The United States patent law requires that an invention meet the following three criteria, in order to be eligible for patent protection:
- Novelty: The invention must be demonstrably different from already available ideas, inventions or products (known as “prior art”). This does not mean that every aspect of an invention must be novel. For example, new uses of known processes, machines, compositions of matter and materials are patentable. Incremental improvements on known processes may also be patentable.
- Usefulness: For an invention to be patentable, it must have some utility or application, or be an improvement over the existing products and/or technologies.
- Non-obviousness: The invention cannot be obvious to a person of “ordinary skill” in the field. Non-obviousness usually is demonstrated by showing that practicing the invention yields surprising, unexpected results.
After evaluating the invention disclosed, the TCS staff will determine whether a potential invention meets these criteria. Some university research projects are clearly oriented toward invention from the outset. For example, the goal of a project may be to develop a new alloy, or it may be to find a new test for AIDS. If the research is successful, the result is likely to be an invention. Other research at UConn may not lead to a new discovery or invention. For example, a study of the effects of radiation on plant growth might identify previously unknown effects, but this new knowledge, while valuable and publishable, is not necessarily an invention. However, an invention could result if, while studying the radiation effects, the researcher discovered that a specific radiation frequency – applied at a particular period of plant gestation – increased the size of the mature plant by an average of 5 percent. The technological process of applying that radiation frequency at a specific time in a plant’s life could be an invention.
Sometimes identifying which part of a complex research effort might constitute an invention is very difficult. History is replete with examples of inventions buried in scientific studies focused on other issues. Frequently, new tools or techniques are developed to meet a particular research objective, but are overlooked once the objective is reached. These tools and techniques may constitute valuable inventions. This example illustrates that the scope of possible inventions can be very broad. If you are unsure if what you have discovered is an invention, contact TCS. We can also advise on alternatives to licensing.