Patent Protection Process
From first filing to full protection, the patent process can cost $20,000-30,000; this cost is entirely borne by the university. Our first step is to assess the novelty of the innovation and the commercial potential. There are occasions when the idea is indeed unique, but research indicates that there is little to no commercial value. In that case, the university may decide not to proceed with the process, and the inventor may assume responsibility for the process if they desire.
The first filing is generally a provisional patent. The full patent process can be extensive and costly. In the interest of time and protection, the provisional patent makes the ‘first claim’ of the idea, and provides the university with a full year to file a full patent application. This provides KUCTC with the time to conduct a thorough market survey, identify potential licensing partners, and consult with third party experts for validation of the novelty and commercialization of the innovation. This research can provide useful information allowing us to file a ‘stronger’ patent application.
Filing a Patent
Within the first calendar year of the provisional patent filing, the university can file a complete patent application. This application will be reviewed by an examiner at the USPTO, who will assess the novelty and usefulness of the innovation. This process can take several years.
Most patent applications are rejected, and patent attorneys will respond to objections, often providing further documentation to the Patent Office.
Patent application is published by the Patent & Trademark Office (PTO)
Patent applications will be published 18 months from the earliest date of filing. The 18-month period begins on the date of filing of a provisional patent application. A regular non-provisional patent application that follows a provisional filing (12 month pendency) will publish within 6 months of filing.
Examination of Patent Application
A PTO Examiner will search both the scientific and patent literature (collectively “prior art”), known and publicly accessible, prior to our date of filing to determine whether the patent application discloses and claims new and patentable subject matter. The Examiner will look at each claim of the patent on a claim-by-claim basis. The most common rejection of a patent claim is on the basis of the USC 103 (obviousness rejection). Under USC 103, the combined teachings of several prior art references can be combined by the Examiner to reject one or more claims. In rejecting claims, the Examiner takes the view that the combined references teach the inventive step of the applicant and render the claimed inventions “obvious” to one skilled in the scientific art being reviewed. The written result of the PTO examination is called an Office Action. Years can pass after filing before the PTO issues a first office action on an application.
Response to Office Action
The patent attorney, with the assistance of the inventor, responds to the examiner with arguments about why the invention is patentable. Steps 2 and 3 may be repeated. Often there are at least two office actions issued from the PTO before claims are allowed or given a final rejection.
Notice of Allowance
Notice of allowance is sent when the examiner is satisfied that all claims meet the criteria. The fee to issue the patent is due three months from the notice of allowance.
Patent is Issued
The term of the patent begins with the earliest effective filing date of the patent application. Maintenance fees are assessed at three, seven and eleven years of the patent term to continue federal protection.