The Patent Process

If it has been determined that a patent application should be filed on an invention disclosure, UMass will most often begin by filing a provisional patent application with the U.S. Patent and Trademark Office (USPTO or PTO). Provisional applications have only been available since 1995 and they allow the University to obtain an initial filing position quickly (e.g. if there is an upcoming publication) and often at a lower initial cost than a non-provisional application. A provisional application also gives CVIP a year from the date of filing to market the invention and evaluate the commercial interest in the technology. This assists CVIP in determining whether the resources should be expended to file a utility (or non-provisional) patent application.

1) The Patent Application:  The preparation of the application can take from several weeks to several months from the beginning to the actual filing with the USPTO. During the drafting of the patent application, the attorney will be in contact with the inventors and request information and scientific details to be incorporated into the application. The patent contains two main parts, a specification and the claims. The specification is a description of the invention which may include drawings, that describes in detail how to make and use the invention. Following the specification are the claims which define the scope of the rights granted by the patent. The two types of claims include independent claims, which cover the main points of the invention and stand alone, and dependent claims which refer to and incorporate earlier claims. Once a draft of the application has been approved by all parties, the attorney will file the patent application with the USPTO. Simultaneously or shortly thereafter, the attorney will request that inventors execute an Assignment and Declaration that will be filed with the PTO.

2) Information Disclosure Statement: Within 6 months from the filing of the non-provisional patent application an information disclosure statement (IDS) is filed with the PTO. The IDS would include copies of all known information (i.e. prior art) that shows or describes features of the claimed invention in the patent application.

3) Initial Office Action: The USPTO sends an Office Action to the attorney’s office usually between 12 and 24 months from the date the non-provisional application was filed. The Office Action is prepared and issued by an examiner from the USPTO. It is the examiner’s job to make sure the specification sets forth what is claimed, that there is no prior art, and that the invention is useful and not obvious. The Office Action sets forth the examiner’s objections including prior art concerns and reasons for believing the claims to the invention are anticipated or obvious. Within 3 months from the date of the Office Action, a response must be submitted to the examiner’s objections. CVIP will usually contact the inventors for their input in order to prepare a response to the Office Action.

4) Additional Office Action(s): In general, there is a second Office Action from the USPTO examiner within 3 to 6 months following the filing of the response to the initial Office Action. As in the initial Office Action, the examiner presents additional rejections to the claims and a response to the Office Action is filed with the USPTO. Again, CVIP will usually contact the inventors for their input to assist the attorneys in the drafting of the response. At this point, once negotiations have concluded with the examiner, the examiner will indicate which claims have been allowed or issue a third or Final Office Action and a response is again drafted and filed with the USPTO.

5) Notice of Allowance: Hopefully, the responses to the Office Actions will be satisfactory to the examiner and the USPTO will send out a notice of allowance. At this point, formal patent drawings must be submitted to the PTO along with the payment of an issue fee. The patent will usually issue between 2 to 6 months from the date the issue fee was paid. Please note that it can take anywhere from 3 to 5 years or longer for a patent application to become an issued patent. Biotech applications often take longer. Future maintenance fees for an issued U.S. patent will be due 3 ½, 7 ½, and 11 ½ years after issuance. These fees range from $880 to $3,100. A patent is good for 20 years from the earliest effective filing date of the application.

6) Divisional Applications: If there was a restriction requirement to one or more claims in the initial office action, a Divisional application addressing the restriction can be filed prior to the patent issuing.

7) Continuation-In-Part Applications: This type of application is usually used to claim an improvement to the original patent application and can be filed while the application is still pending.