IP evaluation – NABC

What does the ‘invention / technology disclosure’ process involve?

This is the process of formally describing and recording an invention or new idea, 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 technology disclosure process has two components:

  • Completing a technology disclosure form, and
  • Holding a technology disclosure meeting with the Licensing & Ventures office, during which an “NABC” presentation is made by the inventor / IP creator, 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 file a patent application,
  • prosecute applications for IPRs 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 searching 

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.

 

This blog is maintained by the CSIR Licensing & Ventures team. Copyright (c) CSIR 2016. All rights to the intellectual property and / or contents of this blog remain vested in the CSIR.
This blog is intended solely for information purposes and may not be reproduced, in whole or in part, in any way without the express written permission of the CSIR.

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