What is a patent?
A patent gives the patent owner the right to exclude third parties from making, using, selling, and importing the protected invention. A “right to exclude” does not necessarily authorize the owner to practice a technology, as it might be linked to a patent(s) owned by a third party.
A patent consists of three parts: 1) the “specification” describing the invention, 2) the “claims” defining the novel and useful aspects of the invention in legal terms, and 3) the “abstract” which summarizes the first and broadest claim.
How are patents governed?
Each country governs their own patents. In the United States, the United States patent and trademark office (USPTO) is the federal agency that administers patents on behalf of the U.S. government. The equivalent organization in Canada is the Canadian Intellectual Property Office (CIPO). These organizations employ patent examiners skilled in all technical fields in order to appraise patent applications. These offices also issue trademark registrations.
What qualifies as patentable subject matter?
Patentable subject matter includes processes, machines, compositions of matter, articles of manufacture, and methods, specifically the ones that leave an indication in the final product so that a method patent can be enforced. However, each jurisdiction has its specific restrictions.
What if my invention is software? Can it be patented?
Software can possibly be patented, but it is challenging. Formulae and algorithms are generally not patentable, so a careful review of software and its functionality must be completed. Additionally, we have been successful commercializing software without any patents and given the time to market for software products, the technology may be obsolete before the patent is issued.
How is an inventor on a patent defined?
The only country (jurisdiction) defining an inventor by law is the United States, where an inventor is a person who conceptualized the invention as described in the claims of a patent application. As the claims may be changed during prosecution of the application, even the inventors can change. Inventorship is best confirmed by the patent agent prosecuting the application. Monetary contribution to making the invention is not sufficient to be considered an inventor.
How does the patenting process work?
Patent attorneys or patent agents draft, file, and support the prosecution of patent applications. After filing a utility patent application, the patent agents and the patent examiners of the patent agencies exchange arguments regarding the validity of the claims of the application as filed and as they might relate to so-called “prior art”, which is anything that has been published before. The communication sent by the patent agency is referred to as an “office action”. If the claims become “allowable”, the examiner agrees to issue a patent.
Who is responsible for the patenting process?
The Office of Innovation (the Office) works with external patent specialists in different technology areas. Inventors work with the patent counsel in drafting the patent applications and responses to worldwide patent offices.
How much does it cost to file for, and obtain, a patent?
The cost of patent prosecution is expensive. Filing a US provisional patent application and a subsequent utility patent application typically costs approximately $10,000, with a final cost which could exceed $30,000 for an issued patent. Filings in other jurisdictions can be obtained via a PCT application (patent cooperation treaty, which works like a place-holder) which costs an additional $10,000. After issuance, maintenance fees have to be paid, and these costs increase with time.
As an inventor, what role do I play in the patenting process?
When an application is filed, inventor(s) have to transfer the rights to the patent application to the University in an “Assignment.” During prosecution, inventors have to provide: 1) all publications referenced in the application for the “Information Disclosure Statement,” which is essential for the enforceability and validity of the issued patent, and 2) input to defend the technical aspects of the invention against the prior art.
What if I publicly disclose my research results before filing? Can I still get a patent?
Publishing or presenting your invention before submitting a patent application has an impact, and may prevent a patent filing. The Office of Innovation and Partnerships would like to know about your invention before you publish, lecture, present posters, abstracts, website descriptions, posts on social media, submit research proposals or theses, or offer the invention to a third party.
Is a patent like a publication, where the order of the authors relates to their contribution?
A patent application is not like a publication. There is no distinction between inventor contributions on a patent application.
What is a provisional patent application?
In most jurisdictions, two types of patent applications exist: a “provisional” which is never examined, but defines the priority date and allows the addition of further examples, and a “nonprovisional” which has to be filed one year after the provisional and represents the final form of the specification. This nonprovisional patent application is the one which will be examined.
Why not just file a regular (“nonprovisional” or “utility”) patent application instead of a provisional?
The US provisional patent application still preserves patent rights, postpones costly patent prosecution, and allows for the addition of new examples. It provides the inventors with twelve months’ time to further develop their commercialization plan before having to file a nonprovisional application.
What if I want to file a patent application around the world but have published my invention?
While the US, Canada and Australia have a grace period, where you can publish and still file a patent application until the one-year anniversary of the publication, foreign patent protection depends strictly on novelty.
Can I get an international patent?
International patents do not exist. However, the Patent Cooperation Treaty (PCT), an international agreement signed by most industrialized nations, is a place-holder to provide time to determine in which jurisdictions an invention should be protected. The PCT application must be filed no later than twelve (12) months after the priority date of an application, and will have to be converted into national patent applications depending on the jurisdiction within 30 months (US) to 42 months (Canada) of the earliest claimed filing date.
How long does a patent application stay out of the public domain?
The content of US provisional applications and their subsequent US utility or PCT filings is published 18 months after the initial priority date. After that date, the application and all documents related to its prosecution are publicly available.
How long does the patenting process take? How long will my invention have patent protection?
The length of the patenting process depends on the backlog of the patent agencies, the response periods of the applicants, and the comprehension of the technology by the examiners. Once a patent is issued and all maintenance fees are paid, it is normally valid for 20 years from the initial filing date.
Why is some intellectual property protected through patenting?
Commercial partners, such as licensees, have to commit substantial investment to develop your invention to a marketable product. A patent offers them a monopoly. Due to the financial investment and time requirements to obtain a patent, not all inventions can be patented. As well, not all inventions require patent protection to be commercialized.
Who makes the decision regarding when to patent?
The Office of Innovation will review with the inventor(s) the recommendations provided in the due diligence report. The Office makes the final decision whether a patent application should be filed. A decision by the Office cannot be appealed. However, if the inventor(s) are in disagreement, the rights to the invention can be transferred to the inventor(s) who can subsequently pursue patent prosecution and commercialization of the invention themselves.
Is a licensee required for an invention to go through the patent process?
The Office of Innovation may file a provisional patent application before a licensee has been identified. After entering into an exclusive license to the technology and the associated IP, the licensee pays the patenting expenses. However, the Office will stop prosecution at decision points identified in the commercialization plan, especially if no parties show interest in licensing the invention.