FAQ

The FAQ section answers common questions asked by grant applicants and other visitors to the site.  Questions are organized into the following categories; general, research plan, commercialization and intellectual property.

Q. What is POC-CENT?

Answer:

POC-CENT is the Point of Care Center at the University of Cincinnati, which focuses on neuro-diagnostic tools and techniques that fall under the definition of "point of care". For more information, you may refer to the homepage, http://www.ece.uc.edu/POC-CENT.

Q. When am I assigned my advocate?

Answer:

After your Letter of Intent has been reviewed and approved for grant proposal, you will be assigned an advocate from the POC-CENT team.

Q. Who will be reviewing my grant proposal?

Answer:

Two members of the POC-CENT team will be conducting the internal reviews along with a number of external reviews conducted by researchers and experts in the field.

Q. How do you identify clinical need?

Answer:

State how treatment could be improved on a basic level.  Weaknesses could include the amount of time the procedure takes, the quality/reliability of the results, patient safety etc Investigate whether or not the current devices and instrumentation are properly designed for treatment of the disorder.  Common difficulties for devices could include intensive training to operate device, difficulty interpreting results, size and form of device etc.

Q. What previous research should be included?

Answer:

Included research should identify where the research currently stands and how new research will contribute to the current pool of knowledge.  Extraneous and impertinent information should be excluded from the proposal.

Q. Why is stating barriers and limitations important?

Answer:

If you fail to address key limitations of your study (including threats to external validity) and the reviewers notice that, you could be held accountable scientifically (in the form of a poorer grant score or evaluation) for failing to address the limitations of the research you are proposing.

Q. What should be included in terms of Intellectual Property?

Answer:

The following should be included:

       -What is the status of the intellectual property involved?

       -Who "owns" the intellectual property?

       -What protection, if any, have you filed for?

       -What rights does the proposal writer have?

       -Is there a potential for worldwide rights?

Q. What is a patent?

Answer:

A patent is a government-granted right to exclude competitors from practicing an invention for a limited period of time - formerly 17 years from the date of issue and now 20 years from the date of application. This right can be licensed to third parties in return for fees and royalties. Thus a patent is a means of securing economic benefit from an invention. An invention must be new, useful and unobvious to qualify as patentable.

Q. Does working with industry interfere with my right to publish?

Answer:

UC policy does not permit POCCEN to agree to terms that would stop you from publishing your work. However, you may be asked to submit manuscripts for pre-publication review and to delay publication at the sponsor's request, long enough to permit the filing of a patent application.

Q. Can I patent a discovery after publishing it?

Answer:

In the US we have a year from the date of first publication to file a patent application. In virtually all other countries a patent application cannot be filed if there has been any prior publication. The only exception to this rule is provided under an international treaty specifying that if a patent application has been filed in the U.S. prior to publishing, we are allowed a year from the application date to file in other countries. Accordingly, we encourage you to submit your invention disclosure to this office as early as possible before submitting your findings for publication in order to ensure maximum opportunity for us to seek industry interest and to consider worldwide patent protection.

Q. Why is the university interested in patents?

Answer:

The University, as owner of inventions made by its faculty, students, staff, can license patents to companies that know how to turn the invention into commercial products or services. (See Policy.) In the ideal case, developing a "raw" invention into products and services desired by the public can create jobs, increase government revenues through taxes, and provide additional revenue to the inventor and University through patent licensing fees.

Q. What about sponsors?

Answer:

Sponsoring agencies sometimes require the University to disclose inventions that arise from work they fund. If the research that led to your invention was sponsored, please give details and a reference to the contract or grant agreement.

Record keeping is important. The United States grants patents to those first to conceptualize an invention and diligently reduce it to practice. The date the full conception of the invention occurred, the date the idea was put into practice, and diligence in translating concept to practice are key items to document. Inventors can document their research process from conception to reduction to practice by keeping journals written in ink in bound notebooks, each page dated and signed, with witnessed signatures. Notebook witnesses must be able to testify that they understood what the invention was and how it operated and that what you wrote in your journal was actually witnessed on the date entered. If additional materials are pasted in, a written reference should be made to them at the time of entry.

Q. What is the PCT (Patent Cooperation Treaty)?

Answer:

PCT stands for the Patent Cooperation Treaty (text). PCT patent applications are administered by the World Intellectual Property Organization. The Patent Cooperation Treaty permits an inventor to file what is called a PCT patent application. The Treaty is the result of an effort by many countries to provide some streamlining of patent applications across several countries at once. The US Patent and Trademark Office has additional information about PCT.

