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Frequently Asked Questions
Why patent?
Does patenting clash
with freedom of research?
What makes an invention
patentable?
Can I patent all
of my brilliant ideas?
How do I determine
who the inventors are?
How does the U.S.
Patent Office determine who was the first to invent
something?
What qualities make
an invention patentable?
How can I publish
without harming the "novelty" of my invention
for patent purposes?
What do I need to
know about foreign patents?
How is a patent
application prepared and filed?
What steps are
involved in the Patent Office's review of patent applications?
Why
patent?
Research depends on the free exchange
of ideas and discoveries. Why, then, does CCF seek patents
on its discoveries, which limit the use of information?
- Ideas that are not patented rarely
attract the private investments necessary for commercial
development. Without the temporary monopoly provided
by patent protection, commercial businesses are not
willing to act on the technology.
- CCF's ties with industry supplement
federal research funding and provide efficient channels
for commercializing technologies. Industrial sponsors
generally insist on patent protection.
- Patenting does not inhibit academic
research by the inventor or others. The traditional
"research exception" to patent protection,
as well as CCF policy, permits access to our technologies
for noncommercial research purposes.
Does
patenting clash with freedom of research?
The academic tradition of freedom of
research is a fundamental value at CCF. CCF secures
the patents to enter commercial markets. The research
exemption and CCF policy ensure that scientists anywhere
can conduct research even on patented technologies.
For CCF and the researcher, patenting
offers potential concrete benefits to human health,
additional research funding for CCF, and supplemental
income for inventors.
What
is patentable?
In the language of the statute, any person
who "invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent,"
subject to the conditions and requirements of the law
(35 U.S.C. Sec. 101). A researcher who wonders whether
an invention is patentable should treat the invention
as potentially patentable and contact CCI for advice.
Can
I patent all of my brilliant ideas?
No. Patent law requires that the process,
machine, manufacture, composition of matter, or improvement
thereof, be "reduced to practice" before it
may be considered an invention. In other words, there
must be a demonstration that the concept actually works.
Reduction to practice does not necessarily involve building
a working model. It may be possible to show this with
drawings, formulas, simulations, and the like. Sometimes
it is clear from the patent application that the invention
will work as described. Such "constructive”
reductions to practice are the basis of many patents.
How
do I determine who the inventors are?
Any individual, either solely or jointly,
who both conceives and diligently reduces to practice
potentially patentable subject matter that is claimed
in a patent application must be listed as a named inventor.
A patent can be invalidated for not naming all of the
true and proper inventors, or for naming individuals
who are not truly inventors.
In a patent application, the inventors
are identified according to their specific contributions
to the claimed elements of the invention. Merely
participating actively in the research project from
which the invention arose or co-authoring a paper on
it is usually not the basis for claiming inventorship.
Because of the critical importance of this determination,
CCI often relies on the outside counsel who prepares
the patent application to assist in determining inventors.
In disclosing your invention to CCI, taking great care
in this matter will speed the process of patenting and
avoid disputes.
How
does the U.S. Patent Office determine who was the first
to invent something?
In the United States, patents are awarded
to the person who first invents something. In the case
of a dispute over who was first, the dates on which
an invention was conceived and reduced to practice can
determine who is considered the inventor. The filing
of an Invention Disclosure Form with CCI will also
authoritatively establish the time by which you have
arrived at the invention.
Questions of disputed priority are often
determined by a review of research records. Systematic
record keeping, important to research in general since
it helps track the progress of experiments and observations
that lead to new knowledge and new technologies, becomes
vital in patenting. Researchers should maintain a strictly
chronological and dated record of experiments and ideas
in a bound notebook with numbered pages. This record
should be as permanent and legible as possible, with
entries in ink, and should be kept up to date, with
no unexplained gaps or lapses. It is not a bad idea
to have the notes periodically witnessed by people with
a fair understanding of the subject matter but not directly
involved in it.
What
qualities make an invention patentable?
To be patentable, an invention must (a)
new, (b) useful, and (c) non-obvious:
The novelty (newness) requirement means
that the invention must be judged by the U.S. Patent
Office to have never been made public through publication,
display, or other description; never sold or offered
for sale; and never used commercially. In addition,
it cannot have been the subject of a patent issued elsewhere
more than one year before the filing of a U.S. patent
application. For researchers, the novelty requirement
raises two practical issues. First, they and CCI must
make careful searches for "prior art" (earlier
work on the same invention, or part of it). Second,
normal research activities, such as presentations, colloquia,
grant proposals, or publications, may make it impossible
to patent an invention, unless they are done in accordance
with patent laws. In such cases, researchers should
consult with CCI to avoid a loss of patent rights.
The utility (usefulness) requirement
is less difficult. Inventions made at CCF are likely
to be useful, aimed as they are at healing the sick.
Yet the interpretation of this requirement for many
biomedical inventions is subject to change.
The concept of non-obviousness is one
of the most difficult in patent law, and a high hurdle
for the inventor. Under the law, if a person "with
ordinary skill in the art" would be likely to develop
the same invention upon review of the prior art, an
invention is not patentable. In other words, the Patent
Office can reject an application after reviewing the
prior art and merely showing a plausible path from the
prior art to the invention.
Other important legal requirements for
patenting, all of which protect the public's interest
in understanding and applying the knowledge embedded
in the patent, are: (a) that the patent must be explicit
and detailed enough to enable the person with "ordinary
skill in the art" to reproduce the invention without
undue experimentation; (b) that it must present the
best configuration and use of the technology known to
the inventors; and (c) that the inventor cannot have
"abandoned" his or her invention for a period
of time between beginning and completing the invention.
