INVO's Evaluation
What happens after you submit your disclosure?
- Within 2-3 days: You will receive a confirmation email with your Northwestern number assignment, which will be used in all future communications with INVO, and disclosure submission date. If you do not have an Invention Manager or IM, one will be assigned to evaluate your invention.
- Within 2-3 weeks: Our staff may contact you for additional information about your invention if needed.
- Within 30 days: INVO will decide whether to file a provisional patent application.
Evaluation considerations
INVO does not assess an invention's scientific merit. Instead it reviews patentability and commercial opportunity. INVO evaluates each invention according to United States Patent and Trademark Office (USPTO) guidelines: all inventions must be new, useful and non-obvious.
Other considerations as we evaluate new inventions:
- Is the invention eligible? The USPTO will not patent mathematical equations or abstract ideas that are not implemented.
- Is the invention ready for patenting? If your patent is disclosed too early, it may have insufficient data. This is significant for a few reasons:
- Priority date: After one year, a provisional patent application converts to a utility application. If your original provisional application is incomplete and new data is added to the utility application, the USPTO will note the discrepancy between applications and change your priority date to your conversion date. If an inventor with the same invention files between your original provisional filing date and new conversion date, he or she would have an earlier priority date.
- USPTO detail requirements: Each invention application must be "enabled," or include sufficient details for others in the field (or "skilled in the art") to recreate it.
- Can the invention be commercialized? Northwestern files patents for inventions that can become a product or incorporated into a product and be licensed. Note that some inventions (such as research tools, software, copyright and methods) can be commercialized without patents. Northwestern also considers whether there is a market for the product.
- Are there regulatory hurdles associated with the invention? These potential hurdles will not prevent filing, but they are a consideration weighed by invention managers.
- Does the filing fit in INVO's budget? Patenting is expensive; each application costs between $25,000-$30,000 in the United States and more than $100,000 in other countries. INVO must determine which inventions have a great chance of being licensed and making it to the public as a commercialized product.
- Are there prior inventions that look to similar to this invention? Invention managers spend time identifying "prior art," or similar inventions that have already been patented, because this one of the USPTO's primary factors when evaluating an application. If INVO files prior art before the application is filed, you can help identify factors that differentiate it from those inventions and our legal team can build a stronger case.
- What potential "claims" can be pursued? Our attorneys will break down your invention into smaller unique elements or "claims." These may be broad or, if many similar patents exist, the claims may be smaller or "narrow." By dissecting your invention, we may be able to protect parts of your invention if the entire technology cannot be patented.
Evaluation outcomes
The disclosure will fall into one of the following categories:
- The invention is ready for patenting
INVO will file a provisional application with the USPTO. Learn about the provisional application, which is the first step in the patent application process. - The invention requires more data
The invention may go through a second round of evaluation after more data is received. It would then be either accepted for patenting or deemed unpatentable. - INVO will not move forward with patenting
The invention is archived or released back to its inventors. After his or her invention is released, an inventor may seek ownership of the IP. INVO can assist inventors in obtaining the necessary waivers for research sponsor approval to transfer ownership from Northwestern to the inventor(s).