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Patents and the Patenting Process

  • Information about patents
    • What is a patent?
    • What is patentable?
    • Who are the inventors?
    • What is prior art?   
  • Information about the USPTO process
    •  Filing a patent application
    •  What is the usual course of patent application prosecution?
    •  What is a Restriction Requirement?
    •  What is a Notice of Allowance?
    •  How long does it take to receive a patent?    
  • Information about the patent process for Iowa State University inventors
    •  Why do we patent inventions?
    •  What is the patent process at Iowa State University? 
  • Links for additional information   

 Information about patents

What is a patent?

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office (USPTO).  The government grants three types of patents: utility, design, and plant.  Most patents are utility patents, on which this discussion focuses.

The term of a new patent is generally 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. (It is possible to receive patent term extensions, which may be earned when certain prosecution delays are caused by the USPTO; however, delays caused by the applicant will  be deducted from any earned extension).  United States patent grants are effective only within the U.S., its territories, and possessions.

The right conferred by the patent grant is the right to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States. The grant does not convey an affirmative right to the patent holder to make, use, offer for sale, sell, or import the claimed invention.  Indeed, in order for the patent holder to perform any of the rights, other licenses from other patent holders may be needed to avoid infringement.  In other words, it may be advisable for the patent holder or licensee of those patent rights to perform due diligence to assess whether practicing the patent rights may infringe the patent rights of others. 

          What is patentable?

First, you need an “Invention.”  How to identify an invention:

An invention is an idea that is conceived and reduced to practice, i.e., the formation in the mind of the inventor of a complete and permanent idea of the invention in the form it will ultimately be practiced.  The conceived idea must be shown to be useful through its implementation or embodiment in a tangible form, which is called “reduction to practice.”  Reduction to practice does not require a prototype (although, a prototype may be the only way to reduce the conceived idea to practice) nor does it require a showing that the invention will be commercially successful.  Reduction to practice is required in order to show that the idea is more than a theory.

Types of inventions that are patentable:
The government grants utility patents on new inventions and improvements thereon for:

1. a process (an operation or method that produces a result),
2. a machine (a device that is mechanically, electrically or electronically operated),
3. articles of manufacture,
4. a composition of matter (chemical and metallurgical compositions including combinations of elements as well as new compounds), or
5. improvements of any of the above.

Patents may also be issued on ornamental designs (design patents) and asexually produced plants (plant patents).

Requirements the invention must meet to be patentable:

Utility patents are granted to new inventions falling within the types of inventions described above, which satisfy the following three requirements:

Novelty: The invention must be new to the world, not just to the inventor.

Utility:  The invention must have a useful purpose.  That is, the invention must have a “real world” value, not just an idea, or concept or that which is only a starting point for future investigation.  In the United States, patenting of abstract ideas; laws of nature; physical phenomena; literary, dramatic and artistic works (although these may be copyright protected); or inventions which are not useful or are offensive to public morality cannot be patented.

Nonobviousness: The invention cannot be obvious to someone of ordinary skill in the field of the invention.

Can software be patented?

Various functional aspects of software may be patentable.  Patentable aspects might include the following:
• the process the software performs or embodies (examples of processes: editing and control functions, compiling, and operating system techniques)
• a device the software emulates or helps create
• a device of which the software is an integral part

Patent examiners begin their evaluation of a computer-related invention by determining what the programmed computer does when it performs the software processes, how the computer is to be configured to provide functionality, and, if applicable, how the programmed computer relates to machines, devices, materials, or processes outside of the computer process activity.

Who are the inventors?

Inventorship is a legal determination, based on specifically identifiable intellectual contributions to the patentable elements of an invention.   The contributions of those who are co-authors on a paper, poster presentation, or other written documentation of the invention, or those who participated in the project, may or may not arise to the level of inventorship.
 
What is prior art?

Prior art is publicly-available information that may prevent the invention or parts of the invention from meeting the novelty or non-obviousness requirements of patentability.  This publicly-available information may be a publication (even your own), a non-confidential presentation (even your own and even if it is simply an abstract or poster presentation), or a distribution of tangible material embodying the invention. 

 

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Information about the USPTO Process  

Filing a patent application

What is a patent application? 
The patent application is the formal document submitted to the patent office for examination by a patent examiner.  The application is usually sufficient if it describes the invention in a suitable form to allow someone skilled in the same area of art to duplicate the invention.  Preparing the patent application requires the inventors’ technical expertise as well as the patent attorney’s knowledge of the technical area and patent law. 

