Page 42 - Mass General Brigham - Innovators Guide 1.0

42 INNO V AT O RS GUIDE | M ASS GENERAL BRIGH AM

6

6 Patents

Patentability

A patent is a legal grant that gives the holder Essential to securing a patent is determining if an invention is truly novel,
the right, for a limited term, to exclude others i.e. has not been patented before nor is in the public realm. Lack of novelty
from making, using, selling, offering to sell, or is the most common reason for initial rejections.
importing the patented invention. Patents drive Licensing Managers partner with inventors to evaluate ideas within the
context of what is publicly known about the subject, termed “prior art.” This
economic growth by incenting inventors to may require the use of external patent counsel, which is arranged by the
publish their inventions in exchange for a limited Licensing Manager. The first step for the inventor is to become acquainted
term monopoly. with the prior art landscape (as described earlier).
It is often possible to uncover prior art in an hour or two of investigation.
The U.S. Patent and Trademark Office and Google are among the many
services an innovator can access. To understand the opportunity and
Patents are often core to the commercialization process because they are evaluate it accurately, it’s important to create a detailed written description
an asset hat the institution may use to grant lawful rights to practice under of the invention, and any references and other information as needed. Also
the patents to companies. Patents do not guarantee the right to make a key in the patent filing decision is whether the idea can be turned into a
specific product. In the U.S., the term of a patent is 20 years from the non- marketable product. As one would expect, not every invention disclosure is
provisional or patent filing date. appropriate for patent protection.
• Patents go through several stages before an official patent is granted.
Any patent that is not yet granted can be referred to as “patent pending.”
• Claims define the scope of the protection (i.e. which subject matter is
protected). Careful review of the wording of claims with your patent
attorney assigned by your Licensing Manager is crucial to long
term success.
• The U.S. Patent and Trademark Offices website (uspto.gov) provides
extensive background in nearly every aspect of patents.