Intellectual Property

What is a patent? How do I get a patent?  What protection does a patent give me? 

A patent is a legal monopoly granted by the government to the inventors of a novel, unique, and useful process, compound, or manufacture.  A patent defines the invention and teaches others how to duplicate it.  The person or entity owning rights in the patent can prevent others from practicing the claims of the patent.

What is a provisional patent? 

A provisional application for patent is a type of patent application filed with the US Patent and Trademark Office that does not mature into an issued patent unless a non-provisional patent application (usually a utility patent application) is filed by the applicant within one year.  Provisional applications require only a specification (complete written description) of the invention for filing, and can thus provide a relatively quick and inexpensive means of establishing an early filing date with the USPTO.  Provisional patent applications lapse one year after the filing date and the benefit of the early filing date is lost if the application is not converted into a non-provisional (e.g. – utility) application.  

How much does a patent cost?  Who pays for the patent on my invention? 

Provisional patent applications (PPAs) are inexpensive to file – the filing fee is just over $100.  However, as described above, PPAs still require a complete description of the invention.  If you have provided a complete description, our office can assist in filing the provisional application and the cost is limited to the filing fee.   If we elect to have an attorney draft the PPA, the cost will increase substantially, depending on how much time it takes the attorney.  In any event, PPAs do not mature into issued patents and so the costs are generally limited to the filing fees (and attorneys fees in some cases).

When we refer to the cost of a patent, we are usually referring to the cost of a non-provisional patent application (typically a utility patent application).  The cost of a US utility patent, from application through prosecution to issuance, can be $30,000 or more, depending on the complexity and scope of the application and the actions taken by, and in response to, the patent office.  The cost for worldwide patent coverage can be many times greater.  These costs are paid by the University under funds managed by the Office of Technology Transfer.

What do I need to do to get a patent for my new invention? 

The patent process begins with your disclosure of the invention to the Office of Technology Transfer.  See the discussion below under the question “How do I get started if I want to commercialize my new invention?”

How long does it take to get a patent?

The time of pendency for a patent application in the US patent office varies considerably and is dependent on a number of variables, including the complexity of the invention, what is claimed, the prior art in the field, and other factors.  The typical term of pendency in the USPTO is currently 3 – 4 years.

My graduate student helped with the research that led to my invention.  Is she an inventor, too? 

It depends.  Did she contribute to the conception of the idea and reduction to practice of the invention?  If so, she is an inventor.  However, if she acted as an assistant, followed your instructions, and performed the necessary labor under your tutelage, then she probably isn’t an inventor.  Inventorship is a question of law and is best determined by an experienced patent attorney when there is a question.

Our Intellectual Property Process

After an invention has been disclosed to us, which means that it has entered the 2-Stroke stage of our Commercialization Engine process, we will conduct an exhaustive prior art search to review all the patents, publications and posters in the areas the invention touches. Should the decision be made to move forward with commercializing this invention, it will enter the 4-Cylinder phase of the Commercialization Engine. Here the patent navigation process will begin by filing a provisional patent with claims. One year later, the application will traditionally be converted into a PCT application. Eighteen months after this filing, a nationalization decision must be made. Providing there is no licensee on the hook, the University will move the U.S. application forward, and nationalize in the U.S. only. However, if there is a licensee who wants the technology, that licensee can determine which countries in which to nationalize, and pay all expenses. 

Why Not Every Invention Disclosed Gets Patented

Each of the three stages of the Commercialization Engine has specific deliverables and objectives that must be achieved for a technology to move to the next one. It’s essential that the IDEA Center allocate resources only to technologies that have the greatest chance of success. Inventions which don’t pass through the Commercialization Engine will be returned to the faculty, who can then decide if they wish to proceed securing intellectual property protection on their own. 

Intellectual Property Policy

Patents, copyrights and other forms of intellectual property deriving from University Research are managed under the University's Intellectual Property policy (PDF, 106K).  This and other University policies can be found at policy.nd.edu.