What is a patent?
A patent is a government grant/monopoly, for a 20 year period,
of the rights TO EXCLUDE OTHERS from making, using or selling the
substance of your invention. Note that it does not give the patent
holder the right to make, use, sell or import the invention.
Moreover, patent rights have to be obtained for each country or
region where enforcement is required.
Who can apply for a patent?
A patent may be applied for only in the name(s) of the actual
inventor(s). Within the UC system, all patents are applied
for in the name of The Regents as assignee. Determining who
is an inventor is a legal determination and is unlike a
determination for authorship on a peer reviewed paper.
Consequently, UCR may need to consult with outside legal counsel to
Why seek patent protection?
- The patent system is designed to disseminate new and useful
- Provides incentives for companies to invest in new
- Companies develop new ideas
- Practical application of new ideas in products for the
- Meet patent-related obligations to research sponsors
- Project licensing revenues for UC research and education
- Incentives for inventor participation
- Protects the associated intellectual property of university
When should patent protection be initiated?
In most countries patent rights are lost if public disclosure of
the invention occurs prior to patent filing. Availability of
foreign patent rights is often very important to potential
industrial licenses. While the decision to publish is within your
discretion, this could be detrimental both to the University's and
your own interests. Consequently UCR faculty and staff are
encouraged to contact the Office of Technology Commercialization
(OTC) PRIOR to submitting work for public disclosure. Public
disclosure includes: publication of work online or in journals;
poster presentations; oral presentations; offer to sell the
invention, using the invention in public, and masters and Ph.D.
thesis submissions. OTC will request individuals to submit a Record
of Invention Form (ROI). If OTC decides to file a patent
application then they will coordinate with the inventors and
outside patent counsel to ensure the application is filed in a
The US has now joined the rest of the world as a "first to file"
patent system. Consequently, rather than relying on notebooks
or other types of invention documenting system those who are the
first to file the patent application will be granted those patent
What type of patent applications can be filed within the
In the US, Utility, design or plant patents can be obtained.
Utility patents may be granted to anyone who invents or discovers
any new and useful process, machine, article of manufacture, or
composition of matter, or any new and useful improvement
thereof. Design patents may be granted to anyone who invents
a new, original, and ornamental design for an article of
manufacture; and Plant patents may be granted to anyone who invents
or discovers and asexually reproduces any distinct and new variety
US Utility patent applications can be further divided into
provisional, non-provisional, continuations, divisional and
continuation in part patent applications. Typically a provisional
application is filed first. This type of application is not
examined by the US Patent Office. A decision will then be
made by the UCR's OTC within one year from filing of the
provisional application - based on criteria including benefit to
the public, commercial potential, patentability and patent rights
of outside parties - whether to file a non-provisional application
based upon the provisional application. Upon examination of
the non-provisional application by patent examiners, the applicant
may have then have to elect which claims to pursue in the current
non-provisional application. Claims not elected may be
pursued in later continuations or divisional applications.
Additional subject matter or improvements can be filed in
subsequent continuation-in-part applications.
What type of work can a UCR researcher consider for patent
protection in the US?
For the work to be patentable it must meet the following
- Statutory subject matter: Eligible subject matter includes any
new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof. However,
laws of nature, physical phenomena, and abstract ideas are not
patentable subject matter. Business methods and algorithms may be
patentable, depending upon how they are applied.
- Novel - Must not be known or used by others, patented, or
described in a printed publication.
- Useful - Must have legal and moral use
- Non-obvious - Must not be logically deducible from things known
or obvious to one of ordinary skill "in the art" to which the
subject matter relate. This is a legal determination.
What type of patent applications can be filed
A certain type of patent application - a Patent Cooperation
Treaty Application (PCT) - can be filed that will simultaneously
cover many international countries/regions. Though generally
more expensive to file then a US patent application, a PCT filing
allows the applicant to wait 29 months or so to determine ("elect")
which individual countries or regions to pursue for their ultimate
patent prosecution. Once such an election is made, the PCT
application enters the "national phase" and is considered a
national application in those countries. Additional costs are
associated with each national application filing.
