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Overview of the intellectual property (IP) and patenting process at Penn State. Designed especially for faculty and graduate students in the college of ag.

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Commercialization for Research Impact

Penn State has a rich history of technology transfer, which has impacted millions of lives. Researchers from the College of Agricultural Sciences (CAS) have spearheaded many of these contributions, including the practical application of artificial insemination, animal nutrition, mushroom science, food labeling and purity standards, highway soil erosion, plant genetics, bio-materials and bio-medicine, and many more.

This list continues to grow through contributions from current CAS researchers as Penn State's research enterprise grows and as the call to commercialize discoveries for the benefit of society comes both from funding agencies and from the highest levels of University administration.

Pre-Invention Disclosure

Researchers are invited to have "pre-disclosure" conversations with the College's Entrepreneur in Residence at any time to discuss the possibility of commercialization. It is never too early for this conversation and it may enable access to some extra funding and support if the research being conducted has market potential.

Inventors may also initiate a pre-disclosure conversation with the Office of Technology Management (OTM) for advice on IP protection and guidance on preserving their ability to protect an invention. The OTM is responsible for managing, protecting, and licensing the intellectual property of faculty, graduate students, and staff at all Penn State locations.

Invention Disclosure

Inventors should contact the OTM to discuss making an invention disclosure at the point when a new concept is reduced to practice. Please note that the invention disclosure should be made before the inventor makes any type of "enabling public disclosure", which may include technical presentations and/or the submission of a manuscript for review and publication.

Once the invention disclosure is filed with the OTM, a Technology Licensing Officer (TLO) will reach out to the inventor to discuss the invention and any next steps relevant to establishing and protecting its value. Patenting is often pursued for inventions with significant market potential, though inventions may also lend themselves to trade secret or copyright protection.

Provisional Patent Application

If the TLO perceives that an invention is patentable, a provisional patent application may be filed. The provisional patent application acts as a sort of place holder for a period of one year, which allows the inventor to make public disclosure about the technology without jeopardizing patentability. These public disclosures may include academic papers and talking to potential end users.

Technology Licensing Officers (TLO) collaborate with researchers to establish the market viability of an invention. While intellectual property protection is still in-process, inventors should keep the TLO informed about relevant conversations with industry, and about any pending publications. Inventors will also be tapped by the TLO and the Associate Dean for Research to prepare for a Patent Review Committee (PRC) review of the invention. The PRC, which is comprised of technology management officials and research deans from Medicine, Engineering, Earth and Mineral Sciences, Agricultural Science, and the Eberly College of Science, meets quarterly to review disclosures and make decisions about which technologies should be resourced through the non-provisional patenting process. If a patent is not pursued, the disclosure may be brought back to the committee for reconsideration after more development.

The provisional patent is the first step in the patenting process; its primary function is as a placeholder on the way to non-provisional patenting. Notably, the provisional patent is never reviewed by the United States Patent and Trademark Office (USPTO). Rather, the review process begins after a non-provisional patent application is filed.

Non-Provisional Patent Application

Decisions about which technologies to advance to a non-provisional patent are made within the context of limited resources and account for a number of factors, including industry interest in the technology and/or the likelihood of strong claims being allowed. When the OTM feels that an invention is likely to be issued claims which are sufficiently broad and enforceable, the decision may be made to invest into a non-provisional patent application.

The non-provisional patent application process typically takes three or more years to complete and involves collaboration between the inventor, the OTM, and Penn State's IP attorneys. This process is reviewed in detail by Penn State's Inventor's Guide to Technology Transfer.

Please Note:

Patent laws vary significantly by country and it is very important to limit "public disclosures" until the proper paperwork and documentation is in place. Limits on public disclosure include the sharing of enabling information related to the intellectual property (IP) - including the publication of a related manuscript or presentation at a conference. Please also be sure to contact the OTM before sending materials to an outside collaborator in order to discuss the need for a Non-Disclosure Agreement or Material Transfer Agreement.

Take the next step

Learn more about your options to pursue an industry license or business startup.

Education and Resources

Learn more from the Office of Technology Management (OTM), which includes an inventor's guide to technology transfer, a video on the basics of IP, and more.

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