Formal requirements of utility applications include, among other things, a description of the background of the invention, a brief description of the invention, and brief description of the drawings (if any), a detailed (and enabling) description of the invention, and actual drawings (when needed), and claims.  The claims must particularly point out and distinctly claim the subject matter regarded as the invention. The claims are vitally important to the application, because they define the scope of the protection of the patent.  It is also necessary at this time to file certain other documents (powers of attorney, oaths and declarations, information disclosure statements disclosing known prior art), and assignments, if necessary)).  Once the file is complete in the USPTO, the case is assigned to the appropriate examiner in the relevant art group. 

Types of applications:
The patent office provides for the filing of a provisional patent application and for utility, design, or plant patent applications.  Only the utility, design, or plant patent applications can issue into a U.S. patent.  As stated above, design and plant patent applications are not further discussed herein.

The provisional patent application protects an invention, though only in the short-term, by establishing a priority date.  A provisional application may be, but is not necessarily, less expensive to file than a utility application.  The provisional patent application has a lifespan of one year and is not examined by the USPTO.  At the end of that year (or before), one must file a utility application which claims priority to the provisional application.  Failure to do so will result in a loss of the priority date, which could result in additional prior art becoming relevant to the examination of the utility application by the patent examiner.  A provisional application must enable (i.e., adequately describe) the invention, but need not necessarily contain all possible description or embodiments.

Utility applications are filed with full disclosure and enablement, along with all appropriate embodiments and claims.  It is also necessary at this time to file certain other documents (powers of attorney, oaths and declarations, information disclosure statements (disclosing known prior art), and assignments, if desired).  Once the file is accepted as complete by the USPTO, the case is assigned to the appropriate examiner in the relevant art group.

What is the usual course of patent application prosecution?

The patent prosecution process is, in reality, a discussion that takes place between the patent attorneys (working under direction of ISURF and with input from the inventors and perhaps licensees of the technology) and the patent examiner at the USPTO.  Once the utility application has been filed, the patent examiner will examine the application and respond with an Official Action (known colloquially as an “office action”).  The office action may take the form of a notice of allowance, which means that the patent will issue with payment of an issue fee and submission of any required drawings.  A first office action notice of allowance is quite rare.   More likely, the examiner will respond with an office action objecting to and/or rejecting certain claims or with a restriction requirement

What is a restriction requirement?

If the examiner believes that two or more inventions are claimed in a single application, and that significantly different prior art class searches would be required of the examiner, an office action in the form of a restriction requirement will be issued, describing the purported various groups of claims comprising each invention.  The applicant will be required to limit the application to one of the groups, but at the same time, can argue that 1) the groups are not separate inventions, or 2) the burden on the examiner to conduct a prior art search for more than one invention is not significant.  These arguments are not usually successful.  The non-chosen group(s) may be filed as a separate application any time prior to the issuance or abandonment of the pending application and will be entitled to the benefit of the filing date (i.e., the “priority date”) of the first application.  Multiple applications can proceed simultaneously, if desired, to protect patent term.

What is a notice of allowance?

At the point the examiner feels the applicant has possession of novel and useful claims, a notice of allowance will be mailed to the patent attorney, and subsequently copied to ISURF.  The patent issue fee and all formal drawings must be timely provided to the USPTO within three months of the notice of allowance.  Upon receipt of the fee (and drawings, if applicable), the patent application file is transferred to the publication unit of the USPTO.  Upon publication, the original patent grant document is sent to ISURF’s patent attorney, and subsequently forwarded to ISURF.  The USPTO also posts the patent document on their website.

How long does it take to receive a patent?

It is important to keep in mind that the filing of a utility patent application does not guarantee the issuance of a patent.  However, even if a patent does issue, the time between application and issuance can vary drastically, from two or more years.  The duration of prosecution depends on the type of technology, the patent examiner, the response time to the examiner’s actions, the backlog at the patent office, and the need for extraordinary actions (such as appeals or continuations).


 

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Information about the patent process for Iowa State University inventors

Why do we patent inventions?

  • A patent may be necessary for the claimed invention to be commercialized.  Without the proprietary position that a patent provides, industry may not invest the needed resources to develop and market products and services to commercialize the invention.

  • A patent provides value to start-up companies seeking investors.

  • The patent holder can control how and when the claimed invention is developed and commercialized, thereby preventing misuse of the invention and assuring that the appropriate commercialization entity will endeavor to commercialize the invention.

  • A patent is a publication.

