Intellectual property protection

The provisional patent application preserves a filing (priority) date for the invention and preserves patentability if there is a public disclosure, or if someone else has a similar invention after the filing date. Filing a provisional application allows the university to obtain an initial filing position quickly — and often at a lower initial cost than a non-provisional application. Most provisional applications cost between $2,000 and $10,000 to prepare and file.

A provisional application is a legal document, but it is not evaluated by the U.S. Patent & Trademark Office and does not result in an issued patent unless the applicant files a regular non-provisional patent application within one year. A provisional application gives the KU Center for Technology Commercialization a year from the date of initial filing to market the invention and evaluate the commercial interest in the technology. During the provisional year, KUCTC conducts a more thorough due diligence survey to assess the patentability, marketability, and commercialization potential of the invention.

After KUCTC files a provisional patent application, it is expected that the inventors will continue to advance the invention in preparation for a non-provisional patent application filing. Advancement can come in the form of:

• creating a working prototype or process model
• commitment to follow-on research and development
• creating improvements
• collecting invention performance data
• and more

It is critical that within one year of filing the provisional patent application the commercial value of the invention be demonstrated to support a non-provisional patent application filing. If there is no further technical development, no additional funding, or no potential licensees or commercial interest, it is often difficult to justify further investment in patenting the invention.

A few months prior to the 12-month deadline, your licensing manager will coordinate a review of the invention, taking into account any updates from the inventor. This review may include discussions and feedback from external subject-matter experts.

KU does not have the budgetary resources to convert all provisional applications to non-provisional applications. The university is most likely to file non-provisional applications on inventions that meet the following criteria:

1. High patentability potential
2. High commercialization potential
3. Support with ongoing funding
4. Identified potential or actual licensees

If the consensus is to move forward with a fully drafted non-provisional application, the licensing associate will also lay out expectations about what must be accomplished in the next 18 months before the final filing or prosecution decision must be made. This timeline is especially key if an international patent application, or patent cooperation treaty (PCT) application is filed off the provisional application.   

If KUCTC does not recommend that the patent application be maintained, a variety of third-party options can be considered with the inventor. Alternatively, KUCTC can license the technology back to the inventor (outright assignment is prohibited where federal funds were used in the research that resulted in the invention).

U.S. utility patent vs. international patent

A U.S. utility patent application is a non-provisional patent application filed in the United States that affords protection only in the U.S. This is the most common non-provisional application filed by KU.

Typically, if an invention meets the criteria to warrant a non-provisional patent application filing, KU will file a U.S. patent application. If there is an actual licensee, the licensee will pay for patent costs and determine whether to pay for a U.S. patent only, or to seek international patent protection.

An international patent application, or patent cooperation treaty (PCT) application, preserves the right for an applicant to file a patent in 153 countries within 30 months of the earliest priority date (usually the provisional filing date). If the PCT application is based on a provisional patent application, this provides 18 months to determine whether to file applications in elected countries.

Due to its expense, PCT applications will not be filed for most inventions, unless the invention has an actual licensee to pay the cost. In rare instances, where an invention has a high value and near-term global commercial licensing opportunities, a PCT application may be filed. However, it is expected that a license will be in place prior to the deadline for national stage entry in a particular country or region (30 months from earliest priority).

Patent prosecution can be a complex process depending on multiple factors. 

U.S. utility patents

Once a provisional patent application is filed, KUCTC has one year to decide whether to continue patent prosecution on the invention by filing a U.S. utility patent application. This initial one-year term is referred to as the provisional year. If KUCTC decides not to file a U.S. utility patent application, it may offer the technology back to the inventors. If KUCTC decides to proceed with patent prosecution, a U.S. utility patent application is filed, which starts the national phase. A patent examiner then reviews the application for patentability, which starts prosecution.

Patent prosecution or examination can take two to five years. If the claimed invention is patentable as submitted, the patent examiner will allow the claimed invention to issue into a patent after fees are paid. Most of the time, the application is not patentable as originally submitted, and arguments and/or amended claims must be presented that can lead to a patent. If the patent examiner does not accept the arguments and/or amended claims, the patent examiner will issue a final rejection. At this point, KUCTC may elect to appeal the patent examiner’s position to an appeal board or to the U.S. court system. If the appeal is successful, claim allowance is achieved, which can lead to a patent. If the appeal is unsuccessful, claim allowance is not achieved and the patent application will likely go abandoned, resulting in no patent.

International patents

The typical international (non-provisional) patent process carries with it most of the same substantive hurdles presented by the U.S. national phase patent process. Similar to the U.S. national phase, and if KUCTC decides to do so, a PCT application must be filed within one year of the provisional patent application filing date or priority date. The filing of the PCT application starts the international phase. About 16 months after the priority date, an international search report with a written opinion on patentability is privately released to the patent applicant. Within 30 months of the priority date, KUCTC must elect to enter the national stage phase in each country or region where a patent is to be pursued. Once the national stage phase has started in each respective country or region, patent prosecution follows a similar process as in the U.S.

