What is an invention?
An invention can be defined as the conception and/or development of a product or process which is new and useful.
Your research outcome might constitute an invention if it meets some or all of the following criteria:
- It can be described as new, novel, unique and/or inventive
- It is unusual or unexpected
- It solves a significant problem
- It has commercial application and commercial value
- It is useful.
What do I do if I believe I have developed an invention or idea which has potential for technology transfer?
You should promptly inform your R&D Outcomes Manager, either directly, or via your appropriate line management. The first step usually involves describing your invention in writing on the web-based invention disclosure form (http://disclosures.csir.co.za). Note that it is a duty to make disclosure, under the CSIR IP policy and in terms of the IPRPFRD Act. The R&D Outcomes Manager will screen the invention initially to determine whether it meets the criteria for an invention disclosure and advise on the next steps. These might include further R&D, supplying further data (technical and/or commercial), prior art searches, etc. The next stage is a meeting with Licensing & Ventures to discuss and evaluate the opportunity and decide on next steps.
What does the ‘invention disclosure’ process involve?
This is the process of formally describing and recording an invention, together with relevant associated information, in order to set in motion the process of technology transfer. It involves an evaluation of the invention for patentability (or other form of intellectual property protection) and for its potential commercial and/or social value.
At the CSIR, the invention disclosure process has two components:
- Completing an invention disclosure form, and
- Holding an invention disclosure meeting with the Licensing & Ventures Unit, during which an “NABC” presentation is made by the inventor, setting out the Need for the invention, the Approach taken to address the need, the Benefits of the technology and the Competition.
What are the requirements for an invention to be patentable?
A patentable invention must be novel, have an inventive step (ie be unobvious) and be useful. It must also consist of subject matter which is eligible for patenting.
In order to be considered new, an invention must not have been made available or disclosed to the public before the patent application is filed.
An invention is considered to have an inventive step if such step would not be obvious to someone skilled in the technical field concerned.
Examples of subject matter which is not patentable are discoveries, theories, literary, musical and aesthetic works, business methods and computer programs.
Where the decision is taken to formally protect IP, the CSIR will:
- select the most suitable form of protection, as well as for scientific merit, practical application, and commercial potential,
- evaluate where to seek intellectual property protection and when to file a patent application,
- prosecute applications for IP rights and
- ensure that any relevant third party rights are taken into account.
At the CSIR, we evaluate each case on its merits to determine which form/s of IP protection, if any, will represent the most effective route for dissemination and technology transfer.
- Technology packages and technology demonstrators
Sometimes useful new developments are not suitable for protection via patenting, or the most viable route to commercialisation might be to protect the IP as a trade secret. Such developments should also be disclosed. These might be in the form of, or develop into, technology demonstrators or technology packages. Note that these categories are not mutually exclusive, so a technology demonstrator might be a precursor of a technology package, and both a technology demonstrator and a technology package may also qualify as inventions.
- A technology demonstrator can be defined as an output of an experimental development project that is in a state of technology readiness to enhance capability, manufacture a product or deliver a service in a new manner. Technology demonstrators are evaluated by the R&D Office.
- A technology package is an R&D output that is available for transfer in tangible form eg product, process, data pack, software. It is developed and packaged into a state that allows the recipient to use, manufacture or reproduce it without the requirement for any additional development work by CSIR.
Patent searches are carried out for various reasons:
- A state-of-the-art search identifies publications, patents (including published patent applications, patents which are in force, and expired patents) and patenting trends in a particular field. This is useful for researchers to keep track of developments in their fields on interest.
- A novelty or prior art search identifies publications and patents (including published patent applications, patents which are in force, and expired patents) which disclose inventions or technologies relevant or similar to one’s new invention at an earlier date.
- An infringement or freedom-to-operate search identifies patents which are in force whose claims might cover one’s own invention or certain features of one’s invention.
Searches can be carried out by keyword, patent classification, key inventors or companies (assignees or applicants) active in a given field, etc. The effectiveness of a patent search will depend on the search strategy, which defines the relevant parameters. There are several patent databases available, both free and by subscription.
The CSIR subscribes to Thomson Innovation, a platform which integrates IP data, scientific literature, business data and news with analytic tools (access can be requested via Licensing & Ventures), and QPat, and CSIRIS offers a search service on Dialog, which includes the Derwent World Patent Index. Assistance with patent searches can be obtained from your R&D Outcomes Manager, Licensing & Ventures and CSIRIS.