  • Patents can bring prestige to a researcher’s laboratory and department, resulting in the formation of relationships that may bring in more research dollars to the lab.

  • Licensing of the patent results in potential for income to the inventor and the inventor’s college.

  • Most funding sources (federal, industry, or non-profit entity) are interested in research results that may be beneficial to society or to their immediate stake-holders.  They recognize the benefits of patents and include patent related requirements for receiving funds.  Failure to meet these requirements could hinder receipt of future funding from these sources.

What is the process to obtain a patent?

When OIPTT/ISURF receives your disclosure, our office will evaluate the technology, especially with respect to its commercial viability.  Working with our resources within the office; the inventor(s); our patent attorneys; and, occasionally, external consultants, a decision will be made concerning how to proceed with respect to the protection of the technology. 

In the United States, the opportunity to obtain patent protection is lost at the point the technology has been publicly disclosed, is in use, or has been on sale for more than a year before an application is filed.  For foreign patent protection purposes, absolute novelty is required; that is, any public disclosure, sale or use prior to filing for protection will bar patent rights in most foreign countries.  The kinds of disclosure that can vitiate foreign rights, or create a bar date in the United States, include the following examples:

1. publish in a presentation, paper, on the web, or in a non-confidential federal grant proposal (when it funds, it may become public information);
2. disclose to your colleagues at another institution without a confidentiality agreement in place, or to a collaborator at a private company without a confidentiality agreement in place;
3. use the invention in a public setting for more than a year before an application is filed;
4. distribute tangible material containing the invention without a confidentiality agreement if the novel components of the invention can be ascertained or re-engineered; or
5. offer the invention for sale (note that this “on-sale” bar does not apply to the typical practice of an offer from a university for a license, however, this bar could come in to play if the inventor actually offers his/her invention for sale, not just license rights).

What about scholarly publications? 

Who Applies?
Under U.S. patent law, only an inventor can apply for a patent application.  However, in order for ISURF to prosecute a patent application (and pursuant to certain university policies), Iowa State University inventors sign an assignment of their rights in the invention to ISURF.  In most cases, the assignment requires a notarized signature.  Notaries can be found in the administrative assistant pool of most university departments and in the ISURF office. 

Who is the owner?
For university-employee-generated inventions, ISURF is the owner by assignment.  It is important to note, however, that in certain circumstances, there may be joint ownership due to a researcher’s collaboration with others.  It is possible under such collaborations that another university or an industry partner may have at least one inventor on an issued patent, creating joint ownership.

How much does it cost to get a patent?
The cost to file a patent attorney-prepared regular application can vary from around $6,000 to $30,000 plus, depending on the type of technology, the amount of information to be covered and its format, and the time allowed to prepare the application.  Additional fees are incurred during prosecution, for such things as receiving and responding to office actions, filing copies of relevant prior art, etc.  Additionally, certain biotechnology patents require deposits of materials with organizations such as ATCC (American Type Culture Collection).  Each such deposit can cost around $2,500, plus attorney’s fees.  It is not unusual for the total attorney and USPTO fees on an issued patent to exceed $30,000.

Who pays these fees for ISURF patents?
ISURF pays the fees for patent prosecution, some of which may be reimbursed by licensees and/or joint owners.

What is your role as an Iowa State University inventor in the patent prosecution process?
Your input will be sought throughout the patent prosecution process.  In the event that a provisional or regular patent application will be filed for technology on which you are an inventor, you and/or your colleagues will likely be contacted by the attorney to assist with the technical details of the application.  It is in your best interest to work with the attorneys to ensure the best possible application is presented to the examiner.

You will be copied on all communications to and from the USPTO.  Quite often, subsequent correspondence refers to earlier communications, hence, it is most efficient if the information you receive is located in one place.

It is also important that you keep OIPTT/ISURF updated concerning your contact information if you move or if you will be absent for an extended period during the patent prosecution process, so that we can maintain communications regarding the progress of patent applications.  We also need to be kept apprised of additional related collaborations, potential new inventors, new funding, planned presentations or publications, and new data (either supporting a new and perhaps improved version of the invention, or providing additional support for the currently claimed invention).  If data are obtained which may be considered a negative result, we are under a duty to report that, in some circumstances, to the patent examiner.  A determination of whether or not particular data need to be utilized in the patent prosecution is made by our patent attorney.

