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Patents at the University of Cincinnati

A patent is a right granted by each country in exchange for a complete disclosure of an invention. The disclosure is initially a confidential disclosure to the patent office which later becomes a non-confidential disclosure to the public at large. A patent grants to its owner the right to exclude others from making, using or selling the claimed invention for a limited period of time. Subject to the payment of the prescribed fees, patents generally have a life of 17 to 20 years depending on the jurisdiction. In the U.S., patents have a lifetime of 20 years from the date of filing.

By law, in order to be patentable, an invention must be novel, useful, and not obvious to a person skilled in the field of the invention. Of the three, nonobviousness is the most difficult hurdle.

Products, processes, machines, manufactures or composition of matter, or any new and useful improvement of any of these, such as new uses of known compounds, are patentable subject matter. Novel, genetically engineered life forms and new microbial life forms can be patented in some jurisdictions, such as the United States. Methods of medical treatment are also patentable in some jurisdictions, such as the United States, but not in others. Scientific theorems or principles, methods of doing business or of playing games, as well as anything which is illegal or illicit, are not patentable.

Provided software can meet the usual criteria for patentability, it can be patented in some jurisdictions. In practice, however, it is difficult to meet the novelty requirement. The typical form of protection for software is copyright.

New plant varieties can be protected by way of a plant patent in the United States. Some other jurisdictions have equivalent legislation.

Integrated circuit designs can be protected in the United States under the Maskworks Protection Act. Other countries are considering similar legislation.

Harmonization of international patent laws is progressing rapidly but at the moment each country grants its own patents based on its own standards. The Paris Convention Treaty of 1887 facilitated filing of applications in all member nations. It states that if a patent is filed in one member nation, and other applications are filed in the other member states within one year of the first application, all such applications will be accorded the filing date of the first application. This is very important when considering the effect of publication in a scientific or other journal on a foreign patent application.

The Patent Cooperation Treaty (PCT) offers a relatively inexpensive mechanism for initiating foreign patent protection rights by deferring some of the major patent expenses (such as foreign translation costs) for up to 30 months from the initial patent filing.
 

The Patenting Process

In order to provide licensees with commercially exploitable intellectual property protection, UCIPO supports the patenting of inventions arising during the course of research at the University. The UCIPO will evaluate disclosed inventions and seek patent coverage, when appropriate, in the United States and other countries.


Patent Applications

To obtain a patent, an inventor must file an application fully disclosing the invention in the Patent and Trademark Office (PTO). The PTO examines the application and, if the invention meets all patentability conditions, grants a patent.

Patent application drafting is an important and complex undertaking. The drafter must understand the technology surrounding an invention and describe the invention accurately and completely. A complete patent application includes a specification including at least one claim, drawings (if necessary), an inventors oath or declaration, and a filing fee. The specification and drawings filed with an application must full disclose the invention. These are then printed as part of the issued patent. The specification and drawings must provide sufficient information about the invention so as to enable any person skilled in the art to which it pertains to make and use the invention. The specification must also the "best mode contemplated by the inventor" of practicing the invention.

Various fees are payable to the PTO as part of the patenting process. Currently, the University receives a 50% discount of fees as a nonprofit organization. These fees, which add up to thousands of dollars, include filing, application processing, patent issue, document supply, maintenance, reeexamination, and miscellaneous fees. The majority of cost of obtaining a patent, however, is the cost of prosecution by a patent attorney. The total cost of obtaining and maintaining a patent is tens of thousands (and sometimes hundreds of thousands for worldwide protection) of dollars. Therefore, the UCIPO must be selective in which patent applications should be pursued and in which countries.

While the PTO holds applications in confidence until a patent has issued, the "American Inventors Protection Act of 1999" (P.L. 106-113) provides for publication of patent applications 18 months after filing unless the applicant requests otherwise upon filing and certifies that the invention has not and will not be the subject of an application filed in a foreign country. Provisional rights are available to patentees to obtain reasonable royalties if others make, use, sell, or import the invention during the period between publication and grant. If the foreign-filed application is less extensive than that filed with the PTO, the applicant may submit and request publication of a redacted version by the PTO.

Patent applicants have a duty to disclose to the PTO information of which they are aware that is material to examination and to refrain from misrepresenting facts. Violation of this candor duty may be "inequitable conduct" that renders the patent's claims unenforceable.


