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The University of Cincinnati Intellectual Property Office ("UCIPO") acts as the technology transfer arm of the University of Cincinnati. UCIPO seeks partners from the private sector to commercialize the technology derived from patent rights, copyrights and maskwork rights of inventions and technical creations made at the University. The UCIPO files and prosecutes patent applications and copyright and maskwork registrations, and to negotiates and grants non-exclusive and exclusive licenses under the resulting Intellectual Property rights.

Following is a brief summary of intellectual property issues in question & answer format:


What is a patent?

A patent is a government-granted right to exclude competitors from practicing an invention for a limited period of time - formerly 17 years from the date of issue and now 20 years from the date of application. This right can be licensed to third parties in return for fees and royalties. Thus a patent is a means of securing economic benefit from an invention. An invention must be new, useful and unobvious to qualify as patentable.
 

Who owns my inventions?

Inventions made in the course of research at UC belong to the university under Ohio law.

 

How are UC inventions administered?

This office is responsible for administering UC patent policies and for handling business arrangements for development and marketing of UC inventions. We may license inventions to industry in return for payments and royalties, and we may also seek research funding if appropriate.

 

Why should I participate?

First of all, this may provide an opportunity to obtain research funding from industry. Secondly, UC policy provides generous incentives: under our sharing formula, the inventors, their departments and their colleges receive a portion of net licensing revenues. Finally, it can be very satisfying to see your discoveries translated into commercial applications.

 

How do I initiate the patenting/licensing process?

An Invention Disclosure form can be obtained from the Intellectual Property Office. We are happy to consult with inventors before or after they complete this form. Once you submit a completed form and other requested information, we will initiate efforts to locate interested companies. These efforts may include personal contacts, mailings and presentations at trade shows. However, full participation is needed from the inventor, both in meeting with potential sponsors and licensees and in helping the patent attorney prepare and prosecute any patent applications. If you initiate the process, you should be prepared to get involved.

 

Does working with industry interfere with my right to publish?

UC policy does not permit us to agree to terms that would stop you from publishing your work. However, you may be asked to submit manuscripts for pre-publication review and to delay publication at the sponsor's request, long enough to permit the filing of a patent application.

 

Can I patent a discovery after publishing it?

In the US we have a year from the date of first publication to file a patent application. In virtually all other countries a patent application cannot be filed if there has been any prior publication. The only exception to this rule is provided under an international treaty specifying that if a patent application has been filed in the U.S. prior to publishing, we are allowed a year from the application date to file in other countries. Accordingly, we encourage you to submit your invention disclosure to this office as early as possible before submitting your findings for publication in order to ensure maximum opportunity for us to seek industry interest and to consider worldwide patent protection.

 

Why is the university interested in patents?

The University, as owner of inventions made by its faculty, students, staff, can license patents to companies that know how to turn the invention into commercial products or services. (See Policy.) In the ideal case, developing a "raw" invention into products and services desired by the public can create jobs, increase government revenues through taxes, and provide additional revenue to the inventor and University through patent licensing fees.

 

Who is an inventor?

An inventor is the one who first conceives of an invention, in detail, and with enough specificity that one skilled in the field could construct and practice the invention. Those who translate the concept into practice are not considered co-inventors unless they add to the original concept of the invention although, with the agreement of the inventor(s), they may share in financial benefits of the invention.

See more on Who is an Inventor.

 

What is an invention?

Inventions include new processes, products, apparatus, compositions of matter, living organisms, or improvements to existing technology in those categories.

A process is a method of producing a useful result. A process can be an improvement on an existing systems, a combination of old systems in a novel manner, or a new use of a known process. A machine is an apparatus that performs a functions and produces a definite result or effect. It can range from a simple device to a complicated combination of many parts. A manufacture is an article that is produced and has a usefulness. Compositions of matter include chemical compounds, mixtures such as drugs and, more recently, living matter.

Abstract ideas, principles, and phenomena of nature cannot be patented.

What are the criteria for a patent? In the United States, patentability is determined by novelty, utility, and nonobviousness:

1. Novelty: An invention is novel if nothing identical previously existed. How does your invention differ from what already exists? In what ways might it not be unique?

2. Utility: An invention is useful if it produces an effect, if the effect is the one claimed, and if the effect is desired by society, at least in principle. Who might find your invention useful, and why? What companies might be interested in making or selling it, and why? Is there other technology that currently provides similar utility? If so, what is the unique advantage of your invention?

