A patent is a set of exclusive rights granted for a limited period of time in exchange for a disclosure of an invention. A patent is a right to exclude others from making, selling, or using the patented invention for a limited term and is essentially a legally recognized monopoly that the government grants in exchange for a disclosure of how to make and use an invention. Patentable inventions must be new, useful, and non-obvious.
There are three different types of patents: design patents, plant patents, and utility patents. Design patents protect non-functional, novel designs for an article of manufacture. Plant patents protect new and distinct asexually reproducible plant varieties. Utility patents are the most common form of patent protection protecting any new and useful process, machine, manufacture or composition of matter or any new or useful improvement thereof.
- What is Patentable?
- How much does it cost to obtain a patent?
- Why patent an invention?
- What is the first step in starting the patenting process?
- How do publications affect patentability?
- What is a “Public Disclosure” ?
- The Patent Process
- Provisional Patent Application
- Non-Provisional Process
US patent law specifies that a patent can be obtained for any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof. To be patentable, inventions must satisfy three criteria: utility, novelty, and non-obviousness.
Utility requires that the invention have some beneficial use. If the invention is a machine, it must work. If the invention is a chemical, it must have a specific use.
An invention has novelty if it is new. In other words, novelty is lost if the invention has been known, used by others or published before the applicant’s filing date. A new use of an old invention may be novel.
An invention must not be “obvious” to “one of ordinary skill in the art.” Since these are subjective terms, there is frequent disagreement about the fulfillment of this requirement, particularly between the patent applicant and the U.S. Patent and Trademark Office. This criterion must be assessed on a case-by-case basis and expert legal opinion is essential.
A “ball park” estimate of total cost to obtain a U.S. patent ranges from $10,000 to $30,000, and sometimes much higher. Costs to obtain foreign patents may be five to ten times higher, depending on the number of countries where applications are filed.
If intellectual property is handled properly, significant benefits are available to inventors and their research groups, the university, our national and local economies, and the public. This can be accomplished when each creator of intellectual property is aware of certain critical legal issues, procedures, and policies.
Patents are often the best means of developing and disseminating a technology for the widest good. Unless a patent exists it is unlikely that industry will make investments in the process of developing and commercializing a product or service. Without patent protection, many inventions will simply “sit on the shelf” benefiting no one. This is particularly true in technology areas that are highly regulated by governmental agencies such as the Food and Drug Administration (FDA), United States Department of Commerce (DOC) and the United States Department of Agriculture (USDA) since market entry costs are generally so high. The ability to carve out a niche in a specific field is often critical.
The benefits of patenting inventions are so widely held that the Federal Government and most industrial sponsors of research now, in most cases, require that patents on inventions made with their funding be pursued whenever feasible. Where governmental or industrial funding is involved, there are usually reporting and patenting requirements that must be met. Failure to do so may jeopardize future funding, not just for the inventor, but for the entire University.
The right to prevent others from practicing something can attract investment into early stage ideas which otherwise may not be attractive. An investor may be willing to put large sums of money into research if they know that, should they in fact achieve technical success, there will be some period in which they can prevent competitors from copying their design or methods.
Universities have legal, policy, and contractual requirements to pursue patent protection for inventions conceived using federal and corporate funds. The issues of national competitiveness and economic growth are more pragmatic reasons for pursuing patent protection. For inventors, there may be a financial reward to them personally and their research program if their invention achieves market success. Frequently, patents are licensed to a company in return for research support so the inventor can benefit even if the patent themselves ultimately do not lead to a commercial product. Patents are perhaps the best means of managing the conflicts that are inherent in academic/industrial collaboration. They permit mitigation of the inventor’s potential conflict of interest and help minimize UNH’s and the inventor’s liability exposure. Patents are an ideal means of constructing effective collaboration with industry and allow UNHInnovation to ensure that industry will pursue development of UNH’s technology.
Submitting a disclosure of your invention to UNHInnovation is the first formal step in obtaining proper intellectual property protection. Inventors are strongly encouraged to submit invention disclosures early in their invention development process to avoid any potential problems. Inventions conceived or first reduced to practice by faculty or staff in furtherance of university research should be promptly disclosed in writing to UNHInnovation.
Inventors must be aware of certain statutory bars to patenting that are activated by publishing an enabling description of their invention. The University of New Hampshire strongly discourages, and in certain circumstances prohibits, agreements that withhold or unduly delay publication of research results. However, with proper planning, UNHInnovation and the inventor can cooperate through appropriate timing of a disclosure, patent filing, and publication to preserve commercial value and still meet any sponsor or professional obligations without hindering dissemination of research results.
