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 other previously entered contractual obligations. However, a public disclosure of the Technology destroys most non-U.S. patent rights immediately if the patent application has not already been filed. U.S. rights are lost if the patent application is not filed within twelve months of the publication or presentation. In most cases, filing a U.S. patent application before the first publication or presentation will temporarily preserve the right to file outside the U.S.

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

The first inventor to file for the patent in most countries.  U.S. rights are lost if the patent application is not filed within twelve months of the first public disclosure, but if someone else files first, the U.S. rights are lost. Don't let your work be used by some one else.

In either case, it can often be hard to prove unless good records (Lab notebook) have been maintained.

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 use 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  should provide enough detail about the invention so it can be used to protect it properly.

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.