Patenting: #4 in the 8 steps of technology commercialization

A patent is a government-granted right to exclude others from practicing an invention. In the United States, patents are granted by the United States Patent and Trademark Office (USPTO), a federal agency organized under the Department of Commerce. Most other countries have analogous agencies.

A patent allows the holder to exclude others from making, using, selling, offering to sell, and importing the patented invention. A patent does not necessarily provide the holder any affirmative right to practice an invention, since it may fall under a broader patent owned by others.

Patentable subject matter includes processes, machines, compositions of matter, articles of manufacture, some computer programs, and methods.

The patenting process begins when OTC prepares and files a patent application with the USPTO (or foreign patent office). Patent applications are generally drafted by a patent attorney or a patent agent (a non-attorney with a science education licensed to practice by the USPTO). The USPTO holds patent applications confidential until published by the USPTO, 18 months after the initial filing.

The application then goes through a patent examination process, which involves a USPTO patent examiner reviewing the application to determine whether a patent should be granted. The results of this examination can take the form of a Notice of Allowance, indicating that a patent will be granted, or an Office Action, outlining the reasons the examiner believes a patent should not be granted. If an Office Action is issued, applicants are given an opportunity to file a written response, usually prepared by the patent attorney or agent. More than one Office Action may take place before all issues are resolved or a final decision is made by the examiner that a patent will not be granted. This process is commonly referred to as patent prosecution.

Patent protection is sought for most inventions, with the exception of some software. In certain cases, other IP protection such as copyrights or trademarks may also be considered. Outside patent counsel prepares and files university patent applications with the input of OTC and the inventor.

OTC handles the preparation and filing of patents based on information submitted in invention disclosures. The patent attorney may need input from the inventor(s) to confirm technical aspects of the invention and/or the prior art cited against the application. Inventors may work with the patent attorney in drafting the patent application, preparing responses to any Office Actions, and providing technical expertise throughout the patent prosecution process.

In most circumstances, the university begins the patenting process by filing a provisional patent application, which must be converted to a utility patent within one year. Currently, the average U.S. utility patent application is pending for about four years, although inventors in the biotech and computer fields should plan on a longer waiting period. Once a patent is issued, it is enforceable for 20 years from the initial filing of the application that resulted in the patent, subject to payment of the USPTO-mandated maintenance fees.

This application is a mechanism to establish a filing date for the invention, while delaying costs of preparing and filing a non-provisional application. A non-provisional U.S. application must be filed within one year of the provisional application in order to continue prosecution with the benefit of the provisional filing date. However, an applicant receives the benefit of the earlier filing date only for material that is adequately described and enabled in the provisional application.

Under U.S. law, any person who takes part in the conception of the ideas in the patent claims of a patent application is identified as an inventor. Thus, inventorship of a patent application may change as the patent claims are changed during prosecution of the application. An employer or person who only furnishes money to build or practice an invention is not an inventor. Inventorship is a legal issue and may require an intricate legal determination by a patent attorney.

If the university asserts its rights in an invention and files a U.S. patent application, OTC generally pays the costs of that filing. If the invention is not licensed after a reasonable period of time, OTC may decline to pay further patent prosecution costs. On licensing an invention, the licensee is expected to reimburse OTC for past patent expenses and to cover ongoing patent costs during the term of the license (see Regents’ Rule Series 90000).

Foreign patent protection is subject to the laws of each individual country, although in a general sense the process works much the same as it does in the United States. In foreign countries, however, an inventor will lose any patent rights if he or she publicly discloses the invention prior to filing the patent application. In contrast, the United States has a one-year grace period.

An international agreement known as the Patent Cooperation Treaty (PCT) provides a streamlined filing procedure for most industrialized nations. For U.S. applicants, the deadline for filing a PCT application is one year after the initial U.S. filing (either provisional or non-provisional). The PCT application must later be filed in the national patent office of any country in which the applicant wishes to seek patent protection, generally within 30 months of the earliest claimed filing date.

The University of Texas at Austin gratefully accepts patent and other IP donations which further the research objectives and the mission of the university. For each gift, a plan is submitted for approval by the Office of the Vice President for Research. The plan includes information concerning the intended use of the IP and the benefiting research effort. OTC supports the creation of the plan and facilitates these transactions.

A trade secret in general is information that is not known to the public, confers an economic advantage from being kept confidential, and is the subject of efforts to maintain its confidentiality. Examples of trade secrets can include designs, compilations of data, processes, and software source code. There is no government registration mechanism for protecting trade secrets. Trade secret status arises from the manner in which the information is used and protected by its owner.

Advantages of trade secret protection versus patent protection:

  • Trade secret protection avoids the costly and lengthy patent application process.
  • Trade secrets are not subject to an expiration date as long as confidentiality is maintained.

Disadvantages of trade secret protection versus patent protection:

  • Owners of trade secrets cannot exclude others from using the same invention if they separately discover or derive it, while a patent holder can prevent that use.

In short, trademarks and service marks are brand names. A trademark includes any word, name, symbol, device, or combination thereof, that is used in commerce to identify and distinguish the goods of one manufacturer or seller from those manufactured or sold by others, and also to indicate the source of the goods. Trademarks allow the owners to exclude others from using the same or similar marks. A service mark is similar to a trademark, but applies to services instead of goods. UT's Office of General Counsel has more information on trademarks.

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