A “public disclosure” is not confined to publications in books and technical journals. Poster sessions, slides, lectures, seminars which are open to the public, letters, even conversations may count as a bar to patentability. Even if made to only a single person, oral or written communications may be considered a public disclosure for patentability purposes. However, in most countries, if the recipient of such a disclosure is subject to a Non-Disclosure Agreement (NDA) or Confidential Disclosure Agreement (CDA), then that disclosure would not be considered a “public disclosure.” Internal disclosures or communications to employees are not considered “public disclosures.” To act as a bar to patentability, the disclosure must be “enabling” – it must actually teach someone how to duplicate the invention.
A patent attorney will work with UNHInnovation and the inventor to draft and file the patent application. A well drafted patent application must have substantial input and participation from the inventor.
UNHInnovation will balance the invention’s technical merit, its intellectual property status, and market need. Our objective is to ensure that we do not waste the inventor’s valuable time or UNH resources.
Provisional patent applications allow applicants a quicker and less expensive means to establish an initial filing date for a particular invention. A provisional patent application then provides the applicant with a period of 12 months to further develop the technology as well as evaluate commercial interest in the invention before having to incur the expenses associated with pursing a full non-provisional application. An early filing date is important as it sets the date from which new publications or disclosures can or cannot be used as prior art against the application during the review process.
UNHInnovation will often file a provisional patent application to beat a planned publication or presentation. UNHInnovation will reach out a few months before the one year anniversary of the provisional patent filing to assess any updates including expected developments, new grant applications or publications, conferences or general reaction by your peers. All of this information is used to evaluate whether or not to convert the provisional application into a non-provisional application for official examination.
The claims within a patent application are the “metes and bounds” of the patent describing exactly what the patent holder has the right to prevent others from practicing. You can’t claim what others have actually published or something that you have absolutely no idea how to do – i.e. perpetual motion machines.
The claims describe the essential elements of an invention. The goal is to first describe the invention as broadly as possible and then more narrowly. It is generally easier to obtain a patent with narrow claims, but if the claims are too narrow or too specific, it can be easy for others to invent around a patented invention. Therefore, very narrow claims may decrease the value of the patent while very broad claims are less likely to make it through the review process.
The claims determine exactly what the patent holder may exclude others from practicing. One would need to compare another’s product with each element of their own claim. If the other product is described by all of the elements in a particular claim, then that product will fall under the scope of the claim and suggests infringement of the patent.
The entire patent examination process generally takes 2-4 years from the filing date to complete, but may be longer in certain technical fields. Once an application is filed, a patent examiner will determine whether the application meets the three main requirements of patentability: usefulness, novelty, and non-obviousness.
This is typically the easiest patentability requirement to satisfy as an invention will be considered useful if it has some scintilla of utility. This is a very low threshold.
Novelty is examined in light of the prior art. To be considered novel, an invention must be the inventor’s original work and in most all instances, the inventor must file a patent application before publicly disclosing their idea. A public disclosure, even one day before the patent application filing date, would likely bar a patent from issuing. As mentioned earlier, in patent law, the phrase “public disclosure” or “publication” has a much broader and much more liberal meaning than when used within the academic research community. Almost any type of communication to people outside the institution can be considered a public disclosure.
The invention must be non-obvious to someone of “ordinary skill in the art.” This hypothetical person is someone knowledgeable in the specific technological field that can understand the invention and would have access to the relevant prior art. Non-obviousness is the most subjective and gray area of the patent examination process. As a result, it is very difficult to predict whether a patent examiner will find an invention non-obvious. Much of the patent prosecution process revolves around conversations between the patent examiner and the applicant as to whether an invention is obvious or not-obvious in light of the prior art.
An inventor on a patent is very different than an author on an academic paper or other scholarly publication. An inventor is a person who conceives of the operative invention. The claims determine who is an inventor as an inventor must have contributed to the conception of at least one claim. Therefore, people who merely created a physical embodiment of an invention or simply conducted an experiment or process designed or described by another is not likely to be an inventor. A person who contributed only labor or performed routine techniques, but did not contribute to the idea is not considered an inventor.
The merits of software patents is currently one of the most heavily discussed, written about, and litigated aspects of patent law today. Where software patents are currently such a gray area, UNHInnovation is unlikely to pursue patent protection for software.
However, many great scientific breakthroughs cannot be commercialized through patenting. UNHInnovation’s patenting decision does not affect the scientific merit of the invention. For example, many of our most successfully commercialized technologies include unpatented software programs and unpatented seed varieties.