Step 3: Protection
A patent provides the right to exclude others from making, using, selling, offering for sale, or importing the patented invention for the term of the patent, which is usually 20 years from the filing date. For an invention to be patentable, the work must meet the following three criteria.
NovelIt is new and previously unknown. To be novel, it cannot have been published, sold, or used prior to the filing date of a patent application. The U.S. allows a 12-month grace period following publication, but this grace period does not exist internationally.
A patent application must be filed prior to ANY public disclosure to maximize the potential value of an innovation. A public disclosure is any publication, conference presentation, poster session, grant proposals, thesis, or even submission of an abstract. Therefore, if you are interested in commercializing an invention, it is important to contact us as early in the process as possible. It is critical that you report an invention by submitting an Invention Disclosure Form no less than two business days prior to any public disclosure or statutory deadline.
UsefulIt must be a process, machine, manufacture, composition, or improvement thereof.
Non-obviousIt must be sufficiently inventive and not obvious to one with “ordinary skill” in the field.
The patent process is long and requires a number of steps from the initial filing to the time that patent issues. We work with outside patent counsels for filing the patent applications. Your expertise is needed throughout the process.
Provisional Patent Application (expires one year after file date)
In most cases, we begin by filing a provisional patent application for the invention. A provisional application is a faster, less expensive application used to establish a priority date with the U.S. Patent and Trademark Office (USPTO). After filing a provisional patent application, the applicant has 1 year in which to file a complete application and any foreign applications (if the provisional was filed prior to any public disclosure). The provisional patent enables us to evaluate the invention more thoroughly to determine whether to proceed with a full application. During this time we will market your technology to see whether or not there is any commercial interest.
If a full application is not filed within 12 months of the provisional application’s filing date, the provisional application will lapse. Therefore, it is important to be aware of the statutory deadline in order to ensure that an invention is protected.
International Patent Protection
International patent protection is available to all inventions that have NOT been publicly disclosed prior to the filing of a U.S. patent application.
Patent Cooperation Treaty (PCT) Application (expires 18 months after file date)
To begin international patent protection, a PCT application must be filed no later than one year following the filing of the related US application. This is a temporary patent application process that preserves our right to file foreign patent applications in countries that participate in the treaty with a few exceptions (Taiwan being the most notable).
The application is examined and a search is made to reveal inventions similar to what is in the application. A search report is provided which includes a general opinion about the patentability of the invention and the application is published. The PCT application will not issue as a patent.
Foreign Patent Applications (must be filed after 18 months of PCT filing date)
As a general rule the Research Foundation will not file in foreign countries unless we find that there is a significant market for your invention in that country or there is a potential licensee.
Utility Patent Application (US)
We work with outside patent attorneys, you and your co-inventors to draft this formal non-provisional patent application. This application is filed with the United States Patent & Trademark Office (USPTO) and is held confidential by the office until published, 18 months after the initial filing.
The patent application then goes through a patent examined process, which involves a USPTO patent examiner reviewing the application to determine whether a patent should be granted. The results of this examination can take the form of a Notice of Allowance, indicating that a patent will be granted, or an Office Action, outlining the reasons the examiner believes a patent should not be granted. If an Office Action is issued, applicants are given an opportunity to file a written response, usually prepared by the patent attorney or agent. More than one Office Action may take place before all issues are resolved or a final decision is made by the examiner that a patent will not be granted. This process is commonly referred to as patent prosecution.
Patent Application Costs and Timeline