Process and timeline

The patenting process at UW begins when you submit an innovation. Once we process your information, an innovation manager will be assigned to your case and meet with you to learn more about your innovation. Together with a patent manager, your innovation manager will assess the commercial potential and intellectual property strategies for your innovation. If it is determined that a patent should be part of the intellectual property strategy for your innovation, a UW CoMotion patent manager will work with you to file a provisional patent application. A provisional patent application may be as simple as filing a copy of your recent manuscript, or it may involve meeting with a UW CoMotion patent manager and outside counsel to discuss your innovation in preparation for drafting a full, non-provisional patent application.

A provisional patent application is a low-cost, informal patent application that is not examined by the U.S. Patent Office. It is a placeholder that establishes an earlier filing date for a later filed non-provisional (i.e., full, formal) patent application. Such a non-provisional application must be filed within one year of the filing date of the provisional application. For more information, please see the videos on our Patent Basics page.

When a non-provisional patent application is filed with the U.S. Patent Office, it is routed to a patent examiner with an appropriate scientific background. It may be one or more years before the examiner begins review of the application. Once the examiner begins review, they evaluate the application for conformance with the patent laws and regulations, in addition to determining whether the application is distinct from the “prior art” (i.e., earlier patents and publications). The examiner may, and often does, reject most or all of the patent claims in the first review. A CoMotion patent manager or outside counsel responds to the examiner’s comments, often after obtaining input from the inventors. In general, several rounds of patent examiner review and UW CoMotion response are required before a patent is granted or finally rejected.

The date when you first presented, published, or otherwise made available to the public (including a non-confidential discussion) a description of your invention that would allow another of ordinary skill to reproduce your invention, or the date when the invention was offered for sale. Please contact CoMotion before making a public disclosure.

The date that you knew your invention would solve the problem.

It can take at least two to six years from the date of application for a patent to issue.

Obtaining and managing patent rights for an invention is very expensive. For example, a U.S. patent can cost in the range of $30,000 to $50,000 over its 20-year life. When a commercial partner is identified early (e.g., before a patent application is filed), that commercial partner often pays the patenting costs. However, even if a commercial partner has not been identified, the UW CoMotion may choose to incur the patenting costs if there is a reasonable likelihood that those costs can be recovered from a commercial partner later.

Provisional patent filings are supported whenever there is a reasonable belief that there is an intellectual property position and either a discussion with a licensee/investor or a public disclosure is imminent. While filing a provisional patent application in the U.S. is relatively inexpensive in dollars, these filings utilize significant resources from the inventors and from CoMotion’s internal staff and are less valuable if filed before sufficient support for the invention is included. Please reach out to a CoMotion innovation manager for advice on the best timing to protect an invention.

Within one year of filing a provisional application, a non-provisional patent filing must be made to continue protection. CoMotion aims to support these patent expenses when there is an engaged inventor team, an ongoing strong intellectual property position, and evidence of significant market traction such that a license is likely within four years of filing a provisional patent application. Typical support includes normal expenses associated with a U.S. patent through to issuance of the first patent in a family and the first U.S. maintenance fee for that patent due 3.5 years after issuance. Cost-effective management of patent activities is also provided, which can be a significant benefit to the ultimate licensee as patent filing legal costs can escalate quickly.