Understanding Patents

While GW’s Technology Commercialization Office (TCO) is here to help you through the patenting process, we recommend that you also familiarize yourself with key terms that are part of the process.

Key milestones include:

• Filing of the Provisional Patent Application, after which you may present or publish your research without losing patent rights
• Filing of a Non-Provisional or PCT Application, after which the description of the invention can no longer be changed
• National Phase deadline, by which time PCT applications must be converted into applications in specific countries. This is a costly process, so we strive to have a business partner prior to this deadline.

Key Success Factors:

• Before you publish or present, send us your idea.
• Get in touch with us right away. Your patent's validity, protection scope, and quality can all be affected by the timing of our collaboration.
• Sending us regular updates on your project’s progress, including data, publications, and prototypes will help with licensing and patent decisions.

Patent Types 

There are three types of patents: 

• Utility: You can file for a utility patent when you come up with a new, original and useful process, machine, article of manufacture, composition of matter or any new or useful improvement thereof. 
• Design: You can file a design patent when you come up with a new, original or useful design for an article of manufacture. 
• Plant: You can file a plant patent if you invent, discover or asexually reproduce any distinct or new variety of plant. 

Learn more about each type of patent from the U.S. Patent and Trademark Office. 

Patent Application Types

Provisional Patent Application

The first type of patent application TCO files is a provisional patent application, which should be filed before any public disclosures (presentations, posters, articles). This patent should include a description of the invention and can be produced from manuscripts, grant proposals, and drafts of poster presentations. Inventors should first discuss the idea with TCO, so we can plan when to file and do some evaluation of whether the idea is patentable and marketable. The provisional patent is a placeholder patent and is relatively quick and easy to file.

A provisional patent application lasts for a period of 12 months. During this time, it is important to update TCO on any new updates to your invention, including publications or new data. Be aware that we must file a full patent application (either a patent corporation treaty (PCT) application or a U.S. non-provisional) within this year or else we will lose the ability to receive patent rights for your invention.

To preserve international rights, a provisional patent application must be filed before any public disclosure. Rights in the United States may still be available if a provisional patent application is filed within one year after a public disclosure.

Patent Corporation Treaty (PCT) Application

A Patent Corporation Treaty (PCT) application is a placeholder for international patent applications. For patent rights in countries other than the United States, the first patent application for the invention must be filed before any public disclosure. We must file a PCT application within the year that the provisional patent application is valid to benefit from the date of the provisional application filing. When we file the PCT application, we must include specifications, figures, a list of prior art (related patents and literature) and claims. This language will require a more extensive drafting effort by patent lawyers, which TCO manages. 

About six months (18 months if no provisional application was filed) after filing the PCT application, the PCT application will be published and the TCO will receive an International Search Report with a preliminary examination of patentability. Be aware that a non-provisional application for any country where patent rights are desired should be filed within 18-19 months (30-31 months if a provisional patent application was not filed) of filing your PCT application, depending on the country.

TCO generally files non-provisional applications only in the United States, unless foreign filings are requested and paid for by licensees. For this reason, it is very desirable to license inventions within the first 2.5 years of filing a patent.

Non-provisional Patent Application

Non-provisional patent applications must be filed in each country where patent rights are desired, and each country's patent office performs their own examinations to determine patentability. When TCO files, we must include specifications of your invention, figures, a list of "prior art" (related patents and literature) and claims. This application typically involves an extensive drafting effort by the patent lawyers, which TCO manages.

While this application is being considered by a patent office, TCO must respond to any reasons for rejection that patent examiners send in "office actions." TCO and our patent lawyers will likely require inventors' input during this process. If there are any updates to your invention, such as publications, new data or improvements, you should send them to TCO promptly. 

A non-provisional United States (U.S.) patent application must be filed no more than one year after any public disclosure and within one year of filing a provisional patent application (unless a PCT application was filed). For rights in foreign countries, a patent application must be filed before any public disclosure.

About six months (18 months if no provisional application was filed) after filing a non-provisional U.S. application, the application will be published. It generally takes about two to four years before the U.S. patent office will begin examining the application.

Common Patent Terms

Conception of an invention

This is required to file a patent application. Conception refers to “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention” or a point where you can teach someone to make an invention. Because it may be difficult to pinpoint when conception of your invention occurs, contact TCO early in the invention process.

Inventors

An inventor is someone who contributes to the conception of an invention described in at least one claim in a patent. Conception is established when the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the exercise of extensive experimentation or the exercise of inventive skill. Contribution to reduction to practice is irrelevant when considering who is an inventor.

