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The patent process can be complex and unique based on the invention. This page outlines the typical process the Office of Technology Transfer takes in pursuing patent protection for your invention.
The Provisional Patent Application
After receipt of an invention disclosure, West Virginia University (WVU) may choose to file a provisional patent application for an invention with the U.S. Patent and Trademark Office (USPTO). This is normally the first step toward a patent. Note that the provisional application is not evaluated by the USPTO and does not result in an issued patent. The provisional patent application preserves a filing (priority) date for the invention and preserves patentability if there is a public disclosure, or if someone else has a similar invention after the filing date.
Considerations for a Provisional Patent Application
To file a provisional patent application, The WVU Office of Technology Transfer (WVU OTT) and the WVU Technology Transfer Assessment Committee (TTAC) primarily considers whether the invention disclosure is:
- Inventive, or novel and nonobvious;
- Enabled, or can teach a person with ordinary skill in the art how to make or use the invention;
- At risk of public disclosure or invention by others;
- Commercially valuable
The WVU OTT will market the invention after the provisional patent application is filed to attempt to license the technology and to gauge commercial interest to support the filing of a nonprovisional application.
(See IP Process Step 6)
If WVU OTT files a provisional patent application on a disclosed invention, it is expected that the inventors will continue to advance the invention in preparation for a nonprovisional patent application filing. Advancement can come in the form of creating a working prototype or process model, commitment to follow-on research and development, creating improvements, collecting invention performance data, among other examples. WVU OTT expects the inventors to cooperate in commercializing the invention. It is critical that within one year of filing the provisional patent application, the inventors cooperate with WVU OTT to demonstrate the commercial value of the invention to support a nonprovisional patent application filing.
Converting a Provisional to a Nonprovisional Application
After WVU OTT files a provisional patent application, the inventors have one year from the filing date to further advance their invention to ensure a robust nonprovisional patent application can be filed. During this time, the WVU OTT conducts a more thorough due diligence survey to assess the patentability, marketability, and commercialization potential of the invention. If there is no further technical development, no additional funding, or no potential licensees or commercial interest, it is often difficult to justify further investment in patenting the invention.
The Nonprovisional Patent Application
WVU does not have the budgetary resources to convert all provisional to nonprovisional applications. WVU is most likely to file nonprovisional applications on inventions that possess the following criteria:
- High patentability potential;
- High commercialization potential;
- Support with ongoing funding; and
- Identified potential or actual licensees.
US Utility Patent Application versus an International Patent Application
A U.S. Utility patent application is a nonprovisional patent application filed in the United States and affords protection only in the United States. This is the most common protection filed by WVU.
Typically, if an invention meets the above criteria to warrant a nonprovisional patent application filing, WVU will file a U.S. patent application. If there is an actual licensee, the licensee will pay for patent costs and will determine whether to pay for a U.S. patent only, or to seek international patent protection.
An international patent application, or Patent Cooperation Treaty (PCT) application, preserves the right for an applicant to file a patent in over 150 countries within thirty months of the earliest priority date (usually the provisional filing date). If the PCT application is based on a provisional patent application, this provides eighteen months to determine whether to file applications in elected countries.
Due to its expense, it is unlikely a PCT application will be filed for most inventions, unless the invention has an actual licensee to pay the cost. In rare instances, where an invention has a high value and near term global commercial licensing opportunities, a PCT application may be filed; but it is expected that a license will be in place prior to the deadline for National Stage entry in a particular country or region (30 months from earliest priority).
The Patent Prosecution Process
Patent prosecution can be a complex process depending on multiple factors. The typical U.S. Utility patent process WVU follows is presented at a high level in the patent prosecution flowchart , with associated timelines depicted in the last graphic, following the path of the Provisional Phase and subsequent National Phase. Once a provisional patent application is filed, WVU has one year to decide whether to continue patent prosecution on the invention by filing a U.S. Utility patent application. This initial one-year term is referred to as the Provisional Phase. If WVU decides not to file a U.S. Utility patent application, it may offer the technology back to the inventors. If WVU decides to proceed with patent prosecution, a U.S. Utility patent application is filed which starts the National Phase. A patent examiner then reviews the application for patentability which starts prosecution. Patent prosecution or examination can take up to two to five years. If the claimed invention is patentable as submitted, the patent examiner will allow the claimed invention to issue into a patent after fees are paid. Most of the time, the application is not patentable as originally submitted, and arguments and/or amended claims must be presented which can lead to a patent. If the patent examiner does not accept the arguments and/or amended claims, the patent examiner will issue a final rejection. At this point, WVU may elect to appeal the patent examiner’s position to an appeal board or to the U.S. court system. If the appeal is successful, claim allowance is achieved, which can lead to a patent. If the appeal is unsuccessful, claim allowance is not achieved and the patent application will likely go abandoned, resulting in no patent.
The typical international (nonprovisional) patent process carries with it most of the same substantive hurdles presented by the U.S. National Phase patent process. Similar to the U.S. National Phase, and if WVU decides to do so, a PCT application must be filed within one year of the provisional patent application filing date or priority date. The filing of the PCT application starts the International Phase. About sixteen months after the priority date, an International Search Report with a written opinion on patentability is privately released to the patent applicant. Within thirty months of the priority date, WVU must elect to enter the National Stage Phase in each country or region where a patent is to be pursued. Once the National Stage Phase has started in each respective country or region, patent prosecution follows a similar process as in the U.S.
Note that a U.S. Utility patent can be pursued by either entering the National Phase, or by entering the International Phase and subsequent (U.S.) National Stage Phase. The National Phase and International Phase can also be simultaneously entered by initiating U.S. Utility patent prosecution via the National Phase, while preserving foreign filing rights by filing a PCT application. Both the U.S. Utility National Phase application and PCT application publish approximately eighteen months after the priority date.
The patent term for a U.S. Utility application is twenty years from the nonprovisional filing date. For a U.S. Utility patent to remain in force for its full term, three maintenance fees must be timely paid at approximately 3.5, 7.5, and 11.5 years after patent issuance. If maintenance fees are not paid, the patent will go abandoned. Other countries and regions have their own specific maintenance fee requirements. In general, the commercial value of an issued patent must be demonstrated for WVU to pay patent maintenance fees when they come due.
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