If the decision is made to file a patent application on an invention disclosure, we will begin by filing a provisional patent application with the U.S. Patent and Trademark Office (USPTO). Provisional applications allow the University to obtain an initial filing position quickly and often at a lower initial cost than a non-provisional application.
A provisional application gives the Technology Transfer Office (TTO) a year from the date of filing to market the invention and evaluate the commercial interest in the technology. This assists the TTO in determining whether the resources should be expended to file a non-provisional patent application.
The Patent Application: The preparation of the application can take from several weeks to several months. During the drafting of the patent application, outside patent counsel 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.
- The claims 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 USPTO. An Information Disclosure Statement (IDS) will be filed in the USPTO within 6 months from the filing of the non-provisional patent application. The IDS includes copies of all known information (i.e. prior art) that shows or describes features of the claimed invention in the patent application.
Office Actions: The USPTO issues the first Office Action between 12 and 24 months from the date the non-provisional application is filed. Subsequent Office Actions are issued until a Final Office Action is issued. The Office Actions are 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 in the application, that there is no prior art, and that the invention is useful and not obvious. The Office Actions set 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. The TTO or attorney may contact the inventors for their input to prepare the response to the Office Action.
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. Formal patent drawings must be submitted to the USPTO along with the payment of an issue fee. The patent will issue shortly after the issue fee is paid. It can take anywhere from 3 to 5 years or longer for a patent application to become an issued patent. 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 $800 to $3,100. A patent is good for 20 years from the earliest effective filing date of the application.