Reduction to practice includes activities such as creating a prototype or testing a new substance or method as directed by an inventor. A reduction to practice can be done by another on behalf of the inventor. In unpredictable arts like chemistry and biology, often the design of experiments and analysis of results contribute to the conception of the full invention in a way that one skilled in the art could practice it. There is a distinction between design and analysis and the performance of experiments, where performance is merely a reduction to practice.

When an invention is made by two or more persons jointly, they shall be joint inventors. Inventors may apply for a patent jointly even though

1. they did not physically work together or at the same time,
2. each did not make the same type or amount of contribution, or
3. each did not make a contribution to the subject matter of every claim of the patent.

Failure to correctly name the inventor(s) of a patented invention can result in the patent being held invalid and thereby unenforceable. TCO makes every effort to maintain a correct list of inventors on an ongoing basis and this list may change as claims are amended during patent prosecution. For example, if one person only contributed to the conception of claim 9 of a patent application, but during prosecution claim 9 is canceled, that person should be removed from the list of inventors before the patent issues. . Because it may be difficult to pinpoint when conception of your invention occurs, contact TCO early in the invention process.

Public Disclosures

Public disclosure is sharing information about an invention through websites, blogs, conferences, publications, or even by selling the invention. This includes any sharing of an invention with individuals outside the GW community without a non-disclosure agreement. It is important to note that public disclosure can significantly impact the ability to obtain patent protection for an invention. International patents require filing BEFORE any public disclosure. US patents have a grace period of 1 year to file the patent application after public disclosure. 

Contact TCO early if you have upcoming publications or presentations, so TCO can evaluate potential inventions and file for protection if warranted before public disclosure. TCO will assess it for patentability and commercialization potential. A great time to engage TCO is when submitting a manuscript or grant proposal for peer review, or an abstract to a conference. Note that presentations at GW events open to the public, like the SEAS R&D Showcase and doctoral dissertation defenses, do count as public disclosures.

Disclosures to Patent Offices

A patent application must include a complete description of an invention (a disclosure to the patent office) with sufficient information to enable someone in the relevant field, (e.g. an engineer, a pharmaceutical researcher, or a chemist) to make and use the invention. All parties involved in the patent process (i.e. inventors, TCO, and patent lawyers) are required by law to disclose to the patent office all known references published prior to the patent filing, (i.e., publications, published patents) that may be relevant to the patentability of the invention. Such references are known as prior art. Failure to make a complete disclosure of prior art can result in the invalidation of the patent.

First-to-file system

The United States, much like the rest of the world, now grants patents under the "first-to-file" system. Under the system, an inventor who files a patent application first is granted a patent, regardless of the date of actual invention. This means that you should consider filing a patent application expeditiously and is another reason to contact TCO early in your invention process.

Patent Office Examination

The examination of US patent applications is a process by which the United States Patent and Trademark Office (USPTO) reviews patent applications to determine whether they meet the legal requirements for patenting. Once a patent application is filed, it is assigned to an examiner at the USPTO for review. The examination process includes the following:

1. Prior Art Search: The examiner searches prior art i.e., existing patents, publications, and other technical information, to determine whether the claimed invention is new and non-obvious.
2. Substantive Examination: The examiner will review the application to determine whether the invention meets all legal requirements. The examiner will issue office actions notifying applicants of any deficiencies and which laws and rules apply.
3. Prosecution: The applicant can respond to the examiner's office action by amending the claims, providing additional information, or arguing against the examiner's objections/rejections.
4. Allowance or Rejection: If the examiner determines that the application meets all of the requirements for patentability, the applicant will receive a Notice of Allowance. If the examiner maintains objections/rejections, they will issue a final rejection. After a notice of allowance, a patent will issue upon payment of a fee. After a final rejection, the patent application can be filed again with additional fees to continue negotiations on patentable claims with the USPTO.

Overall, the examination process can take several years to complete, depending on the complexity of the invention and the number of office actions and amendments required. The examination process involves careful attention to the details of the patent application and the underlying technology.

An inventor’s input is invaluable in overcoming these challenges by the patent examiner. Expect to hear from TCO regarding an office action two to three years after filing your non-provisional patent application. For us to promptly follow up on office actions, you must update your contact information with TCO, especially if your address or phone number changes.

Issuance of Patent

The issuance of a patent grants legal recognition of the patent holder’s right to exclude others from using or commercializing the invention. Only after a patent is issued, the patent holder may pursue legal action against anyone who infringes on the claims of the patent by making, using, or selling a product or service. This involves filing a lawsuit to seek damages, injunctions, or other legal actions.