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Intellectual property of an invention can be protected in multiple ways. The appropriate method of IP protection is often dictated by the nature of the invention and, in some cases, the commercialization strategy. TDC will work with the inventor to determine the most appropriate path. Since most of the work submitted to the TDC involves patentable inventions, we will describe the patent process in detail below.
Types of Patents
A Provisional Patent Application is a place holder that sets the ‘priority date’ for the invention. This allows a person to set a filing date for an invention, without submitting the full Utility Patent application. A provisional patent application is not reviewed by the USPTO. It sits on the shelf for 1 year then expires. A Patent Cooperation Treaty (PCT) application or utility patent must be filed within that year to claim the benefit of filing a provisional application.
PCT application- The PCT is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application. There is no such thing as an international patent. Instead, one must submit in each country a patent is desired during a nationalization stage.
Utility Patents- Provide a time-limited 20 year monopoly for processes, machines, compositions of matter, articles of manufacture, software and methods that are novel, useful, non-obvious and within statutory subject matter (i.e. you cannot patent laws of nature, such as gravity).
The utility patent process is most often used by the TDC, which includes provisional, utility and PCT applications, and utility patents. It takes a number of years to complete and is an expensive process. It also requires the inventor and the TDC work together and meet on multiple occasions in order to successfully navigate the patent process. The end result is hopefully a patent with broad protection that can be commercialized successfully.
Design Patents- Design patents are granted to any person who has invented a new, original and ornamental (nonfunctional) design for an article of manufacture. In essence a design patent covers the look and feel of the invention, not the functional aspects of an invention. For example, the iPhone design, fonts and even the statue of liberty have been awarded design patents. A design patent has a term of 14 years.
Plant Patents- Plant Patents cover asexually reproduced distinct, new varieties of plants, including cultivated spores, seeds, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state. A plant patent has a term of 20 years.
Plant Variety Protection Certificate- Protection for a person who generates a new sexually propagated plant. This type of patent is managed by the US Department of Agriculture, instead of the USPTO. The protection lasts for 20 years date (25 years for vines and trees).
Patent Process Outline
The graphic below should give you a general idea of the patent process. Inventors at OSU should familiarize themselves with this graphic, and use it as a guide on for the patent prosecution process, and how long it may take. In the first section we will describe how you can work with the TDC for optimal patent prosecution. Next, we will discuss the patent timeline in detail, including the two routes (US and PCT applications) that the TDC often employs to protect OSU inventions.
Patent Prosecution Process and How it Relates to the Inventor
The member of TDC assigned to a particular disclosure will assess the invention to find out if a patent application is appropriate (see Invention Evaluation (ADD LINK)). If the decision is made to file, TDC will work with the PI and an outside attorney to draft the patent application. The completed patent application will be submitted to the USPTO, likely first as a provisional patent application. This is followed by filing a Utility (non-provisional) US patent application seeking protection in the US and/or a PCT application, which begins the process of seeking protection in the US and other countries (see below for details). Filing a utility or PCT patent application will trigger the patent prosecution process.
The patent process is a negotiation with the patent examiner. The attorney, TDC, and the inventor must work together in order to respond to the examiner, who will often initially reject an application based on patent formalities and/or prior art. When the application is rejected, the patent attorney must file a written response within 3-6 months. Generally, this will result in the attorney either amending the claims and/or arguing why the patent examiner is mistaken in their assessment.
The end goal is to secure as broad of a patent as possible from the patent examiner. This requires an inventor who will stay engaged throughout the ~ 3.5 year process, and will provide input to confirm the patent attorney’s understanding of the technical aspects of the invention and/or the prior art cited by the examiner.
The TDC typically files provisional patent applications on 50% of the disclosures received, and files a PCT and/or US application on 40-50% of the provisional patent applications filed.
Detailed Look at the Patent Process
Filing a Provisional Patent Application
A provisional patent application is a place holder that sets the ‘priority date’ for the invention. A provisional patent application is not reviewed by the USPTO, and there is no such thing as a provisional patent. It sits on the shelf for 1 year.
