Protecting Intellectual Property
What is an invention?
An invention is a new and useful process, device, article of manufacture, or composition of matter, or a new and useful improvement upon one of these.
What makes an invention patentable?
An invention is potentially patentable if it satisfies all three of the following:
- Novelty: The invention must be novel, i.e., new and original. An invention cannot be considered novel if it has been known, used, published, or patented by others anywhere in the world before the applicant files for a patent.
- Non-Obviousness: The invention must not, at the time it was made, be considered obvious to a person of "ordinary skill" in the field of the invention.
- Utility: The invention must be useful, i.e., it must have a practical application.
Does disclosure of an invention jeopardize the right to patent protection?
Public disclosures such as publications, lectures, abstracts, symposiums, posters, etc., made prior to the filing of a patent application will jeopardize or eliminate the possibility of obtaining patent protection. Although patent law in the United States allows a one-year grace period between the first public disclosure of an invention and the filing of a patent application, most other countries (including members of the European Union) do not. In these countries, the right of patent protection is lost immediately upon disclosure. Furthermore, the U.S. recently switched to a "first-inventor-to-file" system and so filing an invention disclosure before any public dislcosure is especially crucial.
We therefore wish to stress the importance of not disclosing publicly any potentially patentable information before consulting with an OTTCP staff member. We urge you to send us your draft abstracts and manuscripts before their publication. We have the ability to file a provisional patent application the same day you send us an abstract or manuscript. In no instance will your publication be delayed.
A patent application filed prior to publication or public disclosure protects the rights in your invention without affecting your ability to publish, and may be of great value to you and Caltech in the future.
What is considered a public disclosure of an invention?
Anything that is readily available to the public that describes the basic ideas in enough detail that someone else would be able to make and use the invention is considered a public disclosure. Public disclosures can take place in many different forms, including for example, journal papers, abstracts, conference presentations, publication on the World Wide Web, or even dissertations indexed at the library. Showing or telling these ideas may also constitute disclosure, as does selling or offering for sale a prototype of the invention.
Who files a patent?
OTTCP is solely responsible for determining whether a patent application shall be filed on an invention made at Caltech or JPL. Filing determinations may be made on the basis of commercial potential, obligations to and rights of third parties, or for other reasons that OTTCP, in its discretion, deems appropriate.
Who owns the intellectual property?
As a general proposition, title to all potentially patentable inventions conceived or first reduced to practice in whole or in part by members of the faculty, staff, post-docs, graduate students, and undergraduate student employees of the Institute in the course of their Institute responsibilities or with more than incidental use of Institute resources, belongs to the Institute. Further information about IP developed by students can be found in the "For Students" section of this website.
What are the different types of intellectual property?
Innovations developed at Caltech may be eligible for intellectual property protection depending on the nature of the technology:
- Patents are generally used for compounds, methods, and devices that are new, useful and non-obvious.
- Copyrights are used for creative works such as software, literary works, photographs, and musical compositions.
- Trademarks are symbols or words established by use or legally registered as representing a company or product.
What are the different types of patents issued by the United States Patented Technology Office?
The USPTO issues several different types of patents, though OTTCP most commonly seeks utility patents:
- Utility Patent: A utility patent protects a new and useful process, machine, article of manufacture, composition of matter, or any new and useful improvement of any of the foregoing.
- Design Patent: A design patent protects a new and ornamental design for an article of manufacture where the design is nonfunctional, is part of, and cannot be removed from the article.
- Plant Patent: A plant patent protects a distinct and new asexually-reproduced plant. This includes cultivated sports, mutants, hybrids, and newly found seedlings, but does not include a tuber-propagated plant or a plant found in an uncultivated state.
What is the process of obtaining a patent through Caltech's OTTCP?
The process of obtaining a patent through OTTCP occurs in four major stages:
- Inventor submits an Invention Disclosure form;
- OTTCP decides whether to file a patent application on the invention;
- OTTCP and an outside patent attorney will prepare and file a patent application with input from the Inventor(s); and
- OTTCP and an outside patent attorney will prosecute the patent application to secure patent rights.
The inventor(s)' involvement with OTTCP and outside patent counsel throughout this process is critical to successfully obtaining a patent.
What is the difference between a provisional and a non-provisional patent application?
A provisional patent application is a simplified patent application that is typically filed to establish a filing date for an invention and has a pendency of 12 months. If the applicant does not file a non-provisional patent application before the provisional application expires, then the invention reverts to its prior unprotected state. Provisional patent applications are not examined by the USPTO. The provisional patent application process is beneficial because:
- It is more flexible and less expensive than a non-provisional application.
- It affords the inventor a year to generate additional supportive data and further refine the invention before filing a more robust non-provisional patent application, without impacting the 20 year patent term.
It is important that all aspects of the invention be included in the provisional application to ensure that claims in any subsequent non-provisional patent application are entitled to the provisional application's earlier filing date. Unlike a non-provisional application, which is generally published by the USPTO 18 months from the earliest filing date, a provisional patent application will not be published or made public unless a non-provisional application is filed.
What is a PCT application?
The Patent Cooperation Treaty (PCT) is an international treaty which enables a U.S. patent applicant to file an application (a "PCT application") in English with the USPTO and have that application have the same effect as a regular national or regional filing in all the countries that are a party to the treaty. PCT applications are not examined per se, but can serve as a placeholder for seeking patent protection in any of these countries. In most cases, up to 18 months from the time a PCT patent application is filed (or 30 months from the filing date of the initial patent application of which you claim priority, typically the first filed provisional application), we need to decide whether there is merit in filing national phase applications in each territory or country where patent protection is desired. The PCT application allows the applicant to defer the substantial costs associated with national phase filings; OTTCP uses this time to identify prospective licensees or investors. OTTCP will typically not pursue foreign protection without a licensee in place.
Who is an inventor for the purposes of a patent?
Establishing who should be named as an inventor on a patent or patent application is a process called inventorship determination. Under U.S. patent law, an inventor is a person who contributes to the conception of at least one claim of a patent application or patent covering the invention. Of note, inventorship is distinct from authorship on a paper. For example, inventors would not include individuals whose sole contribution was conducting routine laboratory experiments under the direction of another, or editing an associated scientific paper. Naming the correct inventors is a legal determination made by patent counsel and is important for patent validity.
How long does it take to obtain a patent?
Once a patent application is ready for examination, it is not uncommon for the process of patent prosecution to take 2 to 5 years in the United States, and even longer in other countries. In the United States, an application is not ready for examination until a non-provisional application is filed either directly or enters the U.S. national stage from a PCT application. In many other countries, an application is not ready for examination until a "request for examination" is filed.
Who should I contact for more information?
Contact a member of OTTCP if you have any questions about your research and how it might be patented or otherwise protected.