A patent is an exclusive right granted for an invention by a government.
In exchange for public disclosure, the patent holder is given the right to exclude others from making, using, or selling the invention. The U.S. Patent and Trademark Office (USPTO) is the government body responsible for examining and issuing patents in the United States.
The USPTO issues several different types of patents, though utility patents tend to be the most common.
Utility Patent
A utility patent protects a new and useful process, machine, article of manufacture, composition of matter, or any new and useful improvement of any of the foregoing.
Design Patent
A design patent protects a new and ornamental design for an article of manufacture where the design is nonfunctional, is part of, and cannot be removed from the article.
Plant Patent
A plant patent protects a distinct and new asexually-reproduced plant. This includes cultivated sports, mutants, hybrids, and newly found seedlings, but does not include a tuber-propagated plant or a plant found in an uncultivated state.
A provisional patent application is a simplified patent application that is typically filed to establish a filing date for an invention and has a pendency of 12 months. If the applicant does not file a non-provisional patent application before the provisional application expires, then the invention reverts to its prior unprotected state. Provisional patent applications are not examined by the USPTO.
The provisional patent application process is beneficial because it is more flexible and less expensive than a non-provisional application. A provisional patent application has the added advantage of affording the inventor a year to generate additional supportive data and further refine the invention before filing a more robust non-provisional patent application, without impacting the 20 year patent term. It is important that ALL aspects of the invention be included in the provisional application to ensure that claims in any subsequent non-provisional patent application are entitled to the provisional application’s earlier filing date.
Unlike a non-provisional application, which is generally published by the USPTO 18 months from the earliest filing date, a provisional patent application will not be published or made public unless a non-provisional application is filed.
The Patent Cooperation Treaty (PCT) is an international treaty which enables a U.S. patent applicant to file an application (a “PCT application”) in English with the USPTO and have that application have the same effect as a regular national or regional filing in all the countries that are a party to the treaty. PCT applications are not examined per se, but can serve as a placeholder for seeking patent protection in any of these countries. In most cases, up to 18 months from the time a PCT patent application is filed (or 30 months from the filing date of the initial patent application of which you claim priority, typically the first filed provisional application), we need to decide whether there is merit in filing national phase applications in each territory or country where patent protection is desired. The PCT application allows the applicant to defer the substantial costs associated
The Leahy–Smith America Invents Act (AIA) is a federal statute that was enacted on September 16, 2011. Under AIA, a number of significant changes was made to U.S. patent law, which included switching from a “first-to-invent” to a “first-to-file” system . Under the new law, if two applicants file for the same invention, if found to be patentable, the patent will be awarded to the applicant with the earlier filing date. This brings the U.S. into closer harmony with the rest of the world. Additional changes under AIA include the introduction of a “post-grant” review procedure that allows other parties to challenge the validity of patents filed after March 16, 2013, without the need to bring a lawsuit, and changes that increase the scope of prior art that may be available to argue against the patentability of an invention.
Prior art refers to publicly-available information that may impact the patentability of an invention claimed in a patent application. If an invention is described in a patent, published patent application, or other printed publication, or on sale, in public use, or otherwise publically known BEFORE the filing of a patent application, then the invention may not be eligible for patent protection.
Patent claims define the specific elements and limitations of the invention for which the applicant is claiming rights. Non-provisional patents are required to contain at least one claim.
The written description requirement mandates that a patent application describe the technology that is sought to be patented. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail such that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing. Possession can be established by describing the claimed invention with all of its limitations using words, structures, figures, diagrams, and formulas.
The enablement requirement necessitates that a patent application describe the invention in such terms that one skilled in the art can both make and use the claimed invention. Inventors should note that the enablement requirement is separate and distinct from the written description requirement.
Establishing who should be named as an inventor on a patent or patent application is a process called inventorship determination. Under U.S. patent law, an inventor is a person who contributes to the conception of at least one claim of a patent application or patent covering the invention. Of note, inventorship is distinct from authorship on a paper. For example, inventors would not include individuals whose sole contribution was conducting routine laboratory experiments under the direction of another, or editing an associated scientific paper. Researchers submitting an Invention Disclosure Form to OTIIR should include all individuals who may have been involved in the conception of their invention. Naming the correct inventors is a legal determination made by patent counsel and is important for patent validity.
Patent prosecution is the process of patent examination during which the patent office determines if the claimed invention meets the necessary criteria to be awarded a patent. During this process, it may be necessary to amend claims and/or present arguments to overcome an examiner’s rejections in order to obtain an issued patent.
