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Intellectual Property

INTELLECTUAL PROPERTY

Intellectual property rights allow owners of patents, trademarks, or copyrighted works to benefit from their own work or investment in a creation.

In the U.S., a patent gives the holder the right to exclude others from making, using, selling, offering to sell, and importing the patented invention. A patent does not necessarily provide the holder any right to practice a technology since it may fall under a broader patent owned by others. Instead, it provides the right to exclude others from practicing the claimed invention.  Patent claims are the legal definition of an inventor’s protectable invention.

For detailed information on intellectual property and the patent process in the United States, visit the United States Patent and Trademark Office. 

Below you will find a general overview of URVenture’s preferred process for patenting technology. Note that the process, timeline, and costs will vary by case. If you have any questions regarding this process, please contact the IP team at techtransfer@urmc.rochester.edu.

Public Disclosures

As a condition of federal and sponsor grant obligations, and under its Intellectual Property Policy, the University requires employees and certain categories of students to disclose inventions to the URVentures office. Generally speaking, an invention is anything made by the “hand of man” that is new, useful, and not obvious. It could be a process, machine, manufacture or composition of matter, or any new and useful improvement thereof.

A public disclosure is any non-confidential communication of an idea or invention prior to the effective filing date of the claimed invention. If this happens, the public disclosure may be considered prior art for your own invention. 

  • Academic printed and online publications
  • Abstracts
  • Master’s theses
  • Ph.D. dissertations
  • Open thesis defenses
  • Presentations
  • Poster sessions

Public disclosure prior to seeking patent protection immediately prevents you from obtaining most foreign patent rights and may impact your ability to obtain U.S. patent rights. In the United States, there is a one year “grace period” after public disclosure for a patent application to be filed; however, as mentioned above, your public disclosure may be considered prior art for your own invention or may allow others to begin developing your ideas before you are protected.

Types of IP Protection

A patent is the grant of a property right to an inventor, protecting an invention. There are three types of patent applications:  

  • Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.
  • Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.
  • Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. 

Copyright protects original artistic or literary works, both published and unpublished. Generally, copyright protection grants the owner the right to reproduce the copyrighted work, to prepare derivative works, to distribute copies, and to display the work publicly. Copyrights are registered by the Copyright Office of the Library of Congress.

Trademarks and service marks protect brand names and logos used on goods and services to differentiate the source of those goods and services from that of others.

Patent Process

Following the disclosure, the assigned licensing manager, sometimes with an in-house IP attorney, will assess the novelty of the innovation and the commercial potential. Assessment and evaluation occurs at each step in the patent process having significant costs. Learn more about the evaluation process and decision criteria. 

Generally, the initial patent filing is completed within 90 days of the decision to file. The first filing is typically a provisional patent, which is a legal document that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year. Most provisionals cost approximately $7,000 – $10,000 to prepare and file.

Within one year of filing a provisional patent application, a regular utility application must be filed in order to receive the early filing date. It is expected that during the 12 months after the provisional filing, the inventor continues his/her research, gathering data to support a full patent application. The licensing manager will conduct preliminary marketing landscape activities and the IP attorney will assess the likelihood of success in obtaining a valuable patent. For URV to move forward with a full patent application there must be a substantial likelihood of patentability and licensing, and the technology must be an active or ongoing research project.

If URVentures decides to file a complete patent application, it will be reviewed by an examiner at the USPTO and/or a foreign patent office, if so filed. The examiner will assess the novelty and usefulness of the innovation. This process can take several years.

Patent applications are published 18 months from the earliest filing date. This 18 month period begins on the date of the filing of a provisional patent application. Once the patent application has published, details on the status can be found through Google Patents and PAIR (Patent Application Information Retrieval).

Google Patent Search

PAIR Search

The PTO examiner searches the prior art – the scientific and patent literature published in the public domain prior to the priority date of the patent application – to determine if the patent application claims new and patentable subject matter. Generally, in about 1-3 years, the outside counsel will receive written notice from the examiner either accepting or rejecting the individual claims as filed. The letter sent by the examiner is referred to as an office action.

Within 6 months of receiving the office action, the patent attorney, with input from the inventor, responds to the office action with a written response. Each response costs approximately $3,000 – $5,000. Typically there are two office actions before claims are allowed or we are given a final rejection. 

If the PTO examiner is satisfied that some or all of the claims are sufficient, he/she will issue a notice of allowance. The patent issue fee is due 3 months from the notice of allowance.

A patent number and issue date will be assigned to an application and an Issue Notification will be mailed after the issue fee has been paid and processed by the USPTO; a US utility issue fee is approximately $1,500. 

Maintenance fees are required to maintain a patent beyond 4, 8, and 12 years after the issue date; currently, the 4-year maintenance fee is $1,600, the 8-year maintenance fee is $3,600, and the 12-year maintenance fee is $7,400 . If the maintenance fees and any applicable surcharge are not paid the patent will expire.

Foreign Applications

Foreign patent protection is subject to the laws of each individual country. Note that public disclosure prior to filing the patent application prevents the inventor from obtaining foreign patent rights.

No international patent exists; however, an international agreement known as a Patent Cooperation Treaty (PCT) provides a concise filing procedure for a large number of nations. A PCT application is generally filed one year after the corresponding U.S. application, provisional or regular, has been submitted. The PCT application must later be filed in the national patent office of any country which the applicant wishes to seek patent protection. Once a patent has issued, annual annuity fees must be paid to maintain the protection.

Costs

The cost of a patent application varies based on a number of different factors.

Filing and obtaining a US patent can cost between $25,000 – $30,000; approximately $15,000 – $20,000 of that in the first six years for issuance. A PCT application and foreign filings can cost an additional $30,000 in the first five years. Once a patent has issued in the US or a foreign country, regular maintenance and annuity fees are required.

The University will pay for the patent costs incurred, with the goal of later recovering that investment from a licensee. After University rights have been licensed to a licensee, the licensee generally pays the patenting expenses.

We often accept the risk of filing a patent application before a licensee has been identified. Sometimes, after a reasonable period of attempting to identify a licensee or if it is determined that we cannot obtain reasonable claims from the PTO, URVentures must decline further patent prosecution.

Copyrights are registered by the Copyright Office of the Library of Congress. The fees associated with a copyright registration depend upon the method used to apply and the type of work being registered; each registration includes an application form, nonrefundable filing fee, and non returnable deposit. The fees are typically very low (e.g. < $100).

University IP Policy
Patent Budget