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Technology
Transfer “101”
Patents
A patent (a right defined in Article I, section 8 of the United
States Constitution) is a mechanism by which inventors can exclude others from
making, using or selling their invention. The
invention can be a new product or article (a manufacture), an apparatus
or device (a machine), an action performed in order to yield a specific
result (a process), or a new chemical (a composition of matter). Current patent law also allows for patents on life forms and
software under certain circumstances. Significant
improvements over a patent already in existence, or an entirely new use for an
existing patent also can be protected. The
U.S. uses a “first-to-invent” system for determining the true inventor,
whereas other countries use a “first-to-file” system.
A patent is awarded by the federal government if the inventor can prove that the
invention is unique, has utility, and is not obvious to someone with
“ordinary skill in the art”. The
Department of Commerce, the agency that administers the U.S. Patent and
Trademark Office ("PTO"), has awarded more than 6 million patents since the office was
founded in the late 1700s. The current
rate of patent awards is more than 160,000 per year.
Time between filing the application and seeing the patent issue averages about 2
years, but fields such as biotechnology often have patents under process and
review for more than 3 or 4 years. During
this period of “patent prosecution” there usually is a volley of exchanges
between the PTO rejecting some aspect of the application and the inventor’s
legal representative attempting to disprove the allegations or grounds for
rejection.
When it issues, a patent has a lifetime of 20 years from the filing date.
Note that a patent is an exclusionary right. It affords the
owner of the patent the opportunity to prevent others from making, using or
selling the invention. It may not
actually allow you to practice your own invention if someone has another patent
that dominates yours. After the
twenty-year period (to the day) of exclusive control, anyone can practice the
invention without fear of being challenged by the inventor.
Most academic institutions deal with the standard type of patent called a “utility”
patent. There also is a “design”
patent that is used to protect the appearance or non-functional aspects of an
invention. It is reserved for the ornamental features only, and it is often
easy to “invent around” or circumvent the intent of such protection.
The patenting process is expensive. MCG
contracts with outside patent attorneys to write the application (with the input
and guidance of the inventors on the technological aspects) and to navigate it
through the patent office. Average costs
for filing and prosecuting a typical utility patent approach $15,000, and
can often be double that figure. Once
a patent is actually awarded, there also are maintenance fees at years 3, 7, and
11 that add several more thousand dollars to the bottom line.
Foreign filings in the standard set of industrialized nations usually
cost about 10 times more than domestic filings, so academic institutions
typically only file in other countries if there is a licensee in place ready to
absorb those costs.
Since one can file for a U.S. patent only within a one-year period after any
type of pubic disclosure (one that contains detail sufficient for another
individual to build the invention or duplicate the process) or offer for sale,
MCG researchers and inventors should pay close attention to their presentation
and publication plans.
Note that the public distribution of abstracts of presentations before meetings
are held, and the web-based
distribution of articles by journals before the publication is mailed out to
subscribers, will start the one-year clock running earlier than one often
assumes.
The PTO is very strict on this timing requirement, and the 12-month rule means exactly
365 days from the point of disclosure or offer for sale.
Foreign filings have an absolute requirement for novelty, and any pubic
disclosure normally will eliminate the possibility of ever subsequently filing
in other countries. There is an exception
to this rule, however, since one can file in the U.S. and then submit a Patent
Cooperation Treaty application, or PCT filing, within one year of
filing in the U.S. This allows you to then make public presentations while to
consider which foreign countries you wish to have patent protection in, and
submit the country-by country national filings at a later date.
Publishing and patenting need not be mutually exclusive.
Filing for a patent does not necessarily impede the scientific process.
In fact, patenting and publishing can complement each other.
However, the sequence of actions
and the timing that will best serve the inventor, the institution, and society
need to be given serious consideration. The
position of the OTTED is that the ultimate decision on whether or not to publish
rests with the inventor. When in doubt,
please consult the tech transfer office for assistance or clarification.
Most of the comments above pertain to a regular patent filing.
The PTO has another route that is simpler and affords another way to
enter the patenting process. A provisional
patent application can be based on a manuscript or detailed drawings or even
a grant proposal. For a modest fee, one
can either submit that material or a rough draft of a patent application without
developing claims or full detail. These
applications are not reviewed, but rather only serve as a mark in time, and
reserve a place in queue at the PTO. After
a one-year period, the provisional application must be converted to a regular,
fully-detailed application or it will be abandoned.
In a way, this extends the 20-year life of a patent by another year.
It is the preferred method of protection when a public presentation is
going to be made before a full or regular application can be developed by a
patent attorney.
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