3. Nonobviousness: Nonobviousness measures the degree to which an invention differs from the totality of previous knowledge, and the degree to which an invention could not have been anticipated from that knowledge. At the time it was conceived, why might your invention not have been obvious to people reasonably skilled in the field? Are there ways in which it might be an evolutionary step? What is the difference between the proposed invention and what has previously existed?

Can you publish while applying for a patent? Publishing and applying for patent protection are not mutually exclusive: they can be done simultaneously under the proper circumstances. U.S. patent laws allow one to apply for a patent no later than one year after a public disclosure, such as a published paper, a widely available abstract, or an offer of public sale. However, the moment a public disclosure or publication is made, rights to foreign patents are lost unless a U.S. filing has been made within the preceding twelve months. Foreign protection is important to many international licensees, so inventors are urged to use discretion, take advantage of Confidential Disclosure Agreements available from this office, and file invention disclosures with the University well in advance of presentations or publications.

 

What about sponsors?

Sponsoring agencies sometimes require the University to disclose inventions that arise from work they fund. If the research that led to your invention was sponsored, please give details and a reference to the contract or grant agreement.

Record keeping is important. The United States grants patents to those first to conceptualize an invention and diligently reduce it to practice. The date the full conception of the invention occurred, the date the idea was put into practice, and diligence in translating concept to practice are key items to document. Inventors can document their research process from conception to reduction to practice by keeping journals written in ink in bound notebooks, each page dated and signed, with witnessed signatures. Notebook witnesses must be able to testify that they understood what the invention was and how it operated and that what you wrote in your journal was actually witnessed on the date entered. If additional materials are pasted in, a written reference should be made to them at the time of entry.

 

What does "unobvious" mean in patent law?

There is a lot of ambiguity about what "unobvious" means in the context of U.S. patent law. The level of unobviousness required to render an invention patentable is a function of the particular art area containing the invention. In some cases the unobvious part of an invention (the part that renders the invention patentable) is simply identifying the problem, even if the solution is obvious once the problem has been identified.

 

Are algorithms or computer software patentable?

If one has invented a novel and unobvious algorithm or piece of computer software, and wishes to obtain patent protection, then one's next step should be to consult one or more patent attorneys or patent agents who are experienced in getting patents on inventions having algorithms or software in them. The law (in the U.S.) is settled that the mere presence of software in an invention does not automatically render it unpatentable. It is commonplace for inventors to obtain patents in inventions composed largely or nearly entirely of software.

 

What are the time limits for filing a patent application?

Before making plans for the timing of the filing of a patent application, any inventor should seek advice of competent counsel. The time periods described here represent only a few of the factors that will influence how quickly a patent application should be filed.

Under U.S. patent law, a patent will not be granted to an applicant unless the application is filed less than one year from the date that the invention was sold or offered for sale within the United States. Yet another condition imposed under U.S. patent law is that the patent will be denied unless the application is filed within one year of the date the invention was described in a printed publication anywhere in the world.

While these are the two most commonly mentioned so-called "statutory bars" in U.S. patent law (35 USC section 102), they are by no means the only factors that should be taken into account when one decides when to file a patent application (or, when to consult patent counsel). Numerous other factors influence the timing of the filing of a U.S. patent application. For one thing, there is always the possibility that someone else has filed or will soon be filing a patent application on the same subject matter. The sooner you file, the more likely it is that you will prevail against someone else who has filed or is about to file.

Even if the invention has not been publicly divulged there are reasons to file a patent application sooner rather than later. Filing the application sooner will help to some extent in prevailing over others who happen to have developed the invention independently and who also file a patent application. In the United States two approaches are possible to the protection of an invention in the face of a statutory bar such as the on-sale bar or the publication bar: filing a patent application or filing a provisional patent application.

For those who are interested in also obtaining protection in countries other than the U.S. it is important to bear in mind that the patent application should be filed prior to any public divulgation of the invention.

 

What is a priority date for a patent application?

