Office of Research, UC Riverside
Office of Technology Commercialization

Patents

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 determine inventorship.

Why seek patent protection?

  • The patent system is designed to disseminate new and useful knowledge
  • Provides incentives for companies to invest in new technology
  • Companies develop new ideas
  • Practical application of new ideas in products for the public
  • 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 research

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 timely fashion.
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 rights.

What type of patent applications can be filed within the US?

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 of plant.
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 criteria:

  • 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 Internationally?

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:

  1. 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 officer.
  2. The finished application is then filed by the attorney with the US Patent and Trademark Office (USPTO).
  3. A filing date is received from the USPTO.
  4. 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.
  5. During this time, the Licensing Officer will also attempt to find commercial opportunities for the invention.
  6. 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:

  1. 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.
  2. 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.
  3. 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).
  4. 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.
  5. 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 attorney time.
  6. 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.
  7. 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 application.
  8. 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."
  9. 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.