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VCOM Carolinas Campus

Common Mistakes and How to Avoid Them

Misjudgments in handling your potential intellectual property can result in complications protecting your discovery or licensing your invention. Such difficulties are often time-consuming and expensive and may result in a significant narrowing of scope, loss of protection, or even inability to use your own discovery. 

The most important step you can take to mitigate any issues is to contact the ORI as soon as you believe you have an invention.

Some of the more common mistakes include:

  • Not documenting work: Documentation in a lab notebook or electronic format is vital for supporting your patent application and your rights in case they are challenged. Documentation should be detailed as much as possible.
  • Using materials/methods developed elsewhere: Be aware that using protected processes or materials could invalidate your freedom to operate and lead to patent infringement. A search of patent literature for issued or pending patents is a crucial first step to ensure your innovation does not infringe upon the rights of others. The ORI can also work with our patent attorneys for legal advice. In addition, developing new software applications, including third-party software, especially libraries with some form of open-source license, may force the entire new software package to be released as open-source.
  • Publicly disclosing unprotected information: While dissemination of research is vitally important both to your research and to generalizable knowledge, publicly disclosing your idea before you have formally disclosed it to VCOM can lead to the loss of patent rights and the inability to introduce your innovation into the public domain in the future. Public disclosures include publications, poster presentations, seminars, and publicly available grant applications. The best practice is for VCOM to file a patent application prior to publication or presentation. If you submit a grant, avoid describing the details of the invention itself. [NAME] personnel can assist you in developing appropriate wording that satisfies your publication requirements while simultaneously protecting your novel ideas.
  • Not formalizing agreements with outside collaborators: VCOM encourages collaborative work; however, it is important to consider how responsibility and credit will be shared at the onset. When sharing any potential intellectual property with another party, a confidentiality agreement should always be in place first. Likewise, if you are using the materials of others, or others will use materials or methods developed by you, a material transfer agreement should be in place. The Office of Research and Innovation and the Office of Research Administration can assist with drawing up, reviewing, and executing such agreements.
  • Not being actively involved in all phases: As the inventor, you have the most detailed knowledge. This is critical when developing a patent application and drafting the claims. Collecting information needed to prepare a disclosure, executing a prior art search, and creating a patent application takes time. Your cooperation working with the ORI team, patent attorneys, and others is critical for successful completion.