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Patent process complex

by Paula Bowker

Daily Lobo

Ganesh Balakrishnan achieved something once thought to be impossible.

He and professors Diana Huffaker and Ralph Dawson have been working on an invention that combines silicon and lasers.

"To have a laser data key on a silicon chip may change in the future to where electronics can work based on light instead of electricity," Balakrishnan said.

They are hoping to get a patent on their invention in the near future.

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UNM has 115 patents registered in the United States.

The Science and Technology Corporation at UNM is in charge of processing and protecting inventions by UNM faculty.

The corporation is a nonprofit company owned by UNM.

Randall Parish, associate director of software and media at the corporation, said the company is there to help commercialize and protect inventions.

It does not help with the developing of any inventions, he said.

It licenses technology developed at UNM that can range from life sciences and engineering to physical sciences.

Once an invention receives a patent, it is put out to the commercial marketplace.

Lisa Kuuttila, president of Science and Technology Corporation, said for a patent to be processed, an inventor must first fill out an invention disclosure form to give the idea to the patent office.

"A prior art search is needed to look to see what other things have also been patented because one of the requirements under patent law is your new invention has to be new and novel and not based on something disclosed," Kuuttila said.

Parish said many new inventors are surprised how often there are already patents on their ideas.

"It can be really unclear if the patent that's already out there is like the new invention," Parish said. "That's when we get attorneys involved."

Kuuttila said it can take two or three attempts before the application is accepted.

"It usually takes a few years," Kuuttila said.

Parish said two types of patents can be used on campus.

A provisional patent only lasts one year, and in that time, an inventor can decide if he or she should get a utility patent or just drop the idea. A utility patent lasts 20 years, and with it, a product can be put into the market for consumers to purchase.

"I would like to get a patent on what I'm doing in here, but who knows," Balakrishnan said. "That could take 15 years. Someone could come out with something better by then."

Wilmer Sibbitt, who works at the Health Sciences Center, developed a syringe that allows a physician to inject and remove fluid with one hand.

Syringes have been around for 150 years and have to be held with two hands.

The one-handed syringe just received FDA approval and can be used in the medical field, she said.

Kuuttila said it costs $10,000 to $15,000 to file an application, but the inventor does not have to pay the fee because the Science and Technology Corporation does.

The inventor must then fill out an intellectual property policy that allows him or her to receive 40 percent of the profit the patent makes. The corporation receives 40 percent of the profits, and UNM receives 20 percent.

Many graduate students become co-inventors, Kuuttila said.

"A fair amount of inventions that we see are coming from research labs on campus," Kuuttila said.

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