The term "priority date" can mean any of several different things, depending on the context. The "priority date" of a patent application is the date which controls what prior art affects its patentability, whether a statutory bar applies, etc. For many patent applications the priority date is the date on which the patent application was filed with the patent office. In some circumstances a patent application will enjoy an priority date earlier than its own filing date. For example, a continuation or divisional application will enjoy the filing date of the application of which it is a continuation or divisional. Another example is the application which claims priority under the Paris Convention from a counterpart application filed less than one year earlier in another country; such an application has a priority date equal to that of the earlier application. Yet another example is the application which claims priority from a provisional application. Finally, an application may enjoy a priority date by virtue of being a national-phase application arising out of a PCT patent application in which the United States was designated. There are other circumstances in which a patent application will have a priority date differing from its filing date.

 

What is the PCT (Patent Cooperation Treaty)?

PCT stands for the Patent Cooperation Treaty (text). PCT patent applications are administered by the World Intellectual Property Organization. The Patent Cooperation Treaty permits an inventor to file what is called a PCT patent application. The Treaty is the result of an effort by many countries to provide some streamlining of patent applications across several countries at once. The US Patent and Trademark Office has additional information about PCT.

 

What benefits flow from a PCT application?

For an applicant who has filed a patent application in a particular country, a PCT application offers a way to postpone having to make decisions about filing patent applications in other countries. If there were no such thing as the Patent Cooperation Treaty, then the only opportunity to postpone making decisions about foreign filing would be the opportunity provided by the Paris Convention. Under the Paris Convention, someone who files an application in one country is forced to make a decision, within one year, as to whether to file patent applications in other countries which would claim priority from the first application. A PCT application offers a way to extend the time during which a decision must be made about foreign patent filings, for a longer period than the decision-postponement period provided by the Paris Convention. By filing a PCT application, the applicant can postpone for 20 months (rather than 12 months under the Paris Convention) the decision about whether or to spend the money for foreign patent filings. In addition, assuming that the first application was filed in a country that has adhered to Chapter II of the Patent Cooperation Treaty, it is possible to perform a step called "demanding preliminary examination" which permits postponing the decision about foreign filing (in many countries) until 30 months after the priority date.

The PCT process is helpful to those who don't have enough money to file in several countries, but who expect to have enough money at a later time. A PCT application provides a convenient way to keep the options open for foreign filing for up to thirty months.

 

How do patents differ from trade secrets?

There is a tension between the notion of trade secrets and patents. One approach to protecting intellectual property is to hold everything as a trade secret. The decision to apply for a patent includes necessarily a decision to take some fraction of one's trade secrets and to give them away, in return for the grant of a patent.

The decision to apply for a patent does not necessarily require giving up all of one's trade secrets, however. One might have trade secrets on inventions A, B, and C, and applying for a patent on C might not require giving up the trade secret status of A and B. However, to obtain a U.S. patent on C, it is necessary that the application contain (1) enough to enable one skilled in the art to practice C and (2) the best mode known to the applicant for practicing C. This might require revealing A and B in the application. If so, it would probably make sense to seek patent protection on A and B as well as on C. Depending on the time sequence, one could patent an invention and simultaneously keep secret an improved version of the invention. For example, if a patent application for invention A is filed, and if an improvement A+ is conceived after the filing of the patent application on A, the improvement A+ could be kept secret.

One should keep in mind, however, that it is difficult to keep information "secret" at a public institution. Generally, we do not deal with trade secrets. Also, the U.S. Patent Office has announced plans to begin publishing patent applications 18 months after filing.

 

Why are laboratory notebooks important?

Laboratory notebooks are important for several reasons. In the U.S., if two applicants are seeking a patent on the same invention, the patent is not necessarily awarded to the one who filed first, but is sometimes instead awarded to the one who was the first to invent. Establishing priority of invention often depends on such documentation as laboratory notebooks. An inventor who fails to keep a laboratory notebook runs the risk of having difficulty establishing the date on which the invention was made, and thus may lose out in a priority contest with another inventor.

Laboratory notebooks are also important for other reasons. For example, when one is accused of taking a trade secret from someone else, if a laboratory notebook shows that one was in possession of the contested information before any access to the adversary's information, this helps to negate a claim that the secret was stolen from the adversary.

 

What if I am about to publish something?

Anyone who is going to publish an article, whether it be in a scholarly journal, the trade press, or elsewhere, would be wise to consider whether such a publication would be a bar to patent protection. For example, where it is desired to get patents in countries other than the United States, it would be wise consider filing a patent application prior to the publication. If you are quite sure you will not want patent protection in countries outside of the U.S., and if the only patent protection you think you would ever want is protection within the U.S., then you might take advantage of the one-year grace period offered by U.S. patent law. In such a case you would mark the one-year anniversary of the publication on a calendar and be sure to file the patent application before the year was up.

Even if you are sure there is no reason to rush the patent filing, there are reasons why it is wise not to allow almost the entire year to pass, for example because it takes a while to prepare and file a patent application. Also, the date you file a patent application sets a limit on the prior art available to the Patent Office in rejecting your patent application. The sooner you file the application, the less prior art is available to the Patent Office to be used to oppose your patent application..

 

What is a Provisional Patent Application?

Effective June 8, 1995, as a consequence of the adherence of the U.S. to GATT, it is possible to file what is called a Provisional Patent Application with the U.S. Patent and Trademark Office. The Provisional Patent Application is intended to be a relatively low-cost way of postponing the cost and effort of drafting and filing a full patent application. The provisional application need not contain claims, and the filing fee is modest ($150 for large entities, $75 for small entities). The applicant may then wait almost a year before filing a patent application. The twenty-year patent term that runs from the first U.S. filing date does not start with the provisional application, but instead begins only with the date of the subsequent patent application. As a result, one may postpone the start of the 20-year patent term by up to one year by the use of a provisional patent application. The provisional application may serve as a priority document for non-US convention filings.

Under U.S. patent law, the provisional application is subject to the same burdens under 35 U.S.C. § 112 as a patent application. This means that the provisional application must be complete enough to enable one skilled in the art to practice the invention, and means that the application must disclose the best mode known to the applicant for practicing the invention. These requirements are likely to lead to difficulties for those who file sketchy provisional applications. One who files a provisional application (and who fails to satisfy the requirements of § 112) would be making a mistake to sit back and rely on that application as a justification for waiting eleven months before taking the time and trouble to prepare and file a full patent application.

A second potential drawback of the provisional filing is that it postpones, by a year, any hint or clue from a patent examiner as to whether or not the invention is likely to be patentable. No search report or office action will come during the pendency of the provisional application; they will only be received after the filing of the patent application. For the applicant who is considering whether or not to file patent applications in countries outside of the U.S., the use of a provisional application virtually guarantees that no clues to patentability will be received from the U.S. Patent Office that might assist in deciding whether or not to spend the money on foreign filing. The applicant who files a patent application (rather than a provisional application) may, in contrast, receive an Office Action before the year is up for making foreign-filing decisions, and the content of the Office Action may be helpful in deciding what to do about foreign filing.

 

What are the requirements for a Provisional Patent Application?

A Provisional Application, to obtain a filing date in the U.S. Patent Office, has to contain the items set forth in 37 CFR § 1.51(a)(2). The requirements of that Rule are summarized here but the reader is advised to consult the Rule personally and to be familiar with it. The Provisional Application requires a specification satisfying 35 U.S.C. § 112, except that it need not contain claims. In simple terms the specification must enable one skilled in the art to practice the invention, and must disclose the best mode known for practicing the invention. A drawing must be provided if needed to explain the invention, see 37 CFR § 1.81-1.85. The Provisional Application must also identify the inventors who contributed to the subject matter disclosed in the application. The filing fee ($150 or $75) is required. A cover sheet is also required.

 

Are provisional patent applications public or are they kept confidential?

All patent applications received at the US Patent Office are kept secret by the Patent Office. The most commonly occurring exception to this rule is that when a patent issues, the application file becomes public. (Note that the entire application file becomes public, not just the issued patent itself.) Another exception is that if a patent application is referred to by number in an issued patent, the application file becomes public. This is the case for both provisional applications and regular applications under 37 CFR § 111(a).

It has been proposed that the US Patent Office would change its rules on secrecy to be more like the rest of the world. In most countries other than the US, a patent application becomes public 18 months after the priority date.

 

Are provisional applications available for search?

The public searching resources contain no information about pending provisional applications.

 

What is a divisional patent application?

A divisional patent application is an application claiming priority from some previously filed patent application (called a "parent application") in which more than one invention was disclosed. The divisional application has claims directed to a different invention than that claimed in the parent application. The most common way that this happens is that the Patent Office rules that your application contains more than one invention, communicating this in what is called a "restriction requirement". The applicant then elects to pursue one of the inventions in that application (the "parent application"), and optionally submits a "divisional application" containing the claims regarding another of the inventions. The divisional application is entitled to the filing date of the parent application as its priority date. It is not uncommon to receive a restriction requirement identifying several inventions, leading to several divisional applications and several issued patents.

Under GATT, if the application was filed prior to June 8, 1995, it is disadvantageous to file a divisional application since the divisional application may end up with a shorter patent term. One option, if the application was filed prior to June 8, 1992, is to use a rule under GATT in which the applicant pays a fee (equal to the cost of a new filing fee) to have the extra invention considered in the same application rather than in a divisional application.

 

What is a continuation patent application?

Under United States patent practice, a continuation patent application is an application which claims priority from a previously filed application. A continuation application is usually filed when the Patent Office has responded to the parent application with a "final" office action (rejecting the claims in the application), but the applicant wishes to revise the claims again. A continuation application receives the priority date of its parent application. A continuation application is often filed using the file wrapper continuation (FWC) administrative procedure. A related type of patent application is the continuation-in-part (CIP) application.

Under GATT, if the rejected application was filed prior to June 8, 1995, there is a disadvantage to filing a continuation application since the result may be a shorter patent term. One option, if the filing date of the rejected application is prior to June 8, 1993, is to use a rule under GATT in which the applicant pays a fee (equal to the cost of a new filing fee) to have the finality of the rejection withdrawn.

 

What is a CIP (continuation-in-part) patent application?

Under United States patent practice, it is possible for the owner of a pending patent application to file a what is called a "continuation-in-part" patent application. A CIP patent application is an application which contains some matter in common with a previous patent application (called the "parent" application), and that also contains new matter, and which was filed at a time when the parent application was pending. If such an application issues as a patent, then the patent has a sort of a blurred priority date. It is possible that some claims of the patent enjoy the priority date of the parent application, while other claims might enjoy only the filing date of the CIP application as their priority date.

 

What is an FWC (file wrapper continuation) patent application?

"File Wrapper Continuation" is a term specific to the U.S. Patent Office, and is a continuation patent application which claims priority from a previously filed application. It is easier (from the paperwork point of view) to file than other continuations since it is effectively simply a request that the Patent Office reuse an application file already in its possession.

 

What is the governing law for patents?

In the United States, the law that governs patents is Title 35 of the United States Code, commonly cited as "35 USC". It incorporates the Patent Cooperation Treaty and changes made for conformity to the intellectual property provisions of the General Agreement on Tariffs and Trade.

 

How long does it take to prepare and file a patent application?

The traditional answer is, "you can have fast, cheap, and high quality, and you get to pick any two."

There are many circumstances that require preparing and filing a patent application quickly. Examples include:

  • a US provisional application was filed almost a year ago and it is desired to file a full (111a) application now to protect US patent rights
  • a US provisional application was filed almost a year ago and it is desired to file a PCT patent application now to protect US and non-US patent rights
  • the inventor is on the verge of disclosing the invention (perhaps at a conference or trade show or in a meeting with a potential licensee) and wishes to file right away to protect non-US patent rights or to prove inventorship
  • the inventor disclosed the invention in a printed publication almost a year ago, and wishes to try to preserve US patent rights
  • the inventor sold the invention or offered it for sale almost a year ago, and wishes to try to preserve US patent rights
  • a full US patent application was filed almost a year ago and it is desired to file corresponding applications in non-US countries to protect patent rights in those countries
  • a patent application was filed in a non-US country almost a year ago, and it is desired to file a corresponding application in the US to protect patent rights in the US
  • a PCT application was filed with a priority date almost nineteen months ago, and it is desired to file patent applications in one or more of the designated countries to preserve patent rights in those countries
  • a PCT application was filed with a priority date almost thirty months ago, and International Preliminary Examination was requested, it is desired to file patent applications in one or more of the designated countries to preserve patent rights in those countries
  • a US patent is about to issue and it is desired to file a continuation or divisional application before the issue date, so as to preserve patent rights in the US.
 

Where the subject matter is simple (e.g. an improved machine with three or four moving parts) the preparation of a patent application may take only a few hours. With such applications it is essential that the inventors review the draft carefully to see what else needs to be included. It often happens that upon review of the draft, the inventors identify entire additional aspects of the invention that the attorney was not told about. These aspects have to be included in the application, the claims are revised, and it is necessary to revisit the question of who the inventors are (which is defined with respect to the claims) and a new inventor may be added or deleted. That inventor must review the entire application as well, and perhaps more material is identified that needs to be added.










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