Inventor assigns rights to LLU
Under all LLU and Affiliate employment contracts, inventors are required to assign the rights to any patents on inventions made using its resources to the institution. In exchange, LLU markets and licenses the patent on the inventor's behalf, and pays inventors, their departments and schools a share of the royalties earned from licensing the patented technology.
A provisional patent application may be filed first, up to a year before a regular US patent application. Some do this as a low cost way to protect an earlier filing date and gain an additional year of protection. This provides time to collect more data or test-market the invention before investing in the higher cost of a regular (i.e. non-provisional) application. Contact Research Affairs - Technology Transfer for details.
If a patent will help you and the institution achieve a positive business strategy for marketing your invention, Technology Transfer will work with a patent attorney to help you draft a patent application to file at the U.S. Patent and Trademark Office (USPTO).
After filing, an application is often referred to as "patent pending." This serves to warn potential infringers that if the patent is issued, they may be liable for damages, but does not confer legal protection and cannot be enforced. Pending patents are licensable -- LLU can share or license a patented invention any time after filing.
Please be aware that obtaining a patent is a long process; from the date a patent application is filed to the date a patent is issued can take two to six years or more.
A PCT application is a patent application issued under the Patent Cooperation Treaty, an international law treaty issued in 1970 that provides a unified procedure for filing patent applications to protect inventions in each of 117 countries, including the United States. For more information, contact Technology Transfer.
USPTO examines the patent application
Patent applications at the USPTO are routed to a patent examiner with the appropriate scientific background for review. The examiner reviews the application in light of patent law and "prior art" (previous work in the field) to determine whether the claims made in the patent are allowable. The examiner will issue an Office Action which rejects most or all of the claims in the first review. This is a standard procedure.
Patent attorney counterclaims
The patent attorney, working with Technology Transfer staff and the inventor, responds to the examiner's comments. Often several rounds of patent examiner review and attorney response are required.
USPTO publishes the patent application. The Patent application is open for public inspection.
Patent applications are generally published 18 months after the earliest priority date of the application. Prior to that publication the application is confidential to the patent office. After publication, depending upon local rules, certain parts of the application file may remain confidential, but it is common for all communications between an applicant (or his agent) and the patent office to be publicly available.
The publication of a patent application marks the date at which it is publicly available and therefore at which it forms full prior art for other patent applications.
Patent is issued
In the United States, the term for a patent application filed on or after June 8, 1995 is 20 years from the filing date of the earliest U.S. application to which priority is claimed (excluding provisional applications).
At this point, the intellectual property of the invention is protected by the patent, and LLU can pursue sharing or licensing the protected invention under either commercial licenses or open source/academic use.
Patent licensing agreements are effectively contracts in which the patent owner (the licensor: LLU) agrees to forgo their right to sue the licensee for infringement of the licensor's patent rights, usually in return for a royalty or other compensation.