Not all subject matter patentable in the US is patentable
internationally. For instance, medical methods of treatment,
which are patentable in the U.S., are per se unpatentable in some
countries. Novelty considerations tend to be similar while
there may be differences in the non-obviousness type analysis
performed by each country or region.
What happens to my patent application once UCR's OTC decides to
file the application?
US Provisional applications:
- Based on the invention disclosure, the US provisional
application is drafted with the aid of the inventors, outside legal
counsel (patent attorneys or agents) and the UCR licensing
- The finished application is then filed by the attorney with the
US Patent and Trademark Office (USPTO).
- A filing date is received from the USPTO.
- Within the first year of the filing the provisional
application, the inventor(s) should inform their Licensing Officer
of any commercial opportunities to license or sponsor their work
and whether they have generated any new data thereon.
- During this time, the Licensing Officer will also attempt to
find commercial opportunities for the invention.
- Just prior to the one year anniversary of the filing date of
the provisional application a final decision will be made by the
Licensing Officer - after consultation with the inventor(s) -
whether to file a non-provisional US and/or International Patent
Cooperation Treaty Application (PCT) application or merely abandon
the provisional application. As mentioned elsewhere, any
filed non-provisional or PCT applications will be licensed or "at
risk" UCR filings.
Non-provisional or PCT applications:
- Based on the US provisional application already filed, the US
non-provisional and/or PCT application is drafted with the aid of
the inventors, outside legal counsel (patent attorneys or agents).
More inventor(s) input is typically required at this stage.
- The cost of filing a US non-provisional application varies from
$8,000 to $ 20,000 depending upon the complexity of the disclosure
(i.e. for instance if protein or nucleic acid sequences are
involved then the costs can increase). PCT applications costs
are typically $4000 or more.
- Once the US non-provisional application is filed by the
attorneys with the USPTO, UCR may not receive any further contact
regarding the application for some time (i.e. 1-3 years).
- A typical first communication from the USPTO regarding the US
non-provisional or PCT application maybe a request for the
applicant/inventors to provide amended figures or a request to
narrow the scope of the application to only one invention (i.e. a
"restriction requirement."); and/or objections/rejections based
upon issues of lack of descriptiveness of the claimed invention,
support, novelty, and/or non-obviousness. In this regard only
a very small minority of all patent applications filed with the
USPTO are allowed without any type of rejections/objections.
- The inventor is typically required at this point to interact
with the attorney to draft a rebuttal to overcome these
objections/rejections. The cost of filing such a rebuttal
varies from one to several thousand dollars, depending on the
- The USPTO may allow "claims" in response to the rebuttal or
decide to either maintain the objections/rejections or provide new
objections/rejections, whereupon another rebuttal is required.
- The process of responding to the USPTO's objections/rejections
once the application has been filed until the application is
allowed is termed "patent prosecution." Consequently, although the
initial filing costs of a US non-provisional patent application may
be approximately $8000, the addition of prosecution fees could mean
an outlay of approximately $20,000 - $100,000 per patent
- For PCT applications, the first response is an international
search report. The report will give an indication as to the
patentability of the "claims" of the application
internationally. At about 29 months after filing the PCT, a
decision is then made by the licensing officer in conjunction with
the licensee (if appropriate) whether to continue with the
application or abandon. If a decision is made to continue
with the PCT application, the OTC will then "elect" which
countries/jurisdiction to pursue the PCT application (i.e. Europe,
China, Russia, Japan etc.). At this point the application is
considered at the "national phase."
- There are separate costs to file the application in each
country/jurisdiction elected. Consequently filing in 2 to 4
countries could cost up to $500,000.
What happens once the patent is granted?
The licensing officer will inform the inventor(s) if the patent
is allowed. Maintenance fees have to be paid to avoid abandonment
of the allowed/issued patent in some countries. For instance in the
US, maintenance fees are due 3½, 7½ and 11½ years after grant of
the patent. The maintenance fees for each country can vary
anywhere from several hundred to thousands of dollars per
maintenance fee period throughout the life term of the patent (i.e.
20 years from the filing date of the application).
Consequently, the OTC will continue to monitor the commercial
interests/license in the technology to determine whether to abandon
or maintain the patent.