The Patenting Process

Seeking a patent for a discovery does not prevent publication, and in most cases, does not delay publishing. However, to retain the potential for foreign patents, a U.S. patent application must be filed before any description of the invention is publicly disclosed in an article, abstract, poster thesis, oral presentation, or other public format. More information on publications and public disclosure is available. To find out if your discovery should be patented, contact the Office of Research and Sponsored Projects. Staff there will work with outside patent attorneys to accommodate your publishing dates. The best results are achieved, however, if you submit a description of the invention at least three months in advance of the first public disclosure, to allow time to assess patentability and commercial potential and to draft a patent application.

Step 1: Disclosure

The technology transfer process begins when you submit a confidential Invention Disclosure Form to the Office of Research and Sponsored Projects. This form is available on this website. The form asks for such information as a description of the invention, names and contact data for everyone involved in making the invention, funding sources for the research that led to the invention, prior publications or public descriptions of the invention, and commercial contacts in the field of the invention.

Step 2: Evaluation

A technology transfer professional in the Office of Research and Sponsored Projects will interview you regarding the invention disclosure. The evaluation process involves two components: a patent and literature search to evaluate the uniqueness of the invention, and a marketability survey of the literature and industry contacts. The goal of these efforts is to answer two basic questions: Is your invention patentable (new, useful, and not an obvious improvement on an existing invention)? Is your invention licensable (will a company pay Portland State University for the right to commercially practice the invention)? Portland State has limited funds for the expensive process of patenting, so staff must make informed decisions about which inventions have the most potential to be legally protected and become valuable products. There doesn't necessarily have to be a massive market awaiting the product. But there does have to be some industrial or entrepreneurial interest in obtaining rights to develop a product, in funding further Research and Development in hopes of realizing your invention's value, or in starting a company to produce it.

Step 3: Patenting

Inventor involvement is important to the entire patent and licensing process. The degree of involvement varies according to the nature of the invention and your availability and interest. Your expertise is especially helpful during the evaluation for patentability, in the patent application process, in identifying licensing prospects, and in meeting with companies expressing interest. Inventors typically provide technical evaluation of previous patents and publications in their field, supply information to the patent attorney and review draft applications and responses to government actions, and discuss technical aspects with interested companies. Regardless of the amount of involvement, inventors are kept informed of the evaluation process and any actions taken, and their input is considered in making decisions about the University's protection and licensing of the invention. However, final responsibility for such decisions rests with the Office of Research and Sponsored Projects. The disclosure evaluation process may take anywhere from a week to three months, and possibly longer, depending on the complexity of the invention and the target industry. After filing a patent application, it can take from one to three years for the patent to be issued or denied by the U.S. Patent and Trademark Office. It may take five years or longer for commercial sales to begin, depending on how much work needs to be done to develop and market a product based on the invention. It takes an average of eight years after an invention is disclosed to the time when it is receiving significant royalties on sales.

Step 4: Licensing

For inventions to reach the marketplace for the benefit of society, the cooperation of industry is necessary. A patent license allowing a company to use your invention formally establishes this cooperation. Marketing the invention to industry is critical to successful licensing. You can make a valuable contribution to this search, because you are probably familiar with potential markets for the invention. Portland State disclosure guidelines request a list of companies that manufacture and develop related products. Inventions made by Portland State faculty or staff in the course of their employment, using University time, facilities, or funds, are considered the property of the institution. If you're not sure whether your invention should become the property of the University, clarify your rights by checking with the director of Technology Transfer. The University should be informed about the circumstances involved in making the invention and your role in its conception and development. The Office of Research and Sponsored Projects handles licensing negotiations, and the State Board of Higher Education approves any license agreements with industry. Any income resulting from licensing patent rights is shared with the inventor. Net royalties, after the Office of Research and Sponsored Projects is reimbursed for patent costs, are divided among the University, you, and your department as follows:

The University's share of royalty income is deposited in a designated "Higher Education Invention Fund" for the advancement of research and for promoting other faculty and staff inventions. Your department's share usually goes toward supporting your research.

Responsibilities to Research Sponsors

Most company-sponsored research agreements specify the ownership of patent rights for inventions arising in the course of the research work. The University generally agrees to grant industrial sponsors, on mutually agreeable terms, a royalty-bearing license to commercialize any inventions arising from the research. Federal legislation allows universities to retain patent rights for inventions made in the course of federally sponsored research and development, with some exceptions. Researchers have an obligation to disclose to the Office of Research and Sponsored Projects their inventions from federally funded research. The University must make a disclosure of the invention to the government and file patent applications when appropriate.