An Office Action (OA) is a document issued by a United States Patent and Trademark Office (USPTO) patent examiner during patent examination wherein the examiner explains why he/she has allowed or rejected some or all of the applicant’s claims. It is not uncommon for a majority of the claims to be rejected initially and patent counsel will work with OTIIR to try to overcome these rejections.
The applicant must respond to an OA within a fixed period of time to avoid abandonment of the application.
Broadly speaking, the claims in a US patent application may be rejected by an examiner on any of five grounds: (1) subject matter and utility, (2) novelty, (3) obviousness, (4) written description, and (5) enablement.
To be eligible for patenting the claimed invention must be considered statutory subject matter for patenting and have utility. The four statutory categories are: (1) machines, (2) articles of manufacture, (3) compositions of matter, and (4) processes. Ineligible subject matter includes: (1) laws of nature, (2) physical phenomena, and (3) abstract ideas.
A patent claim may also be rejected if the claimed invention is found to not be novel. A rejection based on obviousness is issued when the examiner concludes that the invention at issue would have been obvious at the time the invention was made, to a person having ordinary skill in the art.
A patent specification must also satisfy the written description, enablement, and best mode requirements. Lastly, the best mode requirement states that an inventor must disclose the best way to practice the invention known to him/her at the time of filing.
The patent office requires that a patent application claim a single invention. A Restriction Requirement may be imposed if an examiner concludes that (1) a single patent application claims two or more independent or distinct inventions, and (2) searching these inventions would place a serious burden on the examiner. The Restriction Requirement directs the applicant to elect to pursue one group of claims in the application. If appropriate, the non-elected claims may be pursued in a divisional application (see below).
A continuing application is an application based on an original patent filing (the “parent” application) which shares the same priority date as the parent application and at least a portion its specification. In the United States, there are several types of continuations: (1) continuations, (2) divisionals, and (3) continuations-in-part. A continuation application is usually filed by an applicant who wishes to pursue additional claims to an invention that was disclosed in the parent application but for which claims were not previously included or were not allowed.
A divisional application is filed to capture claims not pursued following a Restriction Requirement (see above). A continuation-in-part (CIP) application is used when an applicant wishes to add additional subject matter not previously included in the specification of the parent application.
A number of different patent offices around the world (including the USPTO) have been appointed as International Searching Authorities (ISA) to perform searches to identify relevant patent documents and other technical literature which might affect the patentability of the invention disclosed in a PCT application. The results of this search form the basis of the International Search Report (ISR), which is provided to applicants by the ISA after filing of the PCT application.
A Written Opinion (WO) is a preliminary and non-binding document issued along with the ISR by the International Searching Authorities (ISA) on whether the invention appears to have utility (or industrial applicability), and is novel and non-obvious in light of the relevant patent documents and technical literature identified in the ISR. The written opinion can be helpful in evaluating the probability of obtaining a patent for the claimed invention before incurring the significant expense associated with national phase filings. Inventors may want to review the documents cited in the ISR and WO, and the inventor should contact OTIIR with any questions.
Once a patent application is ready for examination, it is not uncommon for the process of patent prosecution to take 3 to 5 years in the United States, and even longer in other countries. In the United States, an application is not ready for examination until a non-provisional application is filed either directly or enters the U.S. national stage from a PCT application. In many other countries, an application is not ready for examination until a “request for examination” is filed.
In the United States, a utility patent’s term lasts for 20 years from either (1) the date of filing of the non-provisional patent application or (2) the earliest filing date of any non-provisional application to which priority is claimed, whichever is earlier.
In other jurisdictions, patent duration may vary; however, most territories provide for a 20 year term from the filing date.
The process of obtaining a patent through the OTIIR occurs in three major stages: (1) submitting an Invention Disclosure Form; (2) working with a patent attorney and OTIIR to prepare and file a patent application; and (3) prosecuting the patent application to secure patent rights. The inventor(s)’ involvement with OTIIR and outside patent counsel throughout this process is critical to successfully obtaining a patent.
Assignment refers to the transfer of ownership of a patent. The party assigning the patent is the assignor, and the recipient of the transfer is the assignee.
The duty to promptly disclose to OTIIR extends to all potentially patentable inventions that one conceives and/or reduces to practice while a UC employee. However, UC only takes ownership over those inventions that are conceived or developed (1) within the course and scope of UC employment while employed by UC, (2) during the course of utilization of any UC research facilities, or (3) through any connection with the use of gift, grant, or contract research funds received through the UC.
No. Patent applications are frequently licensed by OTIIR to parties interested in commercializing these rights.