Some inventions are not patentable as
a matter of policy, including: theories, ideas, plans
of action, laws of nature, mental processes, mathematical
formulas, and naturally occurring substances (although
the isolation, concentration, and application of naturally
occurring substances may be patentable). In addition,
immoral or injurious inventions, such as devices for
torture, are not patentable.
How
can I publish without harming the "novelty"
of my invention for patent purposes?
The existence of "prior art"
demonstrating that an invention is not new can potentially
destroy the invention's patentability. Public disclosure
(defined as any communication to someone not obliged
to keep the communication confidential) constitutes
prior art if it contains enough information to enable
the person with "ordinary skill in the art"
to reproduce it. Public disclosure may include written
publications, oral presentations (if they are detailed
enough for a diligent note-taker to capture the essence
of the invention), prototypes and samples, sale or public
use (except for some experimental purposes), and discussions
with even a single person from another organization
(but not one's own). Grant proposals, once awarded,
can also constitute public disclosure.
There are many ways to protect patentability
without suppressing publication and other forms of collaboration.
You may file a patent application (through CCI) before
publishing, since filing protects the novelty of the
invention. In some cases, a simple nondisclosure agreement
(available from CCI) can be used to place those who
receive the information under an obligation of confidentiality.
In other cases it is possible to convey the benefits
and mechanisms of an invention without releasing enough
details to enable the person with "ordinary skill
in the art" to reproduce the invention.
What
do I need to know about foreign patents?
There are three things to know about
foreign patents: (a) they are nearly universally required;
(b) they are harder to get than U.S. ones; and (c) they
are very expensive. The first point reflects the growth
in world trade, making foreign markets loom larger and
larger in the marketing plans of most of the companies
that are likely to license CCF technology. Most companies
wishing to license CCF technologies demand not only
U.S. patents, but foreign patents, too.
Foreign patents are harder to obtain
than U.S. ones because nearly all foreign governments
use stricter standards of "novelty" and “non-obviousness.”
The United States allows a one-year grace period between
first public disclosure and filing a patent application.
Most foreign countries require "absolute novelty,"
so that any public disclosure before filing a patent
application makes the invention unpatentable.
Without overseas patent rights, the value
of an invention may be substantially less. It is vital
that researchers contact CCI before making public disclosures
of their inventions to learn what their options are.
How
is a patent application prepared and filed?
Patent applications for CCF inventions
are prepared by outside patent attorneys selected by
CCI on behalf of individuals (the inventors). Pursuant
to employment policy, CCF is the assignee of the true
inventor or inventors. Patent applications filed with
the U.S. Patent and Trademark Office typically contain
the following elements (in addition to meeting the other
requirements of representing patentable inventions):
- Specification (background, details,
a description of the invention's use or uses, and
sometimes examples or experimental results illustrating
the invention's application);
- Drawings and/or flow-sheets;
- Claims (define the metes and bonds
of the patent protection sought);
- Oaths of the inventors declaring that
they created what they believe to be a new, useful
and non-obvious invention, and that the application
is complete and accurate.
What
steps are involved in the Patent Office's review of
patent applications?
An application received by the U.S. Patent
Office is assigned a serial number and date, communicated
to CCF in a filing receipt. The patent is assigned to
a specific Patent Examiner depending on the area of
technology involved. This Examiner reads the application,
reviews the proposed claims, conducts a prior art search,
and then evaluates the invention for patentability using
the standards of patentability discussed above. This
review can take two years or more. The process then
proceeds through several steps, as follows:
- First Office Action. The
Patent Office issues its First Office Action, containing
the Examiner's initial conclusion about the patentability
of the claims to the invention. The First Office Action
is frequently negative, concluding that the invention
is not patentable because the claims do not meet one
or more of the fundamental criteria of novelty, utility
or non-obviousness.
- First Applicant's Response.
The applicant has the right to require the Patent
Office to reconsider in a response to the First Office
Action. The applicant may directly rebut the First
Office Action or change the application's claims to
avoid the objections.
- Second Office Action/Final Rejection.
The Patent Examiner responds to the First Applicant's
Response, either accepting the applicant's arguments,
rejecting them, or accepting some while rejecting
others. If all of the arguments are rejected the Second
Office Action is called a "Final Rejection"
because the applicant does not automatically have
a right to reconsideration.
- Second Applicant's Response.
There often remains room for discussion at this stage,
however. Additional rebuttals may be made, and/or
further refinements of the patent claims.
- Final Rejection or Notice of Allowance.
Ultimately, the Examiner will accept or reject the
applicant's arguments. If they are accepted, the Patent
Office will issue a Notice of Allowance, and the patent
will issue in due course. A rejection is given in
a notice of Final Rejection. If the applicant takes
no further action, then no patent is issued. Nevertheless,
the applicant has several courses of action to chose
from, including:
- Filing a Request for Continued
Examination (RCE) to further prosecute the same
invention, usually with further modified claims;
- Filing a Continuation-in-Part (CIP)
application, which is essentially a new application
in which the applicant may restructure the application,
redefine the invention, or bring in new information
or claims to overcome the Examiner's rejection;
- Appealing the Rejection through
either of two avenues, the Patent Office's Board
of Appeals or in Federal Court.
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