The University of Illinois Office of University Counsel

Inventions and Patents

Inventions and PatentsAn invention is “anything under the sun” made by humans.  Inventions include many types of discoveries and technical innovations, including processes, methods, machines, articles of manufacture, devices, chemicals, and compositions of matter.  An invention, if novel, useful, and non-obvious, may be protected by a patent.

The U.S. Constitution recognizes the value of innovation to the country, and authorized congress to enact laws protecting inventions.  Pursuant to these laws (Title 35, United States Code), the owner of a patent is provided with a time-limited right to exclude others from making, using, or selling an invention.  In exchange for this right to exclude, the published patent document fully describes the invention so that others having skill in the art may make and use the invention.  The “claims” of a patent document—the numbered paragraphs at the end of the patent document—legally define the boundaries of the invention and the owner’s right to exclude others from exploiting it. 

Under United States law, an inventor is a person who takes part in the conception of the ultimate working invention.  Because inventorship is tied to the claims of a patent application, the inventorship on the ultimate patent document may change as the claims in the application change in the process of obtaining the patent.  At the University the final inventorship determination is referred to outside patent counsel. 

When an employee of an organization is an inventor, most organizations will own that employee’s invention, either by an employment contract or by organization policy.  According to the University’s rules, inventions created by University employees as a result of their duties, or by any person (including a University employee) through the use of University resources such as facilities, equipment, funds or funds under the control of or administered by the University, are the property of the University.  See “General Rules Concerning University Organization and Procedure,” Article III, Section 5; http://www.bot.uillinois.edu/general-rules.  Inventors who create intellectual property in which the University has an ownership interest are required to submit invention disclosures to the appropriate campus Office of Technology Management.

Owners of inventions may apply for patent protection, and often rely upon patent attorneys to draft the claims and “prosecute” the patent.  Patent applications containing a drawing, written descriptions and claims are filed in the United States Patent and Trademark Office (“USPTO”) and/or in various regional or national patent offices of foreign countries.  Patent applications are examined against prior patents and publications and the examiner responds with an “office action” accepting (rarely) or rejecting (typically) the claims in the application.  For rejected claims, the patent attorney, with the assistance of the inventor, will respond to the examiner’s arguments, rebutting them and/or amending the claims of the application.  To obtain an issued patent, one or more responses to office actions are usually required.  An issued patent will expire twenty years from the filing of a patent application, and maintenance payments to the USPTO will be required. 

On March 16, 2013, the United States will switch from a “first to invent” system to a “first to file” system for newly filed patent applications.  This will mean that the first inventor (or invention owner) to file a patent application will be awarded the patent.  As before, certain public disclosures of an invention will bar the inventor’s ability to obtain a patent.  However, where there previously was a one year period to file an application after a printed publication describing the invention, that “grace period” has been significantly curtailed.  Because the revised patent laws allow for certain proceedings against those who may have wrongfully obtained a patent, it remains important for inventors to document their research, for example, in a laboratory notebook. 

At the University, the Offices of Technology Management receive and evaluate invention disclosures, make decisions on whether to seek patent protection for University inventions, and market and license University inventions for commercial exploitation.  Creators of University intellectual property are normally entitled to a portion of the net proceeds the University earns from this commercial exploitation of the invention.  For more information, please visit the websites of the Office of Technology Management:

http://otm.uic.edu/ (Chicago Campus)

http://otm.illinois.edu/ (Urbana-Champaign & Springfield Campuses)

For more information on the U.S. Patent System, please see The United States Patent & Trademark Office website: http://www.uspto.gov/