How do we respond to an Office Action?
Relatively few applications are allowed in the same form as filed.  If it is appropriate to continue with the patent application when an

In certain circumstances, it is appropriate or desirable for the response to include amendments to the written description or claims, and on occasion, an amendment accompanied by a declaration from one or more of the inventors, which seeks to clarify possession of the invention.  If an amendment is made, the applicant must clearly point out why he/she thinks the amended claims are patentable in view of the state of the art disclosed by the prior references cited or the objections made by the examiner.  The examiner will then consider the response, and either allow the case, issue another office action, or refuse to consider the amendment based on his/her opinion that the amendment represents “new matter.”  Therefore, it is important that the patent attorney assure that the proposed amendment is supported by the original specification, or that continued examination be sought (via a continuation, requiring additional filing fees).   Occasionally, the examiner or the attorney may contact the other to discuss (“interview”) the case, to see if an agreement can be reached as to acceptable amendments and the scope of claims that might be allowed. An examiner interview, however, does not remove the necessity of replying to the office action within required time frames.

How long do we have to respond to office actions?
The deadline for response to most office actions is three months from the mailing date of the office action from the USPTO.  Three one-month extensions are available beyond that date with payment of additional, and escalating, fees.   An office action in the form of a restriction requirement, however, requires a response within one month, with five one-month extensions available (also with payment of additional, escalating fees).  It is recommended that final office actions be filed within two months from the mailing date, in order to procure the examiner’s obligation to respond.  The examiner is not required to consider responses filed after that date, and continued examination after that point will likely require that the case be appealed and/or continued, with payment of the corresponding fees.

What is your role as an Iowa State University inventor in responding to the office action?
If the decision has been made to respond to the office action, the attorney will be directed to obtain any necessary assistance to prepare an appropriate response.  Unless the objections or rejections are purely procedural in nature, it is likely that the inventors will be contacted for their input on draft responses prepared by our patent attorney.  In fact, there are usually two or three drafts prepared before the final response is prepared and filed with the USPTO.

How many office actions will occur?
It is reasonable to expect to receive three office actions per application.  If continuations are filed, for example, there will be additional office actions issued.

What are patent maintenance fees?
Utility patents are subject to the payment of maintenance fees which must be paid to keep the patent in force. These fees are due 4, 8, and 12 years from the date the patent is granted.  Failure to pay the maintenance fees on time may result in expiration of the patent.

What about international patent protection?
The laws of foreign countries differ in various respects from the patent laws of the United States. As stated above, for example, in most foreign countries, publication of the invention before the date of an appropriate patent application will bar the right to a patent.

Since the rights granted by a United States patent extend only throughout the United States, its territories and possessions, and have no effect in a foreign country (other than the ability to import products and services into the United States), one who seeks patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices (with the potential requirement of an additional filing in each of the regional member countries).  In most foreign countries maintenance fees (or “annuities”) are required, even before patent protection is afforded.

Most industrialized countries are signatories to the Patent Cooperation Treaty (“PCT”).  The PCT facilitates the filing of an application for a patent on the same invention in member countries by providing for, among other things, centralized filing procedures and a standardized application format.  A PCT application is required to be filed within one year of a U.S. application to which it claims priority, or sooner if desired (but in any case, it or the United States case to which it claims priority, must have been filed before any patent is filed.)

How to lose patent protection:
Rights to patent protection are limited and may be lost if the invention is disclosed in a publication.  An appropriate review of an invention’s patentability and commercial potential will take approximately three months.  However, patent application filing decisions can be made in a shorter time frame if publication is imminent.  In most instances, however, the inventor(s) are in the process of preparing or completing a manuscript at the time of disclosing the invention, thereby giving us sufficient time to review it and make the determination about protection and potential commercial value without causing delay to the publication process. The inventor(s) receive a portion of any net proceeds that might be derived from the licensing of the technology office action is received, the patent attorney must respond in writing, and must distinctly and specifically point out the errors in the examiner’s position.  There must be a reply to every ground of objection and rejection public disclosure).  Note that because the United States is a signatory to the PCT, one option is to file a PCT to protect your right to enter the United States and any other countries for examination, but delay doing so for up to 30 months (for most countries).  One may choose this delay for various reasons relating to the technology itself, expense of filings, or for commercialization reasons.
File an invention disclosure:
First, come up with something novel and useful and provide a disclosure (on our intellectual property disclosure form) to Iowa State University Office of Intellectual Property and Technology Transfer and ISURF (OIPTT/ISURF).  A disclosure contains complete description of the invention, which includes a listing of the inventors, a description of all research funding resulting in the invention (conception and reduction to practice), and all third-party materials used during the research. 


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