OTIIR or outside patent counsel sends various communications to inventors throughout the course of prosecution. In the initial stages, OTIIR or outside patent counsel works to ensure that assignments, declarations, and government grant information is correct. Lack of diligence in this respect can jeopardize patent rights. It is important for inventors to review, sign and return documents to OTIIR as soon as possible.
Certain communications sent by OTIIR or outside patent counsel are labeled as informational.
Other communications have deadlines and require inventor input. In particular, following receipt of Office Actions, OTIIR or outside patent counsel may request that inventors provide their expert input on how to overcome any rejections issued by an examiner. Because inventors are experts in their chosen field, they are well placed to support patent counsel in addressing an examiner’s rejections.
While it is always preferable to provide our office with sufficient time to fully understand your Invention Disclosure, if absolutely necessary because of an imminent enabling public disclosure, we can get a filing in place in a few days. Optimally we would like at least two to three months so that there is time for a higher quality provisional application to be filed.
Yes, you can speak publicly about your work, however -- timing and limiting the scope of information shared is crucial.
Since the ability to obtain patent rights on an invention may be negatively impacted by publications and other public disclosures made prior to a patent application filing, it is important to submit an Invention Disclosure Form to OTIIR well before (at least 1 to 2 month, when possible) any such publication or other disclosure.
This prior disclosure will enable OTIIR to have the opportunity to file a patent application on the invention, to the extent desirable. Such disclosures can include presentations, lectures, posters, abstracts, thesis defenses, and publications either online or in print. Research proposal submissions are generally not considered public disclosures (however, please be sure to check whether the proposal will become publicly available should the grant be awarded).
Release of inventions are rarely granted as there are several interests that UC Merced must take into consideration before doing so. For instance, if the creation of the invention involved federal funding, the invention must first be released to the applicable federal agency and then the inventor must request title from the federal agency. UC Merced may also be prohibited from releasing the invention if it has contractual obligations to third parties in relation to such invention, for example, if the inventors received any financial support or materials from commercial entities or nonprofit foundations. Also, often an invention is created by several researchers, each of whom may have different opinions as to whether and how to commercialize the invention.
While it is possible for an invention to fall outside of the scope of a UC Merced employee’s obligations under the UC’s Patent Policy and Acknowledgement, the invention must be disclosed to, and such determination must be made after consultation with OTIIR.
UC Merced employees who engage in consulting, or in summer or incidental employment, outside UC Merced are advised to consider any proposed agreements with industry carefully to ensure that no conflict exists with the University of California’s Patent Policy and Patent Acknowledgment. Importantly, UC Merced employees must disclose all inventions made during their employment with UC Merced to OTIIR, regardless of whether the researchers believe the invention was made entirely outside of the scope of his or her employment.
In addition, while it may be possible for the title to an invention to reside with the inventor if it was developed entirely on his or her own time without using campus equipment, supplies, facilities, or confidential information, it remains a fact based decision based on several factors. For example, even if the invention was made entirely outside and independent of an employee’s research on campus, ownership of the invention will reside with The Regents if the invention relates to the actual or anticipated research of the inventor or results from any work performed by the inventor for UC Merced.
Under U.S. patent law, an inventor is a person who is involved in the conception of an invention as claimed in a patent application. This is a legal determination that is distinct from authorship on a paper and is determined by our outside patent counsel. Correctly naming inventors on a patent is important for patent validity so you should list all individuals on the Invention Disclosure Form who may have made an inventive contribution.
Outside patent counsel can then determine who qualifies as inventors.
A patent is a set of exclusive rights granted by a government to an inventor (or assignee) for a limited period of time in exchange for a detailed public disclosure of such invention. Importantly, a patent allows the owner to exclude others from using the claimed invention – it does not necessarily extend the right for the owner to practice and commercialize such invention, as it is possible third parties may also own proprietary rights that block the commercialization of such owner’s invention.
The procedure and requirements for pursuing and obtaining a patent on an invention vary between countries according to their laws and international agreements.
The U.S. Patent and Trademark Office (USPTO) is the government body responsible for examining and issuing patents in the United States.
Patent claims define, through the use of technical terms, the scope of subject matter sought to be protected (and if such granted, obtained) in the pursuit of a patent.
The claims are found near the end of the patent and serve to provide notice to others as to what the patent owner can exclude others from making, using or selling.
There are specific considerations that apply to the pursuit of intellectual property protection on software products, including by way of example computer and phone apps.
Recent U.S. Supreme Court rulings have limited an inventor’s ability to patent their software. However, software can still be protected by copyright and successfully licensed to commercial entities. Further, software combined with hardware (e.g., a sensor) increases the chances that the software can be patented.
