What is the patenting process?
Patent applications are generally drafted by a patent attorney or a patent agent (a non-attorney with a science education licensed to practice by the PTO). The patent attorney generally will ask you to review an application before it is filed and will also ask you questions about inventorship of the application claims. 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 evidences the inventor’s duty to assign the patent to the University. In about one year, depending on the technology, the patent attorney will receive written notice from the PTO as to whether the application and its claims have been accepted in the form as filed. More often than not, the PTO rejects the application because either certain formalities need to be cleared up, or the claims are not patentable over the “prior art” (anything that workers in the field have made or publicly disclosed in the past).
Patent applications are generally drafted by a patent attorney or a patent agent (a non-attorney with a science education licensed to practice by the PTO). OTT will engage a patent law firm to prosecute an application covering your invention in the U.S. Patent and Trademark Office as well as the associated foreign offices if foreign protection is available. Throughout the drafting process you should expect to have several telephone conversations with the attorney and several exchanges of the documents. The patent attorney generally will ask you to review the application before it is filed and will also ask you questions about inventorship of the application claims. 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 evidences the inventor’s duty to assign the patent to the hospital. In about one year, depending on the technology, the patent attorney will receive written notice from the PTO as to wh
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 i
Patent applications are generally drafted by a patent attorney or a patent agent (a non-attorney with a science education licensed to practice by the PTO). UM Tech Transfer will engage a patent law firm approved by the University’s Office of the General Counsel to prosecute an application covering your invention in the U.S. Patent and Trademark Office as well as the associated foreign offices if foreign protection is available. Throughout the drafting process you should expect to have several telephone conversations with the attorney and several exchanges of the documents. The patent attorney generally will ask you to review the application before it is filed and will also ask you questions about inventorship of the application claims. 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 evidences the inventor’s duty to assign the patent to the University. In about one year, depending on the technol
