The INVO Process
If this is your first time to INVO, congratulations on exploring the world of inventorship! Invention Managers (IMs) at INVO are your contact with Northwestern University regarding your potential invention. If you do not have an IM to discuss your potential invention, please contact us at firstname.lastname@example.org or (847) 467-2097. Depending on the invention area, we will assign an IM to help advise you on next steps, which may include formally disclosing your invention, filing intellectual property, or understanding license negotiations.
Disclosing an invention is not always straightforward. INVO encourages all inventors to watch the “Disclosing Your Invention” video which addresses many common questions.
To disclose an invention to INVO, please complete the Invention Disclosure Form. If you have any questions, contact your assigned Invention Manager. It’s important that you disclose your invention to INVO prior to any public disclosure such as publications and talks so that INVO can protect it accordingly. Otherwise, you may be limited in the type of patent protection that may be acquired. In addition, INVO relies on inventors to disclose inventions since we must comply with sponsored research agreements with respect to reporting all inventions on your behalf.
Once the disclosure form is completed and signed by all inventors, please email the disclosure to: email@example.com.
Find more information for Student Inventors.
Invention Assessment & Provisional Filing
Once INVO receives an invention disclosure, it is triaged to the correct IM. Within 2-3 days of your disclosure, you will receive an email with an assigned NU reference number. Use this number when communicating with INVO about your invention. If additional information is required, you will hear from INVO staff within two to three weeks. Based on its due diligence, INVO will decide whether to file a provisional patent application within 60 days. INVO may also identify additional data in order to increase the chance of issuance.
Note: In its diligence, INVO does not assess scientific merit. Instead it reviews patentability and commercial opportunity.
Watch the “Patenting Your Invention” video at INVO’s website. After a provisional application is filed, INVO has one year from the filing date to file a non-provisional patent application. This application is neither reviewed nor published by the USPTO. INVO does not convert all provisional applications to non-provisional applications. The decision to proceed may be based on the ability to strengthen the application, the technology’s commercial viability, existence of prior art, and other factors.
Your involvement in the patent process will vary. INVO and outside counsel may discover prior art that looks similar to the invention at hand. You are in the best position to explain how your invention differs. As INVO and its outside counsel write the non-provisional patent application, you will have an opportunity to review and suggest revisions.
Once the non-provisional application is filed, it can take anywhere between 18 months to several years for a response from the USPTO. The USPTO examiner will review the non-provisional application and either allow or reject individual claims in the application. The USPTO response is called an “Office Action.” There may be a number of Office Actions. INVO has 90 days to respond to any Office Action. However, INVO may file for an extension under extenuating circumstances.
While INVO is sensitive to your time, your help will be required in making a strong patent. For responses requiring technical expertise, INVO may need assistance in clarifying why the USPTO rejections are not valid. For straight forward responses or those that are strictly legal, INVO may respond to Office Actions without consulting you. Do not be stunned if many or all of the claims are rejected. Rejections are part of the normal process. INVO will make every effort to give you one month to respond to Office Action comments before sending a formal response to the USPTO. If it appears that the USPTO will not allow any claims, or if the allowable claims are of little commercial value, INVO may choose to abandon an application during this process.
You will be notified of the issued patent and the US patent number when it is available. You may claim to “have a patent” once a non-provisional is issued, not just filed.
INVO has an online database of inventions called Flintbox which allows industry players to search Northwestern technologies. Inventions will be posted only if initial IP protection has been filed. The marketing material is based upon information provided on the invention disclosure. Each invention is also tagged with keywords so that when companies express interest in learning about technologies, INVO can search inventions by tags. INVO notes the list of companies and contacts that the inventor provides on the disclosure and uses them as a starting point for identifying potential licensees.