Intellectual Property 101

Patentable subject matter includes processes, machines, compositions of matter, articles, some computer programs and methods (including methods of making compositions, methods of making articles, methods of using devices or compounds, etc.)

Generally, no. A natural substance that has never before been isolated or known may be patentable in some instances, but only in its isolated form (if the isolated form had not been previously discovered). A variation of a naturally occurring substance may be patentable if an inventor is able to demonstrate they applied substantial non-obvious modifications that provide commercially viable advantages.

The USPTO is the federal agency, organized under the Department of Commerce, which administers patents on behalf of the government. The PTO employs patent examiners skilled in all technical fields in order to appraise patent applications. The PTO also issues federal trademark registrations.

Under U.S. law, an inventor is a person who takes part in the conception of the ideas in the patent claims of a patent application. Thus, inventorship may change as patent claims are changed during prosecution of the application. An employer or person who only provides the funding to build or test an invention is not an inventor. Inventorship is a legal issue and may require an intricate legal determination process by the patent attorney prosecuting the application.

USPTO - 2109 Inventorship [R-10.2019]

Inventorship and Authorship are not synonymous under U.S. Patent Law

An inventor is:

• A person who conceives the subject matter of at least one claim of the patent.

• Two or more persons who collaborate to produce the invention through aggregate efforts.

An inventor is not:

• Someone whose only contribution is reducing an invention to practice by exercising ordinary skill in the art.

• A technician who simply performs experiments or assembles the invention.

• The supervisor or department head of the person who conceived the invention.

• Someone whose only contribution is an obvious element to the invention.

• Someone whose only contribution is participation in consultations about the invention before or after conception of the invention.

• A person who only conceives of the result to be obtained but not the idea of how to achieve it.

• A person who only discovers the problem (unless she contributes to the solution).

• A person who merely provides a suggestion or improvement but who does not work to fit the suggestion or improvement into the invention.

We contract with outside patent counsel for IP protection, which allows us to collaborate with world-class patent specialists in diverse technological fields. Inventors work with patent counsel in drafting their patent applications and, when necessary, responses to worldwide patent offices. Our team of external licensing specialists and in-house attorneys will help with the selection and oversight of the outside patent counsel.

Patent applications are generally drafted by a patent attorney or a patent agent (a non-attorney with a science or engineering degree and a PTO license to practice patenting). The patent attorney will generally ask you to review an application before it is filed. They will also ask you questions about inventorship. At the time an application is filed, the patent attorney will ask the inventor(s) to sign an Inventor’s Declaration and an Assignment, which assigns the patent to the University.

Depending on the technology, the patent attorney will receive an Office Action (or Official Action). This is a written notice from the PTO as to whether the application and its claims have been accepted as filed (this may take up to 18 months). More often than not, the PTO rejects the application because certain formalities need clarification, or because the claims are not patentable over the “prior art” (anything that has been publicly disclosed in the past).

If the application is rejected, the patent attorney must file a written response, usually within three to six months. Generally the attorney may emend the claims and/or point out why the PTO’s position is incorrect. This procedure is referred to as patent prosecution. Often it will take two PTO Official Actions and two responses by the patent attorney—sometimes more—before the application is resolved. During this process, input from the inventor(s) is often needed to confirm the patent attorney’s understanding of the technical aspects of the invention and/or the prior art cited against the application. The PTO holds patent applications in confidence until they are published by the PTO.

No. However, there is a provisional patent application, which is described below.

In certain circumstances, U.S. provisional patent applications can provide a tool for preserving patent rights while temporarily reducing costs. This occurs because the application is not examined during the year in which it is pending and claims are not required. A regular U.S. application and related foreign applications must be filed within one year of the provisional form in order to receive its early filing date. However, an applicant only receives the benefit of the earlier filing date for material that is adequately described and enabled in the provisional application. As a result, the patent attorney may need your assistance when an application is filed as a provisional.

Foreign patent protection is subject to the laws of each individual country, although in a general sense the process works much the same as it does in the United States. In foreign countries, however, an inventor will lose any patent rights if he or she publicly discloses the invention prior to filing the patent application. In contrast, the United States has a one-year grace period.

