Patents provide their assignee the right to prevent others from making, using, or selling the patented invention, they are one of the most common form of protection for inventions, and can cover compositions of matter, methods of use, processes, machines and even new methods of use of known compositions.
An issued patent provides the inventors with a monopoly on making, practicing and selling the invention for the patent term (usually 20 years from the application date). Issued patents are assets that secure UBC and their inventors’ rights and interests in the claimed invention and provide a basis through which our spin-off companies and other licensees can raise investment to further develop products and services and bring these to the market.
Patents are expensive to file, prosecute, and maintain after issuance. The fundamental question when deciding whether to file a patent application is not whether a patent can be obtained, but rather what the scope and commercial/strategic value of the patent will be. In order to establish this, the UILO will not ordinarily commence filing patent applications until the full assessment of a technology is complete. Only technologies that meet the following criteria will be considered for patenting:
- a reasonable expectation of recouping a multiple of the patenting costs; or,
- have a strategic importance to UBC, through the promotion of societal or academic benefit.
Inventions can be patented, but mere ideas cannot. Inventions require the enablement of an idea. In addition to this, in order for an invention to obtain patent protection it must meet the following general criteria:
The invention cannot have been publicly disclosed, prior to the filing, or priority date, by the inventor or any other party. Any form of public disclosure, including talks, web postings, conference posters, or academic publications will result in the loss of patent rights in most of the world. However, there are exceptions in a few countries that offer a one-year grace-period after a public disclosure. These countries include the US, Australia and Canada.
The UILO will undertake a rigorous search of the patent and journal literature prior to patent filing, in order to ensure that the invention is novel and to determine the scope of likely protection an issued patent will ultimately afford.
This is a complex and evolving area of patent law but, fundamentally, an invention is patentable only if its conception is not considered to be obvious to a person skilled in the field of research. Obviousness objections may arise if a patent examiner can combine two or more known components or bodies of knowledge in a manner that "suggests" the new invention, even if the suggestion does not specifically enable the invention to be made or used. This requirement varies by country and has recently become substantially more difficult to meet in the US Patent and Trademark Office.
This requirement is the lowest bar to patenting and is generally easily met. This criterion is used to prevent the patenting of inoperable devices, such as perpetual motion machines.
If the UILO decides to file a patent application on a disclosed invention, it will determine the appropriate patenting strategy and the types of filing depending upon the nature of the invention and its commercial potential. In most cases, patenting will begin with the filing of a provisional patent.
The UILO works with a number of patent agents who have expertise in various disciplines, and a UILO technology transfer manager acts as the contact with the patent agent. Upon the UILO's decision to file a patent application, the cost of patent filing is funded by UBC through the UILO.
Inventors are expected to take an active role in providing the information and expertise for the technical aspects of the patent filing, and are named on the patent as the inventor(s).
Filing a provisional patent application with the US Patent and Trademark Office (USPTO) awards UBC a filing or priority date for the invention described in the application. In other words, in almost all countries, identical subject matter submitted by another inventor in a different patent application after our priority date will generally not be granted.
A provisional patent application does not grant any of the rights of an issued patent, but it does establish a priority date upon which future PCT and national applications can rely. This allows inventors to publish or otherwise publically disclose their invention without losing patent rights.
Provisional patents are generally much cheaper than full patent applications and afford greater flexibility with respect to their format. This allows:
- The UILO to establish a priority date for a discovery that an inventor is about to publicly disclose, without committing to a costlier full patent application.
- A 12-month deferral of costs of patenting expenses (non-provisional filings can cost tens of thousands of dollars to draft and file). During this time the UILO will seek a licensee for the technology to cover patenting costs.
- The 12-month period also allows researchers to continue their research to provide further characterization of their invention for a potential conversion to a full application. The generation of compelling data during this period can also help the UILO to decide whether to invest in patenting a technology in the absence of commercial partners.
A provisional patent expires after 12 months, meaning that a decision must be reached before this time as to whether to convert the application into a full patent application or lose the priority date.
A PCT is a worldwide application administered by the World Intellectual Property Office that covers all of the approximately 140 countries that are part of the Patent Cooperation Treaty. It is a more streamlined and economical way of moving a patent application forward with broad international protection, and provides a period of 18 months (up to 30 months from the priority date established by a provisional patent application) before reaching the National Phase - at which time the decision is made as to the countries in which to seek patent protection.
Upon filing a PCT application, the International Search Authority (ISA) undertakes a search of the patent and journal literature. The ISA generates an International Search Report (ISR) and a written opinion on the patentability of the claims in the patent application. An ISR includes a list of citations which may impact the patentability of the claims. These citations are used by the member countries in the process of prosecuting the patent at the country-specific level during the National Phase.
Ultimately, patents must issue within each of the countries for which the inventor seeks patent protection. Once a country-specific filing is made, the prosecution and eventual issuance of a patent takes a number of years. During this period the UILO will respond to actions taken by the patenting office and will try to secure the broadest range of claims it can. Researchers may be involved in providing supporting information during this process.
Filing patents in multiple countries is expensive, with fees being due throughout the term of the patent. The choice of countries in which to file patent applications is dependent on the potential market of a technology and/or the wishes of a commercialization partner.
Due to the high expense of national phase entry, the UILO rarely supports progressing from a PCT to National Phase filings without a commercialization partner to cover patenting costs or an exceptionally strong commercial case for proceeding.