaluating novelty and non-obviousness. If a patent application is filed in the U.S., anything that has been published, used in public, offered for sale or sold by anyone before the inventor(s) made the invention, or more than one year before the application is filed, becomes a part of the prior art for that application. The inventor's own publications made within a year prior to the filing of the patent application do not prevent the inventor from obtaining a patent. However, such publications do prevent foreign patents from being obtained, because of the requirement for absolute novelty.

What is a provisional application?

The provisional patent application is an application that can be filed with the U.S. Patent and Trademark Office that establishes the effective filing date (priority date) of a patent application. The provisional application has a term of only twelve months. At the end of the period, the University must elect to either abandon the filing which allows the information to become public or convert the provisional application to a regular patent application.

What is the advantage of filing a provisional patent?

In addition to establishing the filing date and to being lower cost, The University and inventors gain a twelve month block of time to further develop the invention, acquire funding, determine marketability, seek licensees before having the major expense of a regular filing.

What does it cost to file and prosecute a patent?

Typically, the cost of preparing (filing) a patent will be between $6,000 to $9,000 depending on the complexity of the application. Prosecution of the application (the process of shepherding the application thru various stages of the patent review process prior to issuance) will increase the total cost between $13,000 to $25,000. Foreign patents can be extremely expensive, often in excess of $100,000 to $150,000 from filing to issue depending on the country.

What is a Declaration?

A Declaration is an oath that the applicant makes wherein he states that he believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits a patent; and shall state of what country he is a citizen.

What is Power of Attorney?

When a registered attorney or agent acting in a representative capacity appears in person or signs a paper in practice before the Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the Patent and Trademark Office that under the provisions of the law, he or she is authorized to represent Georgetown University.

What is an assignment?

Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. An assignment is a certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United States or an officer authorized to administer oaths whose authority is proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States. This certificate shall be prima facie evidence of the execution of an assignment, grant, or conveyance of a patent or application for patent.

Why do I have to assign my patent to Georgetown University?

According to Georgetown University policy, all inventions conceived and/or reduced to practice at Georgetown University during a research or other assignment given to a staff member pursuant to a research project, grant or contract, or any other University administered program; or utilizing facilities, equipment, funds, or other contributions of the University; and provided that the University has not entered into a research grant or contract agreement with express provisions to the contrary, are assigned to the University. Inventions made by a staff member exclusively on his/her own time and without the aid of any Georgetown University resources are the sole property of the Inventor. Click here to download a copy of the Georgetown University Intellectual Property Policy (revised May 4, 2006).

What happens if I move to another university or institution?

According to Georgetown policy, any royalties or other payments to which you would be entitled would continue to be disbursed to you.

Whom do I contact if I need a copy of the patent application?

You may contact Silvana Alcocer at 202-687-0843.

Why do I need to have an MTA to transfer materials?

Many providers of materials want to have written agreements to be sure that there is a common understanding of how the materials can be used. Unfortunately, some proposed agreements undermine an academic scientist's freedom to carry out future work, exert excessive rights of ownership, or place investigators and their universities at unnecessary risk. If the provisions in the proposed agreement conflict with the academic missions or create unnecessary risky, the University feels obligated to remove the conflict by changing these terms. PRINCIPAL INVESTIGATORS ARE NOT AUTHORIZED TO SIGN THIS AGREEMENT ON BEHALF OF THE UNIVERSITY.

What holds up the MTA negotiation process?

One factor that is out of the control of OTC is the willingness of the provider to negotiate, and the timeliness of their negotiation. However, often the OTC staff member has enough experience to know which negotiations may be difficult or slow. Investigators who ask about prior experience with a source of material may learn of likely problems, and sometimes may be able to find another source of the material, or use a substitute that will be easier to acquire.

What is a confidentiality agreement?

A confidentiality agreement is an agreement whereby one party agrees to hold the proprietary technical and/or business information of the other party in confidence. Confidentiality Agreements (CDAs) or Non-disclosure Agreements (NDAs) are a standard tool of the trade, and many companies are amenable to having access to a technology under the terms of this type of agreement. Only Claudia C. Stewart, Vice President of OTC can sign a CDA on behalf of The University. PRINCIPAL INVESTIGATORS ARE NOT AUTHORIZED TO SIGN THIS AGREEMENT ON BEHALF OF THE UNIVERSITY.

How do I give notice of copyright?

The form of the copyright notice used for "visually perceptible" copies--that is, copies that can be seen or read, either directly (such as books) or with the aid of a machine (such as films)--differs from the form used for phonorecords of sound recordings (such as compact discs or cassettes). The notice for visually perceptible copies should contain all three elements described below. They should appear together or in close proximity on the copies.

1. The symbol (C) (letter C in a circle); the word "Copyright"; or the abbreviation "Copr."

2. The year of first publication.

3. The name of the copyright owner.

Example (c) 2012 Jane Doe

From: Copyright Notice, Circular 3, U.S. Copyright Office.

What is a license?

Generally speaking, a license is a legally binding written document in which one party, having definable rights in a property, transfers or grants all or some part of those rights to another entity for some type of consideration (% royalty, up-front fee, milestone payments, and/or equity).