Although an international patent does not exist, an international agreement known as the Patent Cooperation Treaty (PCT) provides a streamlined filing procedure for most industrialized nations. For U.S. applicants, a PCT application is generally filed one year after the corresponding U.S. application (either provisional or regular) has been submitted. The PCT application must later be filed in the national patent office of any country in which the applicant wishes to seek patent protection, generally within 30 months of the earliest claimed filing date.

The PCT provides two advantages. First, it delays the need to file costly foreign applications until the 30-month date, often after an applicant has the opportunity to further develop, evaluate and/or market the invention for licensing. Second, the international preliminary examination often allows an applicant to simplify the patent prosecution process by having a single examiner speak to the patentability of the claims, which can save significant costs in prosecuting foreign patent applications.

Another important international treaty called the Paris Convention permits a patent application filed in a second country (or a PCT application) to claim the benefit of the filing date of an application filed in a first country. However, pursuant to this treaty, these so-called “convention applications” must be filed in foreign countries (or as a PCT) within one year of the first filing date of the U.S. application.

Currently, the average U.S. utility patent application pends for about two to three years, though inventors in the biotech and computer fields should plan on a longer waiting period. Once a patent is issued, it is enforceable for 20 years beyond the initial filing of the application, assuming that PTO-mandated maintenance fees are paid.

Patent protection is often a requirement of a potential commercialization partner (licensee) because it can protect the commercial partner’s often sizable investment required to bring the technology to market. Due to their expense and the length of time required to obtain a patent, it is not possible for ASU to pursue patent applications for all its intellectual property. We carefully review the commercial potential for an invention before investing in the patent process. However, because the need to commence filing a patent usually precedes finding a licensee, we look for creative and cost-effective ways to seek early protections for as many promising inventions as possible—regardless of whether or not we will seek a patent.

Our team will work with the inventor(s) to consider relevant factors in making recommendations about filing patent applications. Based on recommendations from our licensing specialist, we will ultimately make the final decision as to whether to file a patent application or seek another form of protection.

Filing a regular U.S. patent application may cost between $10,000 and $20,000. Obtaining an issued patent may require an additional $10,000 to $15,000 for patent prosecution. Filing and obtaining issued patents in other countries may cost $20,000 or more per country. Once a patent is issued in the U.S or in foreign countries, certain maintenance fees are also required to keep the patent alive.

If you created the invention under a sponsored research or consulting agreement with a company, one of our licensing specialists will need to review that contract to determine ownership and other rights associated with the contract and to determine the appropriate next steps. If the technology is jointly owned with another academic institution, we will usually enter into an “inter-institutional” agreement that provides for one of the institutions to take the lead in protecting and licensing the invention, sharing of expenses associated with the patenting process and allocating any licensing revenues. If the technology is jointly owned with another company, the licensing specialist will work with the company to determine the appropriate patenting and licensing strategy.

Often the University accepts the risk of filing a patent application before a licensee has been identified. After University rights have been licensed to a licensee, the licensee generally pays the patenting expenses. At times we must decline further patent prosecution after a reasonable period (often a year or two) of attempting to identify a licensee (or if it is determined that we cannot obtain reasonable claims from the USPTO).

Copyright is a form of protection provided by U.S. law to the creators of “original works of authorship.” This includes literary, dramatic, musical, artistic and certain other intellectual works as well as computer software. Copyright protection is available to both published and unpublished works. The Copyright Act generally gives the owner of copyright the exclusive right to conduct and authorize various acts, including reproduction, public performance and creating derivative works. Copyright protection is automatically secured when a work is fixed into a tangible medium such as a book, software code, video, etc. In some instances, the University registers copyrights, but generally not until a commercial product is ready for manufacture.

A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation or any other form in which a work may be recast, transformed or adapted.  A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represents an original work of authorship, is considered a “derivative work.”  The owner of a copyright generally has the exclusive right to create derivative works.

Although copyrightable works do not require a copyright notice, we recommend that you use one. For works owned by the University, use the following template: Copyright © [Year of first publication] Arizona Board of Regents (e.g., Copyright © 2010 Arizona Board of Regents).

A trademark includes any word, name, symbol, device or combination thereof that commercially identifies and distinguishes one manufacturer or seller’s goods from those of another. In short, a trademark is a brand name.

