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Once your technology has been accepted by WiSys for patenting and licensing, a number of activities begin to take place. These services are provided by WiSys at no cost to you. WiSys pays for the patent and licensing costs associated with your invention.
This section provides a summary of WiSys' patent process. You may obtain summarized information on types of intellectual property protection elsewhere on this Web site and may visit the U.S. Patent and Trademark Office Web site to review the U.S. Patent Statute and other details.
Memorandum Agreement
Before WiSys begins working on a patent application, all UW System inventors must sign a WiSys/Inventor contract called the WiSys Memorandum Agreement. WiSys also must receive a copy of a completed UW System Invention Record and Report, prepared by the inventors and submitted according to UW System procedures. WiSys can supply inventors with copies of this short UW System form, which the UW System requires in order for the inventors and the UW System to fulfill their legal obligations to the federal government and to any extramural sponsor of research. Please prepare, sign, and submit these documents as quickly as possible, since WiSys cannot proceed with the patent application process until after these agreements are completed.
Inter-Institutional Agreements
Occasionally, technