These are simply guidelines and should not be considered legal consultation

Patents

To obtain patent protection, an invention must be novel, useful and unobvious to someone skilled in the art. Patentable inventions include new processes, products, apparatus, compositions of matter, living organisms and/or improvements to existing technology in those categories.

A United States patent grants the patent assignee the exclusive right to exclude others from making, using, or selling the patented invention in the United States for the life of the patent, or 20 years from the date of applying. However, it does not give you the absolute right to practice your invention (there can be other patents for which you may need permission in order to practice freely).

Who is considered an inventor?

Under U.S. Patent Law, an inventor must contribute something new, useful and non-obvious to at least one claim of the patent. Making contributions to a technical paper or testing the invention are not by themselves sufficient to be considered contributing to the claims.

Having the correct inventors named on the patent is very important. If the inventors listed on the patent are incorrect, or if a rightful inventor is not named, the patent can be invalidated.

Generally, a public disclosure is a disclosure of the patentable concept that is complete enough to make it "enabling", presented to a sufficient number of people of "normal skill in the art", and made without formal obligation to keep the disclosure confidential. Examples may include publication in a journal, or on a website, and publication or presentation of an abstract, poster, or other document at a conference, and may also include the approval of a federal grant or contract.

How does publication affect patent rights?

A public disclosure before filing an application for patent protection will generally result in the loss of patent rights outside of the United States. You may still obtain United States Patent protection, however, if within one year of the public disclosure a United States patent application is filed. This is known as a grace period.

What is a "Confidentiality" or "Non-Disclosure Agreement" and why is it necessary?

A Confidentiality or Non-Disclosure Agreement (CDA or NDA) allows a party to discuss its confidential or proprietary information, such as unpublished data or research results, with another party that is interested in receiving the information. The agreement binds the receiving party to keep the information confidential and not disclose it to third parties. Without such an agreement, the recipient of the disclosed information could use or distribute proprietary information for any purpose, or the discussion would be considered public disclosure and could impact patentability.  

In some instances, the company will need access to a sample of your technology for testing. This is done under a Materials Transfer Agreement (MTA), which included appropriate provisions to protect associated rights.

It is always best to have a confidentiality agreement signed before in depth discussions take place. However, venture capitalists generally will not sign NDAs. This can be easily managed and is typically not a concern. The USC Stevens staff and community can help coach you.

What is the general process of patent prosecution?

A step by step guide to a very complex process:

• An attorney with the appropriate background is selected and a meeting between the attorney and the inventor is scheduled. 
• Sometimes a patent search is performed if the general area is heavily researched or common.
• A written description of the invention, including a background, why it is needed, and how the new invention differs from existing inventions is drafted based on discussion with the inventor. This is called the specification.  The specification often contains several drawings or figures.
  
• Once the specification is completed, then "claims" are drafted. Claims set forth exactly what the invention is and what is being "claimed' as new useful and non-obvious.
• The specification and claims are mailed together with the appropriate forms to the United States Patent and Trademark Office (USPTO). The application is assigned to a patent examiner that is familiar with the area; he or she reviews the application for completeness, and compares the invention to other patents and publication to make a preliminary determination of patentability.
  

It almost all cases the patent application is rejected.  We are informed of this via an "Office Action".  This first office action may take 18 months or more to receive.

The patent attorney responds in writing to the examiner explaining why the subject matter is patentable. The patent attorney may also make amendments to the claims to address the grounds for rejection.

The patent examiner may again reject all claims, or allow some. The office actions continue until the USPTO sends a "final rejection". It is no unusual that this process can take 5 or more years. The actual process is often more complex.   

 Why does USC care about IP?

• The university is contractually obligated to disclose and protect inventions that result from either government or industrial sponsored funding