Q. What benefits flow from a PCT application?

Answer:

For an applicant who has filed a patent application in a particular country, a PCT application offers a way to postpone having to make decisions about filing patent applications in other countries. If there were no such thing as the Patent Cooperation Treaty, then the only opportunity to postpone making decisions about foreign filing would be the opportunity provided by the Paris Convention. Under the Paris Convention, someone who files an application in one country is forced to make a decision, within one year, as to whether to file patent applications in other countries which would claim priority from the first application. A PCT application offers a way to extend the time during which a decision must be made about foreign patent filings, for a longer period than the decision-postponement period provided by the Paris Convention. By filing a PCT application, the applicant can postpone for 20 months (rather than 12 months under the Paris Convention) the decision about whether or to spend the money for foreign patent filings. In addition, assuming that the first application was filed in a country that has adhered to Chapter II of the Patent Cooperation Treaty, it is possible to perform a step called "demanding preliminary examination" which permits postponing the decision about foreign filing (in many countries) until 30 months after the priority date.

The PCT process is helpful to those who don't have enough money to file in several countries, but who expect to have enough money at a later time. A PCT application provides a convenient way to keep the options open for foreign filing for up to thirty months

Q. How do patents differ from trade secrets?

Answer:

There is a tension between the notion of trade secrets and patents. One approach to protecting intellectual property is to hold everything as a trade secret. The decision to apply for a patent includes necessarily a decision to take some fraction of one's trade secrets and to give them away, in return for the grant of a patent.

The decision to apply for a patent does not necessarily require giving up all of one's trade secrets, however. One might have trade secrets on inventions A, B, and C, and applying for a patent on C might not require giving up the trade secret status of A and B. However, to obtain a U.S. patent on C, it is necessary that the application contain (1) enough to enable one skilled in the art to practice C and (2) the best mode known to the applicant for practicing C. This might require revealing A and B in the application. If so, it would probably make sense to seek patent protection on A and B as well as on C. Depending on the time sequence, one could patent an invention and simultaneously keep secret an improved version of the invention. For example, if a patent application for invention A is filed, and if an improvement A+ is conceived after the filing of the patent application on A, the improvement A+ could be kept secret.

One should keep in mind, however, that it is difficult to keep information "secret" at a public institution. Generally, we do not deal with trade secrets. Also, the U.S. Patent Office has announced plans to begin publishing patent applications 18 months after filing.

Q. What is a Provisional Patent Application?

Answer:

Effective June 8, 1995, as a consequence of the adherence of the U.S. to GATT, it is possible to file what is called a Provisional Patent Application with the U.S. Patent and Trademark Office. The Provisional Patent Application is intended to be a relatively low-cost way of postponing the cost and effort of drafting and filing a full patent application. The provisional application need not contain claims, and the filing fee is modest ($150 for large entities, $75 for small entities). The applicant may then wait almost a year before filing a patent application. The twenty-year patent term that runs from the first U.S. filing date does not start with the provisional application, but instead begins only with the date of the subsequent patent application. As a result, one may postpone the start of the 20-year patent term by up to one year by the use of a provisional patent application. The provisional application may serve as a priority document for non-US convention filings.

 

Under U.S. patent law, the provisional application is subject to the same burdens under 35 U.S.C. § 112 as a patent application. This means that the provisional application must be complete enough to enable one skilled in the art to practice the invention, and means that the application must disclose the best mode known to the applicant for practicing the invention. These requirements are likely to lead to difficulties for those who file sketchy provisional applications. One who files a provisional application (and who fails to satisfy the requirements of § 112) would be making a mistake to sit back and rely on that application as a justification for waiting eleven months before taking the time and trouble to prepare and file a full patent application.

 

A second potential drawback of the provisional filing is that it postpones, by a year, any hint or clue from a patent examiner as to whether or not the invention is likely to be patentable. No search report or office action will come during the pendency of the provisional application; they will only be received after the filing of the patent application. For the applicant who is considering whether or not to file patent applications in countries outside of the U.S., the use of a provisional application virtually guarantees that no clues to patentability will be received from the U.S. Patent Office that might assist in deciding whether or not to spend the money on foreign filing. The applicant who files a patent application (rather than a provisional application) may, in contrast, receive an Office Action before the year is up for making foreign-filing decisions, and the content of the Office Action may be helpful in deciding what to do about foreign filing.