The Catholic University of America

Resources - FAQ's

What are the advantages of obtaining a patent?
What is involved with a patent application?
What steps can be taken to protect an idea prior to patenting?
Who has the authority to issue patents?
What is the patenting process?
What types of subject matter may be patented?
Who is an inventor?
What is the function of patents?

 

What are the advantages of obtaining a patent? 

A patent gives the patent owner the exclusive right to keep others from making, using, or selling the invention for twenty years. Once it expires, however, the patent owner cannot renew it. At that time, anyone has the right to make, use, or sell the invention.

Wile the patent is active, the owner can determine who can make, use, or sell the invention. The owner may sell that patent outright or may license the invention to one or more licensees, usually in exchange for a percentage of the profits, or royalties. back 

What is involved with a patent application? 

A patent application is prepared by a patent attorney who works closely with the inventor. The application consists of a "specification" and one or more "claims." The specification discloses the invention in such a way that a person with ordinary skill in the art may make and use the invention. The claim specifically defines what the inventor considers to be the invention, which determines patentability as well as infringement.

A provisional patent application may be filed to protect your invention for one year. This is inexpensive and allows you and the university time to determine the commercial applicability of the invention before committing financial resources to its protection.

The filing of a patent application is secret. However, once a patent is issued, anyone can obtain a copy of the patent from the U.S. Patent and Trademark Office. Sometimes a PCT application is filed, which is an international application processed according to the Patent Cooperation Treaty.

Obtaining a patent can be an expensive process. There are fees associated with the application, searching, attorney fees, and sometimes litigation costs. It typically takes between 2-3 years from the filing of a patent application before the patent is issued. back 

What steps can be taken to protect an idea prior to patenting? 

Do not publish (put into writing for others to read or make a speech or presentation) the invention until you are ready to disclose it to the university. Once "published," an invention only has twelve months before an application must be filed. You should maintain a scientific journal in you lab or office in which you indicate dated entries with the information about what exactly was discovered. This journal should be kept in a secure location. It should be marked "Confidential, Trade Secret" and its contents should not be disclosed to others unless they have a need to know. The university considers ideas and inventions that arise from the use of university resources to be its trade secrets, which should be disclosed and assigned to the university pursuant to the Patent Policy. back 

Who has the authority to issue patents? 

The Constitution of the United States established the right of patenting and conferred power to issue patents to Congress to "Promote the progress of science and useful arts, by securing for limited times to authors and inventors and exclusive rights to their respective writings and discoveries" (U.S. Constitution, Article I, Section 8). The laws passed Congress relating to patents are codified at U.S. Code Title 35. The Department of Commerce's Patent and Trademark Office (PTO) is the federal agency designated to evaluate patent applications. back 

What is the patenting process? 

After the university decides to file a patent application on behalf of an inventor (or the inventor, if the university waives its right to the assignment), the patent application is prepared by the patent attorney. The application lists the specification, which contains information necessary to perform and practice the invention. It also lists claims, ordinarily from the broadest to the most narrow. In determining the inventorship, the claims are considered. After filing, the patent examination process begins. The application is first checked for formal matters such as oath/declaration, specification, claims, and fees. It is then assigned to a patent examiner, coming from one of seventeen examining groups, each handling a specific block of "art" (i.e., technology). The examiner searches the relevant domestic and foreign patents and literature. He finds facts and forms written (and factually supported) legal conclusions about the patentability of the claimed invention. The report must include conclusions regarding the statutory requirements, i.e., novel, usefulness, and nonobvious, enabled, etc.

If the examiner notes deficiencies in the application, the applicant may respond to the findings within a specified time and she may amend the specifications and claims so long as no mew matter (which changes the essence of the invention) is introduced. If there are irresolvable differences regarding substance of the application, the applicant may appeal to the Board of Patent Appeals, and later to the courts if necessary. back 

What types of subject matter may be patented?

1. Utility Patents
There are four classes of inventions that may be patented, as indicated in 35 U.S.C. sec. 101:
Whoever 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 therefore… 

A. Process
A series of steps or acts directed to the obtaining of a desired result.
Examples: a chemical process; the method of making a product; the method of using a product.

B. Machine or Apparatus
"Machine" includes a combination of moving, mechanical parts adapted to receive motion and applied in the production of a mechanical result. The term also includes static devices.
Examples: a mechanical, electrical, or electromechanical device for producing predetermined efforts.

C. Manufacture
Individual articles which do not operate of themselves. The various elements of a machine, considered separately, would be included.
Examples: chair, ring, table.

D. Composition of Matter
A product formed by intermixing two or more ingredients and having properties different from those of the individual ingredients.

Examples: chemical compounds and mixtures.

Patents, therefore, consist of new acts and new things. Stated exceptions to subject matter that may not be patented include abstract ideas, physical phenomena, methods of doing business, mental steps, printed matter, algorithms, and laws of nature. 

2. Biological Inventions
These inventions may be categorized easily according to the classification; for example, a typical vaccine (containing an antigenic material and a carrier) fits within "composition of matter." The use of a vaccine for its known and intended purpose is a "process." 

3. Computer-Related Inventions
Some software is patentable, but it must meet the statutory definition. Processes involving significant post solution activity would be considered patentable. 

4. Design Patents In design applications, the focus is on the manner in which the design should be depicted in the required drawings. The application must contain a preamble, including specified information about the design. The design consists of visual characteristics or aspects displayed by the object. 

5. Plant Patents Plant applications are subject to the same examination process as other utility patent applications. The description of the plant must be reasonably complete. back 

Who is an inventor? 

An inventor is one who is not directed or controlled, but one who actively conceives of the invention, i.e. who comes up with not only the idea, but also the manner in which is to be reduced to practice. There may be more than on inventor and co-inventors do not even have to work together in the same location; however, they must have achieved the idea through collaborative efforts.

Each co-inventor must work on the same subject matter and make some contribution to the idea of the invention. Each must have contributed to the final result. If an inventor comes from a number of steps taken together, each inventor must perform at least one of the steps. The amount of experimental work of each may be different, as may the number of suggestions of each, as long as each co-inventor contributes at least some original aspect to the invention's final solution. Supervisor-employee relationships are not necessarily determinative in defining co-inventorship; nor are faculty advisor-student researcher.

Naming someone as a co-inventor out of courtesy is not appropriate. In fact, the PTO considers it an act of fraud to knowingly include as co-inventor a party who has not made a significant contribution fraudulent. Procedures are available for removing or adding co-inventors in order to correct an inadvertent error in inventorship. back 

What is the function of patents? 

A patent allows the owner to enforce patent rights through an infringement action seeking monetary damages or an injunction. Affixing the term "patent pending" serves as an alert to the public about existing patent rights. Patents also serve as a source of information, since patent documents are classified by their technology and are searchable through such websites as the PTO and LexPat. Patents are focal points of licensing agreements, R&D agreements, start-up companies, and other sources of funding.

After filing a patent, the inventor should be vigilant about comparing ongoing research work with it so that subsequent improvements can be filed, otherwise valuable additional coverage might be lost. back