Overview
Patents are a legal method for protecting inventions. Patent preparation and prosecution is the process of writing, filing, and negotiating a patent application with the U.S. Patent and Trademark Office and, when appropriate, foreign patent offices.
The Bayh-Dole Act allows universities to own the rights to inventions resulting from federally funded research. The act requires universities to protect (when appropriate) and commercialize inventions, submit progress reports to the funding agency and share any resulting revenues with the inventors. Most universities elect to treat all research funding consistent with Bayh-Dole.
Applications
-
Provisional application — A provisional patent application (PPA) establishes a date of invention and is often the starting point along the path to obtaining full patent protection. After a PPA is filed, the invention is patent pending for one year, allowing public disclosure of the material included in the application, time to continue research and development, and time to evaluate the commercial opportunity.
To maintain protection, a PPA must be converted to a nonprovisional or PCT application within one year of filing. See Tips from TAO, Provisional Patent Application, for more information. -
Patent Cooperation Treaty — The Patent Cooperation Treaty (PCT) application process preserves the right to file patent applications internationally within 30 months from the earliest filing date.
-
Nonprovisional application — Issued patents are only valid in the country in which they are filed. For example, U.S. patents are only valid in the United States. There are several types of nonprovisional patent applications recognized by most countries.
Patent types
-
Utility — A utility patent protects processes, methods, physical inventions or compositions of matter. A utility patent application can be filed from a PPA within 12 months or from a PCT application within 30 months of the earliest filing date. A utility patent in the U.S. is valid for 20 years.
-
Design — A design patent protects the ornamental appearance and aesthetics of an object, article of manufacture or machine. A design patent in the U.S. is valid for 15 years.
-
Plant — A plant patent protects newly discovered or developed asexually reproduced plant species and/or varieties. A plant patent in the U.S. is valid for 20 years.
Other requirements
To meet the requirements of U.S. patent law and/or other countries' patent laws as well as obligations under MU’s Collected Rules and Regulations, inventors will be required to complete documentation, in addition to the patent application. Examples:
- A patent assignment transfers legal title of the patent application and related patents from the inventors to the university.
- A patent declaration documents that each inventor on the patent application authorizes the filing and is an original inventor of a claimed invention in the application.
Expenses
- A PPA costs $1,000 - $15,000.
- A nonprovisional/PCT application costs $2,500 - $20,000.
- Additional prosecution costs vary depending on the number of office actions. Each response costs $1,000 - $5,000.