What is a PATENT?
A patent is an exclusive right of an inventor/owner to exclude others from making, using, or selling the patented invention without permission for the life of thepatent. The life of a patent is 20 years from the date of formal application
To obtain patent protection, an invention must be new (or novel), useful, and nonobvious to someone skilled in the art. Patentable inventions include new processes, products, apparatus, compositions of matter, living organisms, and/or improvements to existing technology in those categories.
There are three types of patent: Utility (standard), design and plant.
1. Who is considered an inventor?
Under U.S. Patent Law, an inventor must contribute to the concept covered in at least one patent claim. So, for example, making contributions to a technical paper or testing the invention may not be sufficient to be considered as contribution to the claims.
2. What is the Declaration form?
The Declaration form is a declaration of inventorship. It attests that you,and if applicable, your co-inventors, are the sole and true inventors of what is claimed in the patent application. In some cases the Declaration may be combined with a Power of Attorney form. The Power of Attorney gives the university's outside counsel the ability to prosecute the patent on behalf of USC.
3. What is the Assignment Form?
The Assignment form is needed to implement the university Assignment obligations and so that USC can fulfill sponsor contractual obligations. Although you are named as inventorof the technology, University policy states that ownership of the patent must be assigned to USC if the related invention was derived with more than incidential use of university funds or facilities, or developed under sponsor research. Just as the university poilcy obligates you to assign rights to USC, the university is obligated to share net licensing revenue with you, the inventor.
4. What is a provisional application?
A provisional application is an option to file a low-cost application, without claims, and which will not be reviewed by the patent office, but preserves the invention date or “priority date.” It establishes an early effective filing date for a non-provisional or “full” patent application and also allows the term "Patent Pending" to be applied. A provisional application has a pendency lasting 12 months from the date the provisional application is filed. This 12-month pending period cannot be extended.
Publications and Patents
Researchers can publish while USC is pursuing a patent.
The primary teaching and research missions of the University always take precedence over patent development. The freedom to publish is essential to the University's educational mission to disseminate publicly the outcomes of research conducted at USC. University staff and faculty work carefully together to preserve this publication right in patenting as well as administration of contracts and grants.
Publication may impact potential patent's rights.
The USC Stevens Instuitute often finds that researchers may publish inventions rather than disclose them to our office, or to publish after they disclose inventions to the USC Stevens Institute but before a patenting decision is reached by USC. When researchers choose to publish after the USC Stevens Institute is informed of an invention, the USC Stevens Institute staff try to make sure that the researchers are aware of the effects of publication on potential patent rights.
However, USC Stevens Institute never requests researchers not publish in order to obtain a patent application filing date before the publication date of the invention. (Also, there is no need to "race" other inventors to the USPTO since patenting in the U.S. is based on "first to invent" rather than "first to file"). U.S. patent rights on an invention disclosed in a publication remain available for one year after a publication.
In virtually all other countries rights are extinguished if a patent is not filed before publication of the invention. (In some countries, a patent application must be filed in that specific country before publication anywhere in order to preserve rights there). The word "publication" as used here in the patenting context is wider in scope than what a researcher may want to include in a C.V. as a "publication". For patent purposes, "publication" may be an abstract or poster session, at an open meeting, or posting on the Internet, as well as by a more traditional article, paper or book.
The costs to prepare and file a non-provisional utility patent application are substantial and are reported in the AIPLA Report of the Economic Survey 2007.
For example, the preparation and filing of an original application of minimal complexity (10 page specification, 10 claims) on average by a firm is $8,548.00. Similar costs exist for relatively complex biotechnology/chemical cases ($15,398.00), relatively complex mechanical cases ($11,482.00) and relatively complex electrical/computer cases ($13,684).
The average cost for filing an Amendment in a case of minimal complexity is $2,244.00, in a relatively complex biotechnology/chemical case is ($4,448.00), in a relatively complex electrical/computer case is ($3,910.00) and in a relatively complex mechanical case is ($3,506.00). (Pages I-78, I-79 and I-80 of the Survey)
The government fees related to such filings are the same (unless the Applicant is a small entity) -- $1,030.00. The cost for filing a Request for Continued Examination (RCE) is $810.00 plus a service charge, on average, by a law firm is $350.00. The cost for filing of a continuation application is $1,030.00 plus a service charge.
According to Alan J. Kasper, First vice president of the American Intellectual Property Law Association