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10 things UW innovators should know about patents

Written by Meg Herndon / January 31, 2019

Many innovators want to protect  their inventions with a patent, but they don’t exactly know how, where to start, what the process entails, or what protection a patent provides. At CoMotion, we help innovators in the UW community determine the best avenues for commercializing their innovations — including a patent or trademark, licensing, becoming a startup and more. If you’re an innovator interested in patenting your invention but you’re not sure where to start, you’ve come to the right place. CoMotion supports patents for UW inventions with a strong intellectual property position and market traction.  Here are ten things CoMotion’s team believes UW inventors should know about patents.

  1. A patent allows you to prevent others from practicing the claimed invention

The owner of a patent has the right to exclude others from making, selling, offering to sell, using, or importing the invention as described in the patent claims. For a patent to have value, others must want to practice it, and you must be able to determine if they are practicing it.  A patent does not guarantee you have the freedom to practice the invention – you may need rights in other patents to do that.

  1. Only certain things can be patented

United States patent law allows inventors to obtain patents on the following categories of inventions: methods or processes, devices, machines, combinations of articles or substances,  compositions of matter (such as chemical and biological materials), and any improvement of these.  This could include everything from a surgical procedure to software to a new kitchen tool. One cannot patent naturally occurring compounds, abstract ideas, or laws of nature. Learn more about what you can and cannot patent here.  A requirement is that the invention must be novel, useful, and non-obvious. Another requirement is that it must disclose the invention in sufficient detail that a person knowledgeable about the technology can make and use the invention.

  1. Know when to file a provisional patent application

Inventors who work in research institutions often wish to publicly disclose their work in order to connect with funders or otherwise communicate about their work — but doing so might lead them to lose the ability to patent that invention. In this situation a provisional patent application can be filed, allowing the researchers to communicate about their project and seek funding for one year without the need to pay for a full patent application.

It’s important to understand that a provisional patent application is not an actual patent application (and there’s no such thing as a provisional patent). Inventors must file a non-provisional patent application within a year of completing the provisional patent application in order for their invention to be examined and become a patent.

Additionally, innovators should be careful not to file a provisional patent too early. If the provisional patent application is filed while you’re still developing your invention, the patent office will only recognize the invention as described in the application and not include any changes,  additions, or improvements made after the application was filed. Furthermore, the earlier filed provisional patent application may become prior art to a subsequently filed patent application on those changes, additions, or improvements, deeming the subsequently filed patent application not patentable.  It is important to discuss this with your innovation manager and develop the best patent strategy for portfolio of innovations.

  1. Public disclosure impacts the ability to receive a patent

Public disclosure include online publication, academic papers, poster sessions or other public displays of the invention (including prototypes), and can include any non-confidential discussions. “Enabling” public disclosures, meaning disclosures that explain the product well enough for an average person to recreate it, typically result in not being able to patent an invention.  Also, in some countries (such as the U.S.) a sale of the invention will make it unpatentable, even if the sale is made in secret or confidentially.

However, not all disclosures of the product are considered public. Non-public communications with grant agencies and confidential discussions (including those with UW CoMotion) typically wouldn’t count as public disclosure.

If you realize you’ve made a public disclosure before a patent application has been filed, talk to your CoMotion innovation manager. In the U.S. you may still be able to file a patent application within one year of the public disclosure or sale.  Many other countries, including those in Europe, do not have this grace period.

  1. Know who’s an inventor compared to those often included as authors on academic papers

Unlike academic manuscripts, patents list inventors, not authors. Inventors conceive of an essential element of the claims of a patent application, whereas authors on a manuscript may help carry out the project but don’t have to be involved in conception.

For example, if a student helps their professor build a product the professor designed, but that student wasn’t involved in conception or design of the product, only the professor would be listed as an inventor on the claims of the patent. However, if for example the student conceived of ideas in the early stages of development, or of features or design ideas that were implemented in the final invention and that are claimed in the patent application, the student would be considered an inventor and listed on the patent application. Unlike scientific research where authors are listed in descending order, there’s no meaningful distinction to the order of inventor names on a patent.

  1. The time from filing a patent to issuance can average between two to six years, but sometimes takes longer

The process of getting a patent, called patent prosecution, is a slow process. After filing the patent application, patent examiners review the claims, look at similar work and see what components, if any, they agree are new and protectable. There are multiple rounds negotiation during which the patent office explains why they are rejecting claims, and the inventor or assignee argues for why the claims should be issued in the patent. This process can take at least two to six years from the date of filing the patent application— and at the end of the process a patent still may not be approved.

Because of this lengthy process, patenting might not be the best option in fast-paced industries because newer solutions might be available by the time the patent is issued. In these cases copyright, know-how, and business advantages like access to customers can be more important.

  1. Patents require a significant commitment of time and financial resources

In addition to the financial cost of a patent (the average cost, including maintenance fees, i.e., fees necessary to keep the patent in force, is around $25,000), the process of obtaining a patent involves a significant time commitment from the inventors.  Inventors provide the initial information that is included in the application, review the application for accuracy, and are heavily involved in the back and forth negotiations with the patent office.

  1. The goal of patenting is to broadly cover a commercially important product or process

Patenting an invention does not guarantee an inventor will make money. In fact very few patents end up having significant value. Patents must be broad enough in scope to (i) cover a commercially valuable product or process, and (ii) prevent others from doing something similar without practicing the claim of the patent.

  1. Market relevance is key to commercialization

In active areas of research, getting a patent that provides meaningful exclusivity may not be possible even if inventors solve a big problem. CoMotion’s team makes decisions on patenting based on factors that influence if a patent will have a return on investment.

This includes each industry’s willingness to license, the breadth of the invention, and how rapidly the technology is changing in that area. Sometimes even the strongest inventions aren’t strong candidates for patents because their industries are moving too rapidly or because of other market factors.

  1. Every country has its own patent laws and processes

Innovators interested in patenting inventions in multiple countries need to obtain patent protection from each individual country.  Every country has its own laws that determine what can be patented. In countries that are considered important for filing patents, the fees are generally as expensive as or more expensive than pursuing the U.S. application, so it is important to have a strong understanding of the business need and opportunity for the patent.

To learn more about patenting your invention through CoMotion, visit our website or contact us today.