IP Process

Technology Transfer

How does the IP / patent process work at Stevens?  OIE developed several helpful processes supporting Technology Transfer.  These consist of three inter-related areas: 

  • Pre-IP Process - developing market-focused technologies/applications
  • IP Process - patent process
  • Post-IP Process - commercialization and monetization

OIE offers IP/Patent Awareness Training Seminars to faculty and research staff members.  View our slide presentation of the most recent seminar (PPT 2.3M).

Terminology

Invention Disclosure – Notification document entitled: SIT Invention Disclosure Form.  The notice of invention form is intended to encourage the timely reporting of inventions to the Institute, OIE and Patent Committee, for patent consideration.  Key elements for completion in the document include:  Title of Invention, List of Inventors, General Description, Novelty, Utility/Usefulness, Method of Use, Possible Means of Commercialization, Experimental Verification, Publications (prior & planned), References, Sponsorship and Potential Licensees.  The disclosure is confidential and considered preliminary; a more complete disclosure may be required in order to satisfy university and legal requirements. 

Non Provisional (Utility) Patent Application – Similar in concept and requirements of the provisional patent application, the non provisional application must expand with detailed information and include claim/s.  The claims must particularly point out and distinctly claim the subject matter which you regard as the invention.  The claims define the scope of the protection of the patent.  Whether a patent will be granted is determined, in large measure, by the choice of wording of the claims.   A non provisional patent application is a complex legal document, best prepared by one trained to prepare such documents.  In addition to Claims, key categories of the non provisional application include: Title of Invention, Applicants and Inventors, Statement of Federally Funded Research, Background and Abstract of Invention / Disclosure, Specifications of Invention with Detailed Drawings, Cross-Reference to Related Applications,   The bar date to file a provisional or non provisional (utility) patent in the US is 1 year from the date of first disclosure, e.g. when the invention was presented in a public forum or publication. 

OIE– Office of Innovation and Entrepreneurship– Academic office within the SIT Provost organization chartered to address the need to radically change the process of technology commercialization in the university environment.  Among its many functions include the institute management of all its Intellectual Property IP (patents, trademarks, copyrights and trade secrets), from inception to protection.  OIE provides / ensures availability of resources to build and maintain state-of-art infrastructure and support to all research faculty enabling them to produce high quality IP.     

Office Action – In the United States patent law, an office action is a document written by a patent examiner in response to a patent application after the examiner has examined the application.  The office action cites prior art and gives reasons why the examiner has allowed (approved) the applicant’s claims and/or rejected the claims.  In situations where claims are denied it is the patent attorney’s responsibility to prepare a formal response to the office action within a specific period of time.  The response will present arguments against the examiners rejections.  Prior to preparing formal documentation the patent attorney will consult with the OIE and inventors to develop a filing strategy and gather appropriate information.   

Patent Attorney - Stevens has retained outside counsel (patent attorneys / agents) for the preparation, prosecution and docket management of all matters relating to the filing of patent applications with the USPTO and other foreign patent agencies.  Patent attorneys and their firms are selected based on their expertise and background in a wide range of technologies.   

Intellectual Property Committee (IPC) – Members of the Stevens Intellectual Property Committee are either appointed by the Administration and/or elected by the faculty as academic/research members covering all major school and/or curriculum disciplines.  Their primary responsibility is the oversight and administration of the Stevens Patent Policy.  This policy covers all matters relating to patents in which Stevens is in any way concerned.  The Stevens Intellectual Property Committee also includes legal representation provided by an outside counsel/patent attorney.  

Provisional Patent Application – A provisional patent application is designed to offer a lower-cost first patent filing in the United States.  Applicants are entitled to claim the benefit of a provisional patent application in a corresponding non-provisional (Utility) application filed not later than 12 months after the provisional filing date.  Provisional patents include all the basic elements required in a regular / non-provisional utility patent, with the exception of detailed claims.  The Stevens Patent Committee has adopted the “As Is” Provisional Patent Process, as a means to reduce the high cost legal expenses by having the inventor(s) first complete the “As Is” Provisional Patent Form, prior to OAS and outside counsel review and filing with the USPTO. 

Return to Inventor - In accordance with Sections 3 and 9 of the Stevens Patent Policy, the Patent Committee has the power and duty to release patent rights in an invention to the inventor or inventors when the invention is not accepted by the institute or the equities so indicate, subject to the inventor or inventors’ granting a shop right to the Institute. 

SME’s – Subject Matter Experts – Individuals within a specific industry and /or technology area, recognized for their accomplishments and/or knowledge in a specific field. SME’s may be either internal or external to the Stevens community.  They are available by special arrangements, via the OIE, to provide consultation, evaluation, and general reference guidance to support Stevens patent and commercialization initiatives. 

USPTO – United States Patent and Trade Office is the government agency responsible for examining patent applications and issuing patents.  A patent is a type of property right.  It gives the patent holder the right, for a limited time, to exclude others from making, using, selling, or importing into the United States the subject matter that is within the scope of protection granted by the patent.  The USPTO determines whether a patent should be granted in a particular case.  However, it is up to the patent holder to enforce his or her own rights if the USPTO does grant a patent. 

VC’s – Venture Capitalists – Individuals providing private equity capital typically to immature, high potential, growth companies (start-ups) in the interest of generating a return through an eventual realization event such as an IPO or trade sale of the company.  Venture capital investments are generally made as cash in exchange for shares in the invested company.