Note: Patents, by legal definition, are for inventions, so we refer to inventions and inventors instead of innovations and innovators in this section.
In the U.S., a patent gives the holder the right to exclude others from making, using, selling, offering to sell, and importing the patented invention. Patent claims are the legal definition of an inventor’s protectable invention.
Universities have legal, policy, and contractual requirements to evaluate and potentially pursue patent protection for inventions developed using federal and corporate funds. In some cases, patent rights are licensed to a company following research support and can be an important way to establish effective collaboration with industry. Patents can also be a critical element for a company to invest in when commercializing research results for use by the public.
Patentable inventions must be new, useful, and non-obvious. There are three types of patents:
1. Design patents:
Design patents protect non-functional, novel designs for an article of manufacture.
2. Plant patents:
Plant patents protect new and distinct asexually reproducible plant varieties.
3. Utility patents:
Utility patents protect any new and useful process, machine, manufacture, composition of matter, article, or any new or useful improvement thereof. They are the most common form of patent protection.
Even if an invention is new, useful, and non-obvious, it is not guaranteed to be eligible for patent protection. Certain public disclosures or other events that might occur prior to filing a patent application can disqualify the patentability of an invention. An invention can be disqualified if an inventor discusses enough information about the invention for someone to be able to reproduce it. This could be in a journal publication, presentation at a conference, posting on a website, or even discussions with scientists from other academic institutions. An invention, including asexually reproduced plants, can also be disqualified if it was sold, offered to be sold, used or displayed in public, or if a previous patent application was filed.
This is not an exhaustive list of potential disqualifications and it is important to work with UNHI early to ensure that the maximum opportunities for your invention are preserved.
The total cost to file a U.S. patent usually ranges from $10,000 to $15,000, and can frequently be two to three times higher. Costs to obtain foreign patents may be five to ten times higher, depending on the number of countries where applications are filed. Often the university accepts the risk of filing a patent application before a licensee has been identified. After university patent rights have been exclusively licensed to a licensee, the licensee reimburses past patent expenses and supports all future costs.
If UNHI decides to seek patent protection, there is no personal financial investment required of the innovator. UNH allocates funds each year to support IP protection.
Submitting a disclosure to UNHI is the first step in obtaining proper IP protection, but it is not part of the official patent process. Care must be taken to avoid public disclosure until a patent application is officially filed.
Once the innovation assessment has been completed and a decision has been made to pursue patent protection, a patent attorney will work with UNHI and the inventor to draft and file the patent application. A well-drafted patent application must have substantial input and participation from the inventor.
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.
The entire patent examination process generally takes 2-4 years from the filing date to completion, but may take longer in certain technical fields.