Patents

Patentable Inventions

An invention is a device, method, composition, or process made by man. Inventions may include many types of discoveries and technological innovations such as processes, methods, machines, articles of manufacture, devices, chemicals, and compositions of matter. Inventions can be protected by patents as long as they are new, useful and not obvious.

The U.S. Constitution recognizes the value of innovation to the economy and provides the owner of a patent with a time-limited monopoly (20 years) to prohibit others from exploiting the invention. In exchange for this exclusive right, the published patent must fully describe the invention in a way that allows others to reproduce and learn from it. In that way, the patent monopoly provides an incentive to share advances with the public and, thereby, contributes to growth in the field.

Most research conducted at the University can produce inventions that may be patentable. A few examples are:

Agriculture: grain and food processing, germplasm and plant varieties, precision equipment, devices, and nutrition
Biotechnology: genetic promoters, genetic markers, gene transfer methods, expression vectors, and microorganisms
Chemistry: new compounds, new drugs, drug targets, drug design, separation methods, coatings, additives, superconductors, metals, polymers, and fuel cells
Engineering: laboratory instruments, machinery, semiconductors and chips, manufacturing techniques, process improvements, nanotechnology, circuits, sensors, lighting, filtration, and micro-devices
Software and Algorithms: methods and processes in computer programs, operating systems, networking, data mining and storage, security, and supercomputing

Inventorship

A patent application must be filed in the names of the true inventors. The legal criterion for inventorship does not equal those used for authorship. Inventorship is defined by U.S. patent law. Broadly, an inventor is one who alone or together with others conceived the ultimate working invention. Inventorship is not a reward for hard work to someone who only worked under direction. Inventorship is tied to the claims in a patent application and is determined at the time the patent application is filed. As the claims in an application change, so may inventorship. Inventorship does not equal ownership. In most cases, organizations own the inventions developed by their employees. University of Illinois patents are owned by the University’s Board of Trustees.

The Standard Tests Of Patentability

For an invention to be patentable, it must meet the following three criteria for patentability:

New or novel. The invention must be different from all known inventions, products, and published ideas. This does not mean that every aspect of an invention must be entirely new or novel. You can selectively patent new aspects if they pass the following two tests.

Non-obvious. The invention cannot be an obvious or a logical extension of known ideas or inventions. It cannot be readily apparent to a person skilled in the field of the invention

Useful. The invention must work and have a practical application or utility.

It is also possible to patent an improvement to existing inventions, if the improvement meets the above criteria. Furthermore, the patent application must be written with such specificity to fully enable someone to make and use your invention. This is called enablement.

Inventions that are not patentable include laws of nature, theories, scientific principles, pure algorithms and perpetual motion machines.

Inventors Notebook

The inventor’s notebook is one of the best ways to establish intellectual property ownership.

Keeping a Notebook: Laboratory notebooks documenting one’s research are almost always kept to support publications. In the case of applying for a patent, it is recommended to keep the notebooks in a more structured way so they can be relied upon as evidence to support invention entitlement.
Content: The notebook should be a dated, written record of all experiments, results (even if the significance is unclear), conversations (including who you talked to and what topics you talked about), thoughts, and future directions of investigations.
Certification: A credible witness who is not a family member or notary public should be chosen for his or her knowledge and ability to read and understand the concepts and principles in the notebook.

Publication & Public Disclosure

Publication and other public disclosure of an invention by anyone, including the inventor, if it occurs before a patent application is filed, may prevent the ability to obtain a patent. A public disclosure is any oral or written communication to others that is not confidential and either teaches the invention completely or provides enough information to make development of the invention obvious.

In the U.S., a public disclosure may be any written document accessible by others such as manuscripts, abstracts, websites, meeting notes, or presentations. Simply telling a colleague that you have made an invention but not telling how to make or use it is usually not considered a disclosure that could prevent you from obtaining a patent.

Not infrequently, two entirely different groups invent the same or very similar inventions.

What happens then? In most of the world, including the U.S., the first inventor to file a patent application is entitled to the patent. This is referred to as a first-to-file system.

Patents as Property

A patent is property like a house or car that may be sold, leased, or rented to others for royalties.

Patent rights are often transferred to others for commercialization through licensing rather than outright sale. The patent owner can decide how to allow others to use his or her property and can divide up rights in the property in different ways. For example, exclusively or nonexclusively, by field of use, or by geographical region.

Patents & Freedom to Operate

Having a patent doesn’t necessarily mean you have the right to practice your invention and make products covered by it. Commercializing a technology can involve many processes, methods, and materials that may not be covered under your patents but may be covered under patents owned by others. The owners of these other patents may have the right to prevent you from commercializing your invention unless you obtain their permission to practice under their patents. Obtaining rights to all the intellectual property needed to commercialize a technology without infringing the intellectual property rights of others is called freedom to operate.

Patent Application Process

Obtaining a U.S. Patent starts with the filing of a non-provisional patent application that includes a specification describing how to make and use the invention and one or more claims that define the scope of the invention. The claims are used by courts to determine invention infringement.

This application is filed in the United States Patent and Trademark Office (USPTO) and assigned to a patent examiner who specializes in the particular technology area. The examiner considers the scope or breadth of the claims against prior patents and publications. They then issue an office action accepting (rarely) or rejecting (typically) the claims (some or all) as not distinguishing over what is already known. In the case of claim rejections, the patent practitioner, often with the assistance of the inventor, rebuts the examiners’ arguments and/or responds with modifications (amendments) to the claims.

Two to three iterations are typically required to obtain allowance of the patent application. Once issued, generally a patent has a life of 20 years from the filing of the first non-provisional patent application. In the U.S., maintenance fees are required at 3½, 7½, and 11½ years to keep the patent in force.

A provisional application can be filed in the U.S. before the non-provisional application to stake a claim to an invention. This type of application does not require claims or get examined and becomes abandoned within one year of filing unless it is “converted” to a non-provisional U.S. application or a Patent Cooperation Treaty (PCT) application within one year of filing.

A PCT application is an international place holder application filed in the home country of the inventor that reserves the right to file in the U.S. and many foreign countries at a later time. Similar to provisional applications, PCT applications will never issue as a patent and will become abandoned if they are not nationalized to non-provisional applications in the U.S. and regular applications in each foreign country in a timely manner.

The first U.S. application can be filed in the USPTO either as a provisional, non-provisional, or PCT application.

Filing Decisions

The decision to file a patent application is made by the OTM. These are business decisions based on market considerations, necessity of protection, probability of success in licensing and recovering expenses, and potential market impact. There is an expectation that all patents filed are potentially commercially valuable enough to recoup at least the patent expenses. We review our patent portfolio periodically and, in cases where the patent is not licensed, we assess whether to continue prosecution or maintenance.

Timing & Cost

The average pendency of a patent application in the U.S. is between two and four years. Inventors in the biotechnology and computing fields, however, should expect longer waiting periods.

Filing and obtaining U.S. patents generally costs between $20,000 and $30,000. Filing and obtaining patents in other countries may cost $30,000 or more per country.

Maintenance fees or annuities are also required at 3½, 7½, and 11½ years in the U.S. and more frequently in foreign countries.