A patent is a legal instrument that is used to not only protection to an invention, but is also used to expand the breadth of knowledge. This is done, by providing the patent owner a twenty-year period (beginning from date of patent filing) of exclusivity to make, have made, use, sell or offer for sale the patentable invention. In exchange for this right, the patent must teach the reader how the invention works, to the degree where it can be duplicated. In this sense a patent is very similar to other academic publications. The difference however, is that a patent allows the owner to restrict others from having use of the invention without prior established permission.
Types of patents
To qualify as a utility patent, an invention must be one or more of the following:
Process/Method– a new series of steps or improvement thereof, such as a method of making a particular composition, a method of treating a disease that produces a desired result, or a method of calculating financial data;
Machine – a new device or improvement thereof that has moveable parts and performs a useful operation including the machine itself, a part of a machine, or a combination thereof;
Manufacture – a new tangible object or an improvement thereof, other than a machine or composition of matter, that is man-made and not found substantially in the same form in nature;
Composition of Matter – a new physical or chemical composition of two or more ingredients to produce a mixture or compound, which may be a liquid, solid, or gas, or improvement thereof;
A design patent is granted for the ornamental appearance of an article of manufacture (325 U.S.C. 171). The design is inseparable from the object to which it is applied. Because a design is manifested in appearance, the subject matter of a design matter may relate to the configuration or shape of an object, to the surface ornamentation on the object, or both. (AUTM Manual)
A plant patent may be granted on a distinct and new variety of asexually propagated plant, except a tuber propagated plant or a plant found in an uncultivated state. An asexually propagated plant is one that is reproduced without use of seed, for instance rooting by cuttings, budding or grafting. (AUTM Manual)
Statutory Patent Criteria
In order to prove that an invention is novel, a thorough search must be made to prove that the invention is not patented, otherwise described in any printed publication, that the invention has not been sold, made available for sale, or in public use. Most countries require absolute novelty before allowing a patent to be issued. This means that there can be absolutely no public reference or use of the invention before the patent application is filed. The United States; however, allows a one-year grace period. This means that a U.S. patent application may still be filed within one year of a public presentation or disclosure of the invention. However, the ability to file corresponding applications in most other nations is generally no longer available.
A utility requires the applicant to prove that the invention serves a useful purpose. For instance, a new mathematical algorithm may meet the statutory subject matter requirement, but if the algorithm does not specify a practical purpose for using it other than pure intellectual curiosity, then the algorithm will not meet the practical utility test.
Enablement demonstrates whether the invention actually works. While you may file a patent application before proving that the invention works, proof of enablement will be required before a patent is allowed.
A patent may not be issued if the difference between the invention and any prior art would be obvious to someone of ordinary skill in the art. In some cases it may be obvious that an invention is identical to something that has already been patented or otherwise described in the literature. However, most times it is difficult to judge whether obviousness is problematic. It takes the guidance of a patent attorney to determine whether it can be successfully argued that an invention is not obvious given other relevant references.
The process of applying for and obtaining a patent is called patent prosecution. The process is managed by a qualified patent attorney who is licensed to practice before the United States Patent and Trademark Office (USPTO) and is authorized to represent the University. Patent prosecution begins with the preparation and filing of a patent application, and continues through a lengthy discussion with a patent examiner from the USPTO. The prosecution of a patent application has many potential twists and turns in the road before a patent is possibly issued. The process takes a firm commitment of time on the part of the inventor(s) as well as resources from the University. The inventor will be required to review patent documents and help the attorney develop a strategy for responding to office actions issued by the patent examiner. The University’s commitment not only involves shepherding the overall process, but also includes a fiduciary responsibility to this costly process. The cost to obtain a U.S. utility patent can be as much as $25,000 - $30,000, while the cost for foreign patents can be ten times that for each country of interest. Clearly the University does not take lightly to filing a patent application and over time will evaluate whether prosecution of the application continues to be in the best interests of the University.
Types of Patent Applications
There are typically two types of U.S. patent applications: provisional patent applications and non-provisional patent applications.
Provisional Patent Application
The life of a provisional patent application is one year from date of filing, and allows the University the advantage of an early filing date. This is especially valuable when little time is available to prepare a non-provisional patent application. The greatest advantage of filing a provisional patent application is that it allows the University to be initially responsive for early stage discoveries while providing the inventor(s) additional time to prove the value of the invention. A disadvantage is that provisional applications might not fully vet out the patent claims which could potentially create prior art against the inventor(s). If institutional interest continues in an invention, then the University can re-file the application as a non-provisional patent application before the one-year anniversary date.
Non-Provisional Patent Application
A non-provisional patent application is a fully crafted patent application that proceeds through the patent prosecution process. Non-provisional applications contain a complete description of the invention (specification), at least one patent claim, drawings when necessary, and a declaration from the inventor claiming inventorship to the invention.
The initial patent application for a given invention is called the parent application and may contain any number of patent claims. Over the course of prosecution; however, the patent examiner may determine that more than one invention is being claimed, thus restricting immediate prosecution activity to only one set of claims. This process is quite common and effectively begins the subdivision of the invention into several inventions. This collection of related inventions is known as a patent family. Any claims not initially selected for prosecution may be picked up at a later date.
International Patent Applications
The most cost effective way to initiate the international patent process is to file a universal application accepted by most nations. This application is known as a PCT and is associated with the Patent Cooperation Treaty. A PCT application allows the University to designate all member nations for a period of time for a relatively small fee. However, in time the University will need to decide the wisdom of continuing the international patent process, because it is quite costly. Typically the University will not proceed with the costly phase of international patent filing without the financial support of a corporate sponsor or licensee.
Important Considerations for Effective Prosecution of Patent Applications
Good laboratory records and documentation are valuable proof of a discovery/invention, preservation of experimental data and observation, and a record of the successes and failures of the original experiment. The notebook “is a permanent written record of the researcher’s mental and physical activities from experiment and observation, to the ultimate understanding of physical phenomenon.” Furthermore, the laboratory notebook enables re-creation of experiments, provides a primary resource for preparation of manuscripts, and helps preserve intellectual property rights, i.e. patents. Consequently, it is imperative that the laboratory notebook is sufficiently detailed to present a guarantee of trustworthiness. In addition, the notebook should have enough information that a technically sophisticated outsider, reviewing the work later, can understand what was done without help from the researcher who made the original entries. With this in mind, entries in the lab notebook should be consistent, chronological and complete. Documentation of ideas or inventions made outside a typical laboratory setting can be achieved in an Idea Notebook. Regardless, formal documentation of an invention is critical. Kanare, H.M. (1985) Writing the Laboratory Notebook. P.1.
Duty to Disclose
The inventor(s) will be required to sign a declaration recognizing that he/she has a duty to disclose information that that may be material to the examination of an application. “Material,” is defined as information that an examiner would likely consider important in deciding whether to issue a patent. If an inventor becomes aware of any information that might be consider material, then it is critical that it be brought to the attention of the patent attorney as soon as possible.
Certain activities either in the U. S. or abroad prior to filing of the patent application in the U. S. may have a bearing on the ability to file corresponding applications in foreign countries. These activities could include public disclosure of the invention in either written or oral form, such as published articles, abstracts, patents, product announcements, and grant proposals, as well as through commercial exploitation of the invention, including public demonstrations, offers to sell, and sale of products incorporating the invention (Myers Bigel Sibley & Sajovec, P.A.).