An offer to sell, a picture in a newsletter or a demonstration to a small group of people may be all it takes to disclose an invention for patent purposes. Students vying for the $10,000 prize in the The Schoofs Prize for Creativity are advised to hold their secrets closely until they are ready to disclose. Patent experts from the Wisconsin Alumni Research Foundation recently advised undergraduate inventors competing in The Schoofs Prize for Creativity as part of the competition seminar series.

WARF Patent Agent Marnie Matt and Licensing Agent John Hardiman covered a wide range of information regarding the ins and outs of the patent process from disclosure to licensing. Students are not required to obtain a patent as part of the competition, but are encouraged to look into the patentability of their work. Students learned that the process can be complicated and expensive when issues such as foreign rights, trademarks, copyrights, trade secrets and policing are involved.

Karsten Baass (left) Jeremy Monnett (Right) and Anthony Shakal (rear) test their foldable wrench to failure in the mechanical engineering central service shop. The team is entering their wrench in Brainstorm: the Schoofs Prize for Creativity. (31K JPG)

Market size and policability are big considerations. With the cost of obtaining a patent running between $15,000 and $20,000, the inventor must be sure the market can return the investment. In addition, the inventor must be able to police a patent once it's awarded. If others infringe on a patent and the inventor has no way of proving the infringement, the patent does little good.

"I've seen a lot of good technology get rejected by WARF because it could not be policed," says Matt.

Getting the patent is just the beginning of the work. In order to license a patent, the inventor must learn to market as well and as educate the license associate about the invention.

Foldable wrench (19K JPG)

Licensing associates, intellectual property coordinators and patent attorneys all have strong generalist technical backgrounds, but they need help in learning the required technical details of an invention in order to do their job well.

"Since the inventor likely reads the specialized journals and trade magazines in the field of the invention, the inventor probably has a good idea of which industry people to contact. This kind of information is important to a licensing agent," Hardiman says.

In order to help license an invention, inventors should also identify the commercial advantages of their product and be prepared to answer some questions.

• Is there an exhibitor directory that might be useful to your licensing associate?
• Does it look like any company is already using your technology?
• Are they using other methods to get a similar result?
• How would your technology help a particular industry?

Inventors should be available to field questions. Potential licensees often have unexpected questions that are best answered by the inventor. Sometimes these very questions can be a source of ideas for future research that may further increase the benefits of your technology.

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Copyright 1996 The Board of Regents of the University of Wisconsin System Date last modified: Monday, 04-Nov-1996 00:00:00 CST Date created: 04-Nov-1996 Content By: perspective@engr.wisc.edu Thank you for visiting!