What is a patent?

A patent is an official government designation that grants to the assignee (owner of the patent) a right to exclude others from making, using, selling, offering for sale and importing the claimed invention. These exclusionary rights apply only in the country that issues the patent.

Please note that a patent does not necessarily give you the right to practice your own invention.  

What types of patents are there?

The U.S. Patent and Trademark Office (USPTO) grants two main types of patents:

  • Utility Patents apply to processes, machines, compositions of matter, articles of manufacture and improvements thereof.
    • Utility patents last for 20 years from the application filing date. 
  • Design Patents apply to the ornamental or aesthetic design of an object or product. 
    • Design patents last for 15 years from the issue date of the patent.

What are the requirements to secure a patent?

In order to be deemed patentable, an invention must meet certain requirements:

Fall within Patentable Subject Matter

Certain subject matter (e.g. laws of nature, naturally occurring genes and organisms, etc.) are excluded from patentability even if the other requirements are met.

Novel

Is the invention new?  This requirement is met provided there is no single reference prior to the date on which the patent application was filed wherein such reference encompasses all elements of the claimed invention. There are slight differences in the U.S. definitions when compared to other countries. 

Non-obvious

In light of what is already known and has been disclosed, is the invention obvious to a Person Having Ordinary Skill in the Art (PHOSITA)?

If there are multiple references, when combined, that ecompass all elements of the claimed invention, then it's difficult to meet this requirement. 

Useful

Does the invention have a useful purpose or application?  While the threshold for meeting this requirement is low, there should be some demonstration or support for the utility of the invention.

In addition to the above, the application must meet the written description and enablement requirements. To meet these requirements, the application must provide a complete description for how to make and use the claimed invention and should provide enough evidence to support the full breadth of what is being claimed. Failure to provide such support can result in a significant narrowing of claim scope, which may have an adverse impact on licensing potential.

What is considered when reviewing the application’s ability to meet these requirements?

Patent examiners will look at the prior art when evaluating an application’s ability to meet the patent requirements. Prior art includes all information that has been made available to the public anywhere in the world, in any form, prior to the date on which the patent application was filed. Prior art includes publications, websites and public demonstrations.

What is actually protected?

While patents and patent applications often contain very broad descriptions of technology, protection is afforded only to what is claimed. Patent claims define the metes and bounds of the protection. Claims can be found at the end of issued patents and patent applications. In order to be considered infringing, a technology must read on all elements of a third party’s claim. 

Is it important to name the proper inventors on a patent?

It is critically important to name the proper inventors on a patent. Failure to do so, either by including someone who is not an inventor or by failing to include someone who is an inventor, could result in the patent being invalidated. 

Inventorship is a legal determination and should not be confused with authorship for a journal publication. An inventor is someone who contributed to the conception of at least a portion of at least one claim. 

Please note that inventorship can change between the time a patent application is filed and the time it is issued. As claims are canceled or amended during the prosecution process, the list of inventors also may change. Outside counsel will help you determine who should and should not be included as an inventor. Counsel will do so when the patent is filed and when it is issued.  

Is the US patent process the same as that for the rest of the world?

While the patent process in the U.S. is similar to that in other countries, there are some key differences with respect to meeting the patent requirements and for adding new subject matter. 

Unlike most other countries, the U.S. offers a one-year grace period for meeting the novelty requirement. That is, if an inventor publicly discloses an invention prior to the date on which a patent application is filed, the claimed invention would still meet the novelty requirement if such disclosure took place no greater than one year prior to the date on which the filing took place. Most other countries follow an absolute novelty requirement: if a disclosure takes place prior to filing, all potential patent rights are lost for the elements that have been disclosed.

The U.S. also allows an applicant to add subject matter to a patent application through a continuation-in-part (CIP) application, which allows the applicant to later claim priority to the filing date of the original patent application. There is no foreign equivalent, so new patent applications must be filed in foreign countries. However, in such cases the applicant’s earlier filing can be used to establish arguments against the patentability of the later-filed application.

What is the typical progression of a patent application?

Provisional Patent Application

Like most other university technology transfer offices, STOR typically initiates the patent process through the filing of a provisional patent application. A provisional patent application is a relatively inexpensive means for temporarily preserving patent rights for an invention prior to its disclosure.

  • Provisional patent applications expire one year from the date on which they are filed;
  • Are not reviewed during that period; 
  • Do not require claims; and 
  • Are never published. 

However, they serve to establish an early filing (aka priority) date for only the material that is adequately described and enabled within it.

Priority dates are important for determining what prior art is relevant when considering the patentability of a claimed invention.   Only prior art that was publicly available prior to the priority date may be considered when evaluating the patentability of a claimed invention. Early priority dates are the goal.