Timing of Applications

The appropriate time to file a patent application is at the point at which the invention has been completely conceived in a workable form. In some cases, this may require "reduction to practice" at the laboratory bench, while in others an analytical description may be enough. In the UC research environment, reducing an invention to practice while keeping open the possibility of patent protection is challenging, since an inventor may desire to publish several articles or research abstracts as the invention proceeds from conception to utility. As part of an academic institution, an inventor may decide that the certain gain of publishing is more valuable than the uncertain gain from patenting an invention. It is often a difficult decision to decide between filing a patent application on an unproven, unpublished concept and losing U.S. and foreign patent rights later because the concept was disclosed in publications as its feasibility was being demonstrated.


Patent Prosecution

When an application is submitted to the U.S. Patent and Trademark Office (PTO), it is routed to a Patent Examiner within the appropriate field for review. There is no certainty that a patent will issue. The Examiner reviews the application in light of the patent statutes and prior art to determine whether or not the claims are allowable. The Examiner may, and often does, reject most or all of the claims in the first review. With help from the inventor, the patent attorney writes responses to the Examiner's comments. This response is reviewed by the Examiner and further comments are made about the allowability of the claims. Often, several rounds of PTO review and attorney response extending over two or more years are required before a patent is issued or the application finally rejected.

For more information, see the  Patent FAQs.


PUBLICATION and DISCLOSURE

An invention can only be protected by patent if it is novel (that is, no prior publication of the invention has been made by the inventor or others). Most developed countries follow a policy of absolute novelty: no patent can be obtained if the invention has been publicly disclosed in any manner, anywhere in the world.

In the United States, however, patent laws provide a grace period of one year from publication during which the inventor can file a patent application, provided that the disclosure was made by the inventor or someone who obtained the information from the inventor. Few other countries allow a grace period, so for worldwide patent coverage, it is essential not to disclose the invention publicly until a formal patent application has been filed. Disclosure can, however, be made on a confidential or proprietary basis, and such disclosure will not affect the ability to patent. (See CDA's)

The relationship between the parties determines whether the disclosure is public or made in confidence. The disclosure is legally confidential if, when receiving the information, the receiving party personally understands and accepts a duty to keep the information strictly confidential. A disclosure to an academic colleague may or may not be considered confidential depending on the understanding between the parties.

Any printed publication in a newspaper, scientific journal, or other written form available on an unrestricted basis is considered a public disclosure, as is an oral presentation at a public meeting. Any rights to subsequent patent protection, except in the United States, are lost under these circumstances. Note that published pre-prints or abstracts of a paper for a scientific meeting or a thesis or dissertation are also considered public disclosures.

A public disclosure, written or oral, can be cited as prior art by an examiner evaluating a patent application if enough of the invention is disclosed to enable a person skilled in the relevant field to put the invention into practice. Such disclosure can also be used in courts to invalidate an issued patent. In some countries, experimental use of the invention in public will count against patentability. In the United States, grant applications may be considered public documents under federal Freedom of Information ACT ("FOIA") legislation. Therefore, any confidential segments of a grant application should be clearly marked as "Proprietary" and "Confidential."

See Additional Important Information on Grant Applications


In the UC academic research environment, patent rights are frequently lost because an "enabling" description of the invention has been made public by the inventor a year or more before a patent application was filed. A publication is considered "enabling" if it allows one with ordinary skill in the art to arrive at the same invention without undue experimentation. Faculty considering public disclosure of an important new idea having inventive significance may find it useful to first discuss issues of intellectual property protection with the UCIPO.

To report an invention, contact the UCIPO to report that an invention has been made. We have established procedures and forms, to assist you with your disclosure. You will likely be asked to complete an Invention Disclosure Form which helps clarify the scope of your invention. The UCIPO will make certain that you are aware of UC's intellectual property policies. (For more information, UC inventors should contact the UCIPO, or read UC Policy on Patents.)

KNOW-HOW

A researcher's know-how can often have considerable value. While it is mandatory in filing a patent application to disclose sufficient information to enable others to reduce the invention to practice, the patent holder may later acquire valuable confidential know-how and experience to facilitate commercial optimization of a process or product. Know-how can be licensed independently and a know-how license need not be restricted to the term of the related patent. Confidential information and know-how should, therefore, be clearly defined and disclosures should be covered by a written contract.

In a university setting, researchers tend to publish most of their findings in accordance with academic practice. Accordingly, universities are less likely than companies to produce licensable know-how.

Where do I get more information?

Additional information concerning the Intellectual Property at the Universtiy of Cincinnati may be obtained from the Office of Entrepreneurial Affairs and Technology Commercialization. We are happy to answer questions by telephone (513-558-6293) or in person (perferably by appointment).  You may also send e-mail directly to the Director of Intellectual Property at geoffrey.pinski@uc.edu.









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