Patenting Process

Patenting Process

The United States Constitution, Section 8, states that “The Congress shall have power…To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;”

The word patent originates from the Latin patere, which means "to lay open" (i.e., to make available for public inspection).

What is a Patentable?

To be patentable, an invention must be statutory, new (or “novel”), useful, and non-obvious. A novel invention must incorporate a composition of matter, process, machine, or an article of manufacture different from anything previously known. A useful invention solves a problem, improves on or proposes a new use for an existing product, or produces a desirable result. A non-obvious invention is one that would not have been obvious to a person having ordinary skill in the art at the time the invention was made.

Should we file a patent?

An invention may be patentable but not have high commercialization potential. Thus, before we decide to proceed with a patent application, consideration is given to any obligations we have to research sponsors, the commercial utility of the invention, its competitive superiority, the necessity for extensive development work, and the availability of an industry partner willing to pay for a license.

Protecting the Innovation

In the United States, a patent application must be filed within one year of public disclosure of enabling information. Therefore, if you are interested in commercializing an innovation, it is important to contact the Office of Innovation & Commercialization as early in the process as possible. It is critical that you contact us before making any enabling public disclosures (e.g., a publication or conference presentation). Making an enabling public disclosure before we have taken steps to protect the innovation may preclude us from being able to obtain a patent.

In most cases, we will begin by filing a provisional patent application for the innovation. A provisional application is a faster, less expensive application used to establish a priority date with the Patent Office. After filing a provisional patent application, the applicant has one year in which to file a complete application and any foreign applications (if the provisional was filed prior to any enabling public disclosure). The provisional application allows us to evaluate the innovation more thoroughly to determine whether to proceed with a full patent application. If a full application is not filed within one year of the provisional application’s filing date, the provisional application will lapse.

Not all innovation disclosures you submit are appropriate for patent protection. We will work with you to determine if a patent makes sense for the innovation you disclose.