Though these applications are not reviewed during their one-year term, it is important that they adequately describe and provide support for any invention claimed within a later-filed application since the patent office will review and scrutinize the provisional patent application during prosecution of the later-filed application claiming priority to it.

  • In such cases, if the claimed invention is not fully described and supported within the provisional patent application, different priority dates may be assigned.

If new material is developed following the date on which the provisional application is filed, you should consult STOR prior to any public disclosure of such material. 

PCT Application

We typically file a PCT application if:

  • The potential remains for securing foreign patent protection;
  • The non-U.S. markets are attractive for products and/or services based on the technology; and
  • STOR elects to convert the provisional patent application to a full patent application.  

This filing, which must take place on or before the expiration of the Provisional Patent Application, makes the process of international filings easier and less expensive in the short term. These applications undergo a cursory review, however, the results of such review, known as the International Search Report and Written Opinion, are not binding on any national or regional patent office.

If prior disclosure or market(s) being limited mainly to the U.S. caused the filing strategy to bypass the PCT application, a U.S. Non-Provisional Patent Application is the typical filing that takes place prior to the expiration of the Provisional Patent Application.  When an applicant “nationalizes” a PCT application in the U.S., we must file a U.S. Non-Provisional Patent Application. 

  • Assuming they claim priority to an earlier filed Provisional Patent Application, these applications are typically published within six months from the date on which they are filed (18 months from the earliest filing date, inclusive of any provisional applications to which it claims priority).

Please note that these applications are expensive with typical preparation and filing costs ranging between $8,000 and $15,000. 

National Stage Patent Applications

Beginning approximately 30 months from the date on which the earliest application (typically the provisional patent application) was filed, STOR must decide whether, and in which countries and/or regions (e.g. Europe), to file national stage patent applications. The filing fees are relatively high and we could incur additional costs for any required language translations.

The cost to nationalize a PCT application typically ranges from $2,000 to $10,000 exclusive of prosecution costs and annuities that may be required to keep the application alive.

Patent Prosecution

For each country or region in which an application is nationalized, the applicable patent office reviews it for form and content, primarily to determine whether the claimed invention meets the patent requirements. Typically within a year from the filing date of a national stage patent application, the patent office will notify you as to whether the application and its claims have been accepted.

  • Often we refer to this notification and subsequent patent office communications as office actions.

Frequently the patent office will reject the application for failing to meet certain formalities or because the patent office argues that the claims are not patentable over the “prior art”. We use this opportunity to begin negotiations with the patent office.

  • You, as the applicant, will need to work with outside counsel in developing counter-arguments to overcome the rejections and maximize the scope of your claim.
  • This process may take two or more years.

In some cases, the patent office may argue that multiple inventions are claimed within a single application. You then must select one invention (restriction requirement) so that the patent office can begin its evaluation. This choice does not preclude you from seeking protection for the non-elected inventions. However, you must pursue the non-elected inventions in a separate application, often referred to as a divisional application.

Depending on the nature, complexity and number of rejections issued by a given patent office, each response to an office action may cost between $1,000 and $5,000. It is not uncommon to receive two or more office actions for an application within each country in which it was filed.

Notice of Allowance

If the patent office deems at least one claim to meet the requirements, it will issue a notice of allowance (“NOA”). When you receive an NOA, you must decide whether you want to file any divisional, continuation or continuation-in-part applications. If so, then you need to file those additional applications prior to the issue date of the allowed application. It's also a good time to review the list of inventors against the claims that are about to issue.

Divisional applications are described above.

A continuation application is an application that claims an invention that was: (a) not previously claimed; and (b) fully supported within the originally filed application.

A continuation-in-part (CIP) application is one in which the applicant adds subject matter (data and support) that was not present in the original application. It is a convenient way for you to claim improvements developed after the original application was filed.  

Issued Patent

When you have paid the issue fee and met all other requirements (e.g., drawings) within the allotted time, your application will be assigned a patent number and issue date. Once the patent is issued, you, as owner or licensee, may pursue any infringers, even if the infringement happened while the application was pending.

Maintenance Fees

In order to maintain the patent, you must pay periodic maintenance fees or annuities in each country issuing a patent. These fees typically increase over time.

Challenge

Just because a patent issues does not mean that it is valid and enforceable for the duration of its term. People may challenge your patent with resulting outcome(s) that might strengthen, weaken or even eliminate your patent.

Expiration

Utility patents expire 20 years from the filing date of the earliest application to which priority is claimed (excluding provisional applications). A patent office might extend this term if the office failed to meet certain deadlines during prosecution. A terminal disclaimer also might reduce the term.

You can find term adjustments in the Notice Section on the cover page of issued U.S. Patents.

Please note that anyone may practice the invention once a patent expires.

Abandonment

You can abandon the patent process at any time by failing to file an application, respond to an office action or pay a fee. 

Please note that STOR reserves the right to abandon an application at any time and for any reason.