Note: A U.S. utility patent can be pursued by either entering the national phase, or by entering the international phase and subsequent U.S. national stage phase. The national phase and international phase can also be simultaneously entered by initiating U.S. utility patent prosecution via the national phase, while preserving foreign filing rights by filing a PCT application. Both the U.S. utility national phase application and PCT application publish approximately 18 months after the priority date.

Terms and fees

The patent term for a U.S. utility application is 20 years from the non-provisional filing date. For a U.S. utility patent to remain in force for its full term, three maintenance fees must be paid timely at approximately 3.5, 7.5, and 11.5 years after patent issuance. If maintenance fees are not paid, the patent will go abandoned. Other countries and regions have specific maintenance fee requirements. In general, the commercial value of an issued patent must be demonstrated for KUCTC to pay patent maintenance fees when they come due.

Patentable subject matter includes processes, machines, compositions of matter, articles of manufacture, some computer programs, and methods (including methods of making compositions, methods of making articles, and even methods of performing business). Laws of nature, physical phenomena, and abstract ideas are not patentable.

The KU Center for Technology Commercialization has an intellectual property management team that will assist with patent drafting and other issues related to patent prosecution. Generally, KUCTC contracts with outside patent counsel to draft all patent applications. Outside counsel will work with KU's IP management staff and the inventors to prepare patent applications and responses to worldwide patent offices. The IP management team manages the outside patent counsel relationship and will hire counsel that fits the technical space of the invention and inventors.

United States and foreign patent laws determine patentability.

In the U.S., an invention is patentable if it is:

• Novel
• Useful
• Nonobvious

An idea or discovery cannot be patented if it was previously known, sold, or used by others or by the inventors themselves. The idea or discovery cannot be obvious to a person with ordinary skill in the area of technology related to the invention. Abstract ideas, laws of nature, or physical phenomena cannot be patented. In addition, a patent application must describe the invention in explicit and sufficient detail to allow someone to reproduce the invention without undue experimentation.

Final patentability decisions are made by the U.S. Patent & Trademark Office and foreign patent offices as applicable. If you are unsure whether you have a potentially patentable invention, contact KUCTC.

Patenting an invention has many benefits. A patent secures KU’s ability to market the invention to corporate or non-profit entities that may further invest in the development, manufacture, and distribution of the invention. A patent may encourage commercialization of an invention by providing the licensee with an exclusive period (e.g., 20 years from the date of filing) of ownership rights in the invention.

Additionally, a patent can benefit researchers by:

1. Demonstrating that their work is innovative.
2. Returning revenue to researchers and their departments, schools, and colleges.
3. Providing an asset around which researchers may build a company.
4. Providing the satisfaction of contributing new information to society, which may in turn lead to new or improved goods and services.

The decision to file a patent application is made by KUCTC, in consultation with the inventor(s). The determination is based upon the scope of the invention, its likely patentability, and its commercial potential. Only inventions that meet the criteria for patentability and marketability are considered for patent protection.

KUCTC does not pursue patent protection for all inventions disclosed to the office. Even if an invention is patentable, obtaining a patent may not be the most effective intellectual property strategy for a particular invention. For example, a patent may not be pursued if other forms of intellectual property (e.g., copyright) are more suitable for protection, if it would be easy for someone to design around the patent, if the patent might be unenforceable, or if further development of the invention would lead to stronger patent protection.

The patenting process at KU begins when you report your invention or discovery.

To report your invention, fill out the KU invention disclosure form.

Once we receive your disclosure, a licensing manager will be assigned to your case and will meet with you to learn more about your invention. Your licensing manager will evaluate both the commercial potential and likely patentability of your invention. If it is determined that a patent should be part of the intellectual property strategy for your invention, KU will work with you to file a patent application. A patent application may be as simple as filing a copy of your recent manuscript, or it may involve meeting with the IP management team and outside counsel to discuss your invention in preparation for drafting a full patent application.

Inventor involvement is very important to the entire patenting and licensing process. Inventors typically provide technical evaluation of previous patents and publications in their field, supply information to the patent attorney to assist with writing the patent, review draft applications and responses to patent office actions, and discuss technical aspects with interested companies.

We strive to keep inventors well informed during the process and will always consider your input when making decisions about protecting and licensing your invention. Final responsibility for all protection and licensing decisions rests with KUCTC.

Once a non-provisional patent application is filed, it can take from two to five years for a patent to be issued or denied by the U.S. Patent & Trademark Office.

Once a patent is issued, it is enforceable for 20 years from the initial filing of the application that resulted in the patent, assuming that USPTO-mandated maintenance fees are paid.

A provisional patent application is a low-cost, informal patent application that is not examined by the USPTO. It is a placeholder that establishes an earlier filing date for a later filed non-provisional (i.e., full, formal) patent application. Such a non-provisional application must be filed within one year of the filing date of the provisional application. Your manuscript, poster, presentation slides, and other materials can form the basis for a provisional application.

