Patent

There are three types of patents:

1. 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. This is the most common type of patent.
2. Design patents: may be granted to anyone who invents a new, original and ornamental design for an article of manufacture. A design patent protects only the appearance of an article, not its structural or functional features.
3. Plant patents: may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state. A plant patent is granted on the entire plant.

Some common examples of patentable items include: medical devices, chemical formulas and processes, drugs, computer software, electronic components and devices, business methods, jewelry and other designs.

A patent may be granted on any invention that fits within the three categories above and which meets the requirements for patentability: novelty, non-obviousness and utility.

For an invention to be patentable, it must be: 1) novel; 2) non-obvious; and 3) useful.

An invention is “novel” if it is different from other similar inventions (whether or not previously patented). It also must not have been sold, offered for sale, in public use or otherwise available to the public more than 1 year from the filing date of the patent application.

An invention is “non-obvious” if the invention is sufficiently new and inventive (e.g., would not be obvious to someone within the relevant industry or with the relevant skills based on the information and inventions that have come before it). The idea behind requiring non-obviousness is to avoid granting patents for the normal stages of development of a concept or idea that are not true inventions in themselves.

An invention is “useful” or has “utility” if it has some identifiable benefit and is capable of use. This protects against patenting hypothetical devices and ideas.

Unlike copyright, patent protection does not automatically exist upon creation. Instead, an inventor must apply for a utility, design or plant patent with the United States Patent and Trademark Office (USPTO), the entity charged with granting patents within the United States. Applicants may also file a provisional patent application with the USPTO. A provisional patent application is an abbreviated application that allows inventors to preserve an earlier filing date and gives the inventor 12 months in which to file a design, utility or plant patent application. Provisional patent applications will never themselves mature into an issued patent, but the early filing date can be important to secure patent rights given that patents within the United States are awarded on a “first to file” basis, rather than a “first to invent” basis. ​​​Provisional patent applications can also be helpful to preserve rights that may otherwise be lost if the inventor makes certain public disclosures or offers for sale of the invention more than 12 months before the utility, plant or design patent application is filed.

An inventor who wishes to obtain patent protection in other countries must apply for a patent in each of the other countries or in the regional patent offices, in cases where a patent may be obtained for multiple countries at once by operation of treaty or otherwise.

Utility and plant patents last for 20 years from the application date whereas design patents last for 14 years. Failure to file required documents or pay specified fees may result in the loss of a patent. An invention becomes public upon expiration of the patent and can be made, used, sold, offered for sale or imported by anyone.

Enacted on December 12, 1980, the Bayh-Dol​​e Act (P.L. 96-517, Patent and Trademark Act Amendments of 1980) created a uniform patent policy among the many federal agencies that fund research, enabling small businesses and non-profit organizations, including universities, to retain title to inventions made under federally-funded research programs. This legislation was co-sponsored by Senators Birch Bayh (D-IN) and Robert Dole (R-KS).The Bayh-Dole Act was especially instrumental in encouraging universities to participate in technology transfer activities.

Prior to the passage of this Act, it has been documented that nearly 30,000 technologies were sitting on government shelves with no plan for development.

Effective May, 14, 2018, the National Institute of Standards and Technology (“NIST”) promulgated new regulations (found at 37 C.F.R. Part 401) that changed various deadlines and procedures for how the Bayh-Dole Act is implemented. The changes affected several aspects of the Bayh-Dole regulations, including in relation to how and when federal grant award recipients, small businesses with SBIR funding, CRADA participants, and other contractors receiving federal funding (collectively referred to as “Contractors” in the regulations) should take title to inventions from their employees; when Contractors must disclose and elect title to inventions conceived or first actually reduced to practice (“Subject Inventions”) while performing under the federal funding; and when provisional applications must be converted. The new regulations apply to all inventions arising under either new grants awarded after that date or existing grants that might be amended after that date.

Key Provisions

• The University is entitled to retain ownership of any inventions created as a result of federal funding, unless the funding agency informs the University up front that the agency will retain title to inventions derived from the funded projects because of specifically identified “exceptional circumstances” or other specified conditions.
• When a University innovator discloses the creation of an invention derived from federally funded research, the University has two months from that date to disclose that information to the appropriate federal agency. The University also must patent all inventions it elects to own and commercialize.
• The University must attempt to develop and commercialize the invention. If an attempt is not made, the federal government retains the right to take control of the invention. The government also may take control of the invention for other reasons, such as a need to alleviate health or safety concerns. This provision is referred to in the law as the government’s “march-in” rights.
• The University​ must provide the U.S. government with a nontransferable, irrevocable, paid-up, nonexclusive license (“confirmatory license”) to use the invention.
• In granting a license to use the i​nvention, the University also generally must give priority to small businesses, while maintaining the fair-market value of the invention.
• When granting an exclusive license, the University must ensure that the invention will be “manufactured substantially” in the United States.
• Excess revenue must support research and education.
• The University must share a portion of the royalties with the inventor(s).