A service mark is any word, name, symbol, device or combination thereof that commercially identifies and distinguishes one provider’s services from those of another. 

Trademark registration is a procedure by which the United States Patent and Trademark Office (USPTO) provides a determination of rights based upon legitimate use of the mark. However, it is not necessary to register a trademark or service mark to prevent others from infringing upon the trademark. Trademarks generally become protected as soon as an organization adopts them for use in commerce (even prior to registration). A federal trademark registration entitles the registrant(s) to use the trademark throughout the United States for the goods or services for which the trademark is registered.

In these cases, the ASU employee may not share in the “inventor share” of any university-received equity unless otherwise agreed to in writing prior to the licensing agreement.  “Substantial Interest” shall have the meaning ascribed to it in Arizona Revised Statutes § 38-502.

Any employee or student of the Arizona State University may disclose an invention to Skysong Innovations.

Skysong Innovations will not file patent applications in foreign countries unless there is a significant market or licensee in that country.

After you publish, present or otherwise publicly disclose your invention, you have one year from your first disclosure date to file a U.S. patent application (this is referred to as an “inventor grace period”). After one year has passed from the date that you first publicly disclosed your invention, you will lose all U.S. patent rights. It is therefore in your best interest to file a patent application before disclosing your invention or as soon as possible afterward.

It is important to note that most foreign countries have no grace period. In most countries, after publicly disclosing your invention you are immediately barred from obtaining foreign patent rights.

A Provisional Patent Application is a legal document, filed with the United States Patent & Trademark Office (USPTO), protecting your invention and establishing an early filing date (called a priority date).

Provisional Patent Applications expire one year after the date they are filed. They are not examined by the USPTO and will not be issued as actual patents. 

After a provisional patent application expires, a PCT application may be filed. This is a temporary patent application that preserves your right to file foreign patent applications in countries that participating in the Patent Cooperation Treaty, with a few exceptions (Taiwan being the most notable). 

After filing a PCT application, the application will be examined and a search report will be issued including a general opinion regarding the patentability of the invention. This report will inform the decision to file any national-phase patent applications. 

PCT Applications expire 18 months after the provisional patent application expires. PCT applications will not issue as patents.

A Non-Provisional Patent Application, or National Phase Application, will be examined by the USPTO. If granted, it will confer the right to exclude others from making, using or selling the invention in the United States or importing the invention into the US.

An IDS is a submission of background art or information that is known to anyone involved in the patent application, and that may be relevant to the patentability of your invention. It is due after a Non-Provisional Patent is filed.

A Continuation-in-Part Patent Application (CIP) adds new material to part of an existing patent application.

If the patent examiner determines that an application claims two or more independent inventions, a Restriction Requirement will be issued. In these cases, applicants must choose one invention to prosecute. 

Responses to Restriction Requirements are due two months after their mailing date. Four one-month extensions are available, but involve late fees.

After a Restriction Requirement has been issued and replied to, Skysong Innovations may file a separate application on another invention that the patent examiner has identified but that Skysong did not choose to prosecute in the original application (if such an invention exists).  This is referred to as a Divisional Patent Application.

Due 3 months after mail date, three 1 month extensions are available but there are increasing late fees assessed for every month after the third month. 

A Non-Final Office Action is an official communication from a patent examiner that explains why the examiner has allowed and/or rejected the patent claim(s).  

Responses to Non-Final Office Actions are due three months after their initial mailing date. 

A Final Office Action indicates the patent examiner did not find the response to the Non-Final Office Action persuasive, and is either maintaining their rejection(s) or has found new grounds for rejection.

Occasionally, after a final rejection, Skysong makes the business decision to continue attempts to obtain a patent.  These attempts take the form of either a Request for Continued Examination (RCE) or a Continuation Application.  

These are essentially appeals for a  “do-over” of the original examination. This is an expensive process, and in many cases can be minimized by replying in a timely fashion (approximately two months) following receipt of a Final Office Action.

A notice of allowance is an official communication that specifies which claims may be issued a U.S. Patent. 

Responses to Notices of Allowance and payment of all relevant fees are due three months after their initial mailing date. There are no extensions permitted for Notices of Allowance.