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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?  

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