If a Utility (non-provisional) U.S. patent application or PCT application is not filed before the one year is over, then the ‘priority date’ is lost. The priority date claims the date of the invention. This is critical because: 1) the person with the earliest priority date for a specific invention will be the one to receive a patent under the U.S. first-to-file system and 2) if information from a third party is disclosed to the public before the priority date, it may be counted as prior art that can bar the inventor from obtaining a patent. This is also true if the inventor publishes his/her own work, although a few countries grant a grace period to the inventor, (one year in the U.S.). See more information about what constitutes a public disclosure and what the grace period means here (LINK).
At a university, publishing and presenting are important— but they are also public disclosures. Due to the effect a public disclosure may have on patentability, a priority date will protect the invention from a pending public disclosure. If an inventor or a student needs to publish a paper that includes critical information in an invention, TDC can file a provisional application to ensure that the subsequent disclosure comes after the priority date. Generally, the cost of filing a provisional patent application is not substantial (less than $5,000).
Filing an Utility (Non-provisional) U.S. Patent Application
A Utility (non-provisional) application is a formal U.S. patent application (U.S. route), which will trigger the official examination process with the USPTO to determine if the invention is patentable. In addition, 18 months after the original priority date, the application will be published.
The USPTO will assess if the patent application should be granted or rejected, and inform the university of its opinion through office actions. The first office action will usually occur 6-18 months after the filing date of the Utility (non-provisional). Almost always without fail, the patent application will be rejected based on patent formalities and/or prior art. The patent attorney, along with the inventor and TDC will come up with arguments as to why the patent examiner is mistaken and/or amend the application to satisfy the patent examiner.
The best way to view the patent prosecution process is that it is a negotiation between the inventor and the patent office to determine if, and how broadly the invention can be claimed. Multiple office actions rejecting an application often occur during this process before a patent is granted or finally rejected (~50% of patent applications filed become patents). Typically, the time it takes for a patent to be granted is 3-5 years after filing the original provisional patent application, the cost is around $20,000, and the patent term will be 20 years from the original priority date established by the provisional application, provided the maintenance fees are paid. Because of the cost, before filing a Utility (non-provisional) the TDC will ideally have found a licensee who will pay for the prosecution. However, even without a licensee the TDC will file a Utility (non-provisional) if there is market interest in the application and/or the application has a strong market opportunity report that justifies the expense the TDC will take on due to prosecution.
The Patent Cooperation Treaty (PCT) is an international patent law treaty that provides a unified procedure for filing patent applications to protect members in the contracting states, of which there are currently 148 (member map). A PCT application is used when there is a need to obtain patent protection outside the U.S. The PCT route can be taken either concurrently with the U.S. route, or a PCT can be the sole route to obtain patent protection within and outside of the U.S..
A PCT application can be filed with various patent offices, and we usually choose either the European Patent Office (EPO) or the USPTO. Four months after filing, the patent office we chose will provide a preliminary and non-binding International Search Report (ISR) that will find the most relevant prior art, and a Written Opinion (WO) assessing if the invention is patentable. This can help an applicant gauge the potential for patenting their invention before entering the notoriously expensive national phase.
There is no such thing as an “international patent” and in order to obtain a patent in individual countries the PCT application must enter the national phase, which the applicant must begin 30 months (some jurisdictions allow later than 30 months) from the earliest priority date of the patent application. Prosecution will then be done at the national level (or regional in the case of European Patent Office), and all patent applications will be evaluated according to the rules and regulations of that jurisdiction. Although usually similar to the USPTO, every country has variations to the prosecution process and rules for patentability. The cost to file in many individuals countries is often cost prohibitive for OSU (over ~$100,000), and in almost every case a licensee must have already licensed the technology in order to shoulder the cost of the national phase. Patent lengths and terms will also vary according to the jurisdiction, but many are similar to the U.S. award of 20 years from the initial priority date.