Patent Application & Process
OTD will generally make a decision on filing only after completion of its evaluation. If the evaluation is positive and there is good reason to pursue protection of the invention, OTD will generally go on to file a provisional patent application. Provisional patent applications have only been available in the United States since 1995. They allow the applicant to quickly and cheaply establish an initial filing date for the invention and provide the applicant with a provisional year (i.e. 12 months) to further develop the technology as well as evaluate commercial interest in the invention before having to bear the expense of a full non-provisional filing. Having an early filing date has become more important as of March 16, 2013 when the United States adopted the first-to-file priority system that operates in most of the world. Provisional patent applications are well suited for early stage university inventions, where the filing is often driven by publication considerations, not commercialization considerations, and there is little time to investigate commercial interest before the non-provisional patent application has to be filed to avoid losing worldwide rights.
A provisional application is never examined and merely serves as a placeholder for establishing a date of first invention. The provisional application expires 12 months from filing. Therefore, at the end of the provisional year, the applicant must be either abandon his/her rights or file a non-provisional application. A non-provisional application can be a United States non-provisional application but generally will be a Patent Cooperation Treaty (PCT) application so that our office reserves a right to file a patent application throughout the world for an additional 18 months. A non-provisional patent application in most cases will involve a much more substantial investment both for the preparation and filing and for the subsequent prosecution of the application.
OTD will start to evaluate whether or not to convert the provisional application about eight months (the “Eight Month Review”) after the provisional filing. This Eight Month Review process is intended to ensure that we all have the most up to date information possible in order to jointly make an informed decision on whether the provisional application should be converted to a non-provisional application, and in what form (i.e. US, PCT or US and PCT application(s)). The Eight Month Review generally proceeds as follows:
First, an OTD staff member will meet with you again to update our understanding of the status of the invention. Issues such as new scientific accomplishments in the last 8-9 months, expected developments in the near future, submission of new grant applications, recent publications (by you or your scientific competitors), abstracts or conferences, scientific competition and the reaction of peers to your presentation of the technology will be discussed in this meeting. We’ll work out what additional materials should be made available to the law firm if conversion of the provisional application is intended.
Next, we will set up a discussion between you as the inventor, the OTD staff and/or the patent attorneys who are responsible for converting the provisional application to a non-provisional application. In this meeting, intellectual property issues, such as prior art, what we see as the commercial embodiment of the invention and the type of claims we’ll want to draft to protect that embodiment may be discussed. We’ll likely also discuss the breadth and depth of the claims we can hope to receive, our ability to detect infringement and the ease of inventing around our proposed claims.
In addition, by this time our office also will have completed its market assessment. Initial market assessments will either be performed internally by the OTD staff handling the disclosure or will be outsourced to consultants with diverse technical expertise specializing in marketing analysis for academic institutions.
The Eight Month Review brings together information on the invention’s technical merit, its intellectual property status and market need. Our objective is to ensure that we do not waste your valuable time or BU resources.
If a non-provisional US application is filed, it will proceed through the patent examination process. This process generally takes 2-4 years from the filing date to complete. In general it involves: 1) a long waiting period of about 12-14 months; 2) a restriction requirement – where the applicant and the USPTO settle on a subset of claims that will undergo examination and that relate to only one invention (generally the USPTO will view the claims as representing many inventions); 3) one or more office actions where the applicant and the USPTO discuss whether or not the claims under examination satisfy the new, useful and non-obvious criteria required for patentability; 4) hopefully an allowance related to some or all of the claims under examination; 5) filing of one or more applications directed to another subset of claims that may have been subject to the restriction requirement; and finally 6) granting of the patent. After the initial 12-14 month wait, each step in the process will generally take 3-9 months to complete. The examination process is similar in other countries or regional offices and non-provisional applications can be filed in essentially any country or regional office of choice prior to expiration of the provisional application but that will require payment of all fees and translation costs (if any) associated with each application in each selected country/regional office.
If the non-provisional application is a PCT application, that will postpone examination of the application in all countries/regional offices until 30-31 months from the provisional application filing date. In brief, for a single filing fee, the PCT postpones national phase entry until 30-31 months (depends on the country) from the original provisional application filing date. The filing fees and translation costs for each country will be in the thousands to tens of thousands of dollars. Accordingly, the PCT application will generally be the preferred route for BU-OTD when filing the non-provisional application that immediately follows the provisional application expiration date.
At the 30-31 month date, the PCT application expires and the applicant must either file in the national (e.g. United States Patent and Trademark Office) or regional (e.g. European Patent Office) examination offices or forego protection it that particular country or region. The process of examination is discussed above.