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How does OTC decide which inventions to patent?
Once an IDR is received by our office, it is assigned to a Project Manager who reviews the invention and related art. The Project Manager then presents the invention at the Office of Technology Commercialization’s (OTC) bi-weekly assessment meetings and a determination is made on how to proceed. The assessment meetings are attended by OTC staff, patent attorneys from Legal Services and a representative from the Office of Technology Development. In the evaluation, the following factors are considered:
- Encumbrances
- Do we own the technology?
- Do any third parties have rights through contracts or co-inventorship?
- Stage of the Technology/Scientific Review
- OTC assumes that the science is valid in any IDR. However, we look closely at the stage of development. Early stage inventions are more difficult to license.
- Patentability
- Is the invention patentable?
- What scope of patent claims could we obtain?
- Would we have the freedom to practice/license in light of competition?
- Commercial Potential
- Can we identify one or more commercial products?
- How far along is the invention?
- How big is the potential market?
- What competitive advantages would this new product(s) have in the marketplace?
- Who are potential licensees?
- What are the hurdles to obtaining a commercial product or service?