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
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
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
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
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?
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.
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?
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
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
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
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
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
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
Are provisional applications available for search?
The public searching resources contain no information about pending
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
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.