Patents

Is there more than one type of patent?

Yes, there are 3 types of patents: utility (most common), design and plant patents. Utility patents protect the functional aspects of an invention and are considered more valuable than design patents which only protect the ornamental appearance of an article, not its structural or functional features. Plant patents protect new varieties of plants.

What can be patented?

A patentable invention is a new, useful, and non-obvious:

  • Process
  • Machine
  • Composition of matter
  • Article of manufacture
  • Any new and useful improvement to the above

Software can be patented provided it demonstrates useful, tangible results which fall under the above categories.

A patent cannot be obtained on a mere idea or suggestion.

Can a researcher publish his/her findings, and will publishing affect patenting in the USA and foreign countries?

It is best to consult with OTMC before any publication is submitted, if there might be a possibility a valuable invention being disclosed by it.  OTMC can file a provisional patent to protect the possible invention with 30 days notice before the publication submission.

Researchers are generally free to publish or make public disclosures of their findings at any time, in any media of their choice, limited only by contractual obligations.

There is little incentive to "publish ahead" instead of filing a patent application. The prior law allowed a one-year grace period after presenting or publishing your work to file a US patent application. However, because other countries did not have (and still do not have) similar provisions, such a publication in advance of filing any patent application would result in forfeiture of patent rights everywhere except the US. That forfeiture aspect is still true. The AIA left the grace period intact, so anyone who is only interested in a US patent can publish first and file later, as long as the filing happens within 1 year of publication. In most cases, filing a U.S. patent application before the first public disclosure will preserve the right to file outside the U.S. for one year at which time an application has to have been filed under Patent Cooperation Treaty (PCT).

Publishing puts others on notice about what you're doing, and it will prevent others from patenting the same idea. You'll still be entitled to the U.S. patent as long as you file within a year. Even if you publish, others may not be able to learn for a while whether or not you also filed a patent application. However, your early publication gives others a chance to improve on your disclosure and file their own patent applications on the improvement, perhaps very soon after seeing your publication. They may be entitled to a patent on the improvement if it's a good enough twist on your original idea.

If two people make the same invention, who gets the patent?

The first inventor to file for the patent.  Except, for a  U.S. patent, if an inventor had published the invention and also filed within twelve months of the first public disclosure, they get the patent, even if someone else filed first.

How do I search for patents?

Patent searching varies in complexity, based on particular needs. If you are searching for an existing patent or a patent application, this can be done relatively easily on the USPTO web site. If, however, you are an inventor, looking to see if anyone has claims to a similar development as yours, patent searching can be a little harder.  For example:

One must make sure that the item has not been patented. This would require examining each patent in the subject area to determine if there is prior claim to the idea(s).  Can do a key word or words search.One must search as far back in time as the invention has been technologically possible.Anything that has been previously patented cannot be patented again, even though that patent may have expired. Once a patent expires, the invention becomes part of the public domain, meaning that anyone may be able to use or manufacture the invention listed within.

The USPTO web site, www.uspto.gov, has some helpful information on how to conduct patent search of various kinds.

How do I get copies of patents?

For US patents, you can obtain for no cost on the USPTO web site:www.uspto.gov.

Foreign Patents: Many patent offices post free patent databases. Major patent office databases include the EPO's esp@cnent, China's SIPO, Japan's IPDL, South Korea's KIPRIS, the U.K.'s Ipsum and Canada's Canadian Patent Database. Links to most other government sites are available through the British Library's Patents pages. Patents are generally filed in each country's home language. English searching and/or translations are available for some non-English speaking countries.

Who files for the Patent?

OTMC will decide if a Patent should be filed and uses the Technology Disclosure Form for some of the information needed.

What is a provisional patent application?

A provisional patent application is a United States patent application that may be filed without some of the formalities required of a regular patent application. A provisional patent application is not examined by the U. S. Patent and Trademark Office, and a patent cannot issue directly from a provisional application. Please note that a provisional application is abandoned as a matter of law one year after its filing date. A provisional application may be "continued" by filing a regular, non-provisional patent application satisfying all necessary formalities within one year of the provisional filing date.

The principal advantage of a provisional patent application is that its pendency, which cannot exceed one year, does not count as part of the twenty-year patent term. Although a provisional application need not satisfy all the formal requirements of a regular patent application, a provisional application should provide enough detail about the invention so it can be used to protect all the "Claims" in the full patent.  Any "Claim" not supported by the provisional patent will lost the earlier date.

The filing of a provisional patent application starts the one-year period during which a foreign patent application may be filed that claims the benefit of a United States filing date.

What is the cost of obtaining a U. S. patent?

The cost of obtaining a patent varies widely. Factors include the attorney's time and hourly rate; the type of technology being patented; the number of claims and drawings included in the application; the number and nature of rejections from USPTO; filing fees, etc. It is not unusual for the cost to range between $10,000 and $20,000+.

How are foreign patents obtained?

By filing in a foreign patent office. Example, for the European Union the European Patent Office. There can be absolutely no public disclosure of the technology before the foreign filing date.

Who at UNO decides to apply for foreign patents?

Foreign patent rights are expensive and UNO often does not pursue them, unless a licensee is willing to pay for these costs. OTMC Director is responsible for the decision to foreign file.

What is a "C-I-P?"

A continuation-in-part, or C-I-P, is a later-filed patent application adding new disclosure information to a pending application. A C-I-P is often filed on an improvement to an invention disclosed in an original application.

What is a continuation?

A continuation is a later-filed application adding no new disclosure. It is entitled to the benefit of the original filing date. It must have claims that are fully supported by the parent application's disclosure.

How can new claims and/or data be included in a patent already applied for?

New matter cannot be added to the disclosure. New claims can be added if fully supported by the original disclosure. New data can sometimes be submitted to show the original disclosure. New data can sometimes be submitted to show that "paper" or "hypothetical" examples in fact work as predicted, but never to supplement an omission in the original disclosure.