A provisional application is often filed before a publication, presentation, or discussions with a potential commercial partner to protect the materials prior to disclosure of the invention. Provisional applications allow researchers more time to develop an invention before a full patent application is filed, and allow KUCTC additional time to evaluate the patentability of and market for the invention. If a corresponding non-provisional application is not filed within one year, the provisional application simply becomes abandoned. Provisional applications are not published by the USPTO unless a corresponding non-provisional application is filed.

The non-provisional patent application is the formal filing of the invention with the USPTO that undergoes examination.

Details are captured in the following format:

• Abstract
• Background
• Description
• Figures
• Claims
• Summary

The claims, which define the boundaries of patent protection, are the application's most important component. Attorneys will break the invention into one or more claims. Breaking the invention into individual elements allows them to protect part of an invention if the technology as a whole cannot be patented.

Successful inventions are those that:

1. Meet the legal definition of an invention (new, useful and non-obvious).
2. Include sufficient details, or are "successfully enabled," such that anyone in the field can recreate the invention.
3. Contain content that is not far removed from that in the provisional application. Those that vary greatly will be given a new, later priority date.

Public disclosure of an invention is any public written or oral communication that describes the invention in detail. Publications that are “enabling” (i.e., would allow someone with ordinary skill in the art to arrive at the same invention without undue experimentation) can disqualify you from receiving a patent. The term “publication” is broadly interpreted to include journal articles, posters, slides, talks, conference proceedings, online abstracts, theses and dissertations that are available to the public, and discussions with corporate researchers and company personnel.

Research group meetings that are not open to the public, non-public communications with a grant agency, and confidential discussions (including those with KUCTC) are not public disclosures.

In the U.S., there is a one-year grace period for filing a patent application. That is, a patent application can be filed up to one year after an enabling public disclosure; after that, patent protection is unavailable. In most foreign countries, however, there is no grace period; once an invention is publicly disclosed, patent protection is lost. Therefore, before publicly disclosing any invention or discovery, researchers should first discuss intellectual property issues with KUCTC.

Depending on the complexity of the invention and the scope of previously prepared material, drafting and filing a regular U.S. non-provisional patent application may cost between $8,000 and $20,000. International patents can cost several times this amount. Additional costs are incurred as the patent office reviews the application (the patent prosecution process) and even after the patent issues so that a single U.S. patent, over its lifetime, may cost on the order of $30,000 and often more.  

When a commercial partner is identified early (e.g., before a patent application is filed), that commercial partner often pays the patenting costs. However, even if a commercial partner has not been identified, KUCTC may incur the patenting costs if there is a reasonable likelihood that those costs can be recovered from a commercial partner later.

Generally, the invention will be jointly owned between KU and the other institution or company. Each inventor will assign his or her rights to their employer.

KUCTC will work with the other institution to decide on management of the invention. Usually, if the other institution is a university or research institution, we will make an inter-institutional agreement that provides for one of the institutions to take the lead on protecting and licensing the invention, sharing expenses associated with the patenting process, and allocating any licensing revenues.

If the co-inventor is employed by a company, then the company and KU jointly own the rights in the invention. In this case, if the company wants exclusive use of the joint invention, it will have to license the university's ownership interest in the invention. However, in the absence of such an agreement, under U.S. law, each co-owner is free to license its rights in the invention independently of the other co-owner(s), without notifying them, seeking their permission, or sharing income with them.

Often, KU accepts the risk of filing a patent application before a licensee has been identified — provided there is a reasonable likelihood that those costs can be recovered from a commercial partner later.  KUCTC aims to support patent expenses when there is an engaged inventor team, an ongoing strong intellectual property position, and evidence of significant market traction such that a license is likely within four years of filing a provisional patent application.

Although an international patent does not exist, an international agreement known as the patent cooperation treaty (PCT) provides a streamlined filing procedure for most industrialized nations. For U.S. applicants, a PCT application is generally filed one year after the corresponding U.S. application (either provisional or regular) has been submitted. The PCT application must later be filed in the national patent office of any country in which the applicant wishes to seek patent protection, generally within 30 months of the earliest claimed filing date.

The PCT provides two advantages:

1. It delays the need to file costly foreign applications until the 30-month date, often after an applicant has the opportunity to further develop, evaluate, and/or market the invention for licensing.
2. The international preliminary examination often allows an applicant to simplify the patent prosecution process by having a single examiner speak to the patentability of the claims, which can save significant costs in prosecuting foreign patent applications

An important international treaty called the Paris Convention permits a patent application filed in a second country (or as a PCT application) to claim the benefit of the filing date of an application filed in a first country. However, pursuant to this treaty, these so-called convention applications must be filed in foreign countries (or as a PCT) within one year of the first filing date of the U.S. application.

Foreign patent protection is subject to the laws of each individual country, although in a general sense the process works much the same as it does in the United States. In foreign countries, however, an inventor will lose any patent rights if he or she publicly discloses the invention prior to filing the patent application. In contrast, the U.S. has a one-year grace period.