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Patents

The information on this page provides a brief description of the main requirements involved in patenting an invention.  Additional resources regarding more comprehensive educational materials on patenting are available in the sidebar. 

General

  1. Definition - A patent grants an inventor the legal right to exclude others from manufacturing, using, or selling an invention for a certain number of years in the country of issuance.
  2. Patentability Eligibility - To be patentable an invention must be novel, useful, and non-obvious:
    1. Novel - It is not previously known or used by others.
    2. Useful - It has a known use or produces a concrete and tangible result.
    3. Non-obvious - It is not obvious to a person having ordinary skill in the art.  For example, it can not be found in a single or reasonable combination of patents and/or publications that would yield a predictable result.
  3. Patentability Ineligibility - An idea, law of nature, or scientific principle cannot be patented.

  4. Cost - Patent costs range approximately $30,000-70,000 per patent application depending on patent prosecution variations regarding filing, issue, and grant actions in each country.
  5. Timeline – After application submission, an average range for patent issuance is  3-6 years again depending on patent prosecution variations regarding filing, issue, and grant actions in each country.
  6. Patent Term – A US utility patent offers exclusive protection for 20 years from the application filing date.  After a patent expires, the invention is open in the public domain.
  7. Advantages – Once issued, a patent:
    1. protects the commercialization opportunities of an invention, like product development, licenses, new start up companies, and collaborations;
    2. prevents others from making, using, selling, or importing the invention; and
    3. is a valuable tangible asset to industry and venture capitalists who may invest in the inventions’ development.

Publication Concern

  1. Definition - The purpose of a publication is to report original research to the scholarly world, which includes scholarly papers, posters at conferences, handouts, and any text or images on paper or website that is available to the public, including email.
  2. Publishing Ineligibility
    1. Most countries require that a patent application be submitted PRIOR to any publication.  The one exception is the US which permits an inventor a one-year grace period to file a patent application from the first publication date.  
    2. Grants - Grant applications are generally considered confidential and not a publication.

Inventorship and Ownership

  1. Ownership- According to the US Bayh-Dole Act (see sidebar) universities receiving funds from the government own the inventions arising from that work.
  2. Inventorship
    1. An inventor is the individual who first conceives of an invention, in detail, and with enough specificity that one skilled in the field cold construct and practice the invention.
    2. However, an inventor is not an individual who only reduces an invention to practice (and does not contribute to conception).
  3. Application Process
    1. First, an inventor, preferably before any publication, describes the invention to the technology transfer and licensing office.
    2. Next, the technology transfer and licensing office evaluates an invention’s potential and determines if a patent application will be supported by the university.
    3. Last, throughout the patent prosecution process, starting with the application submission, an inventor collaborates with the technology transfer and licensing office and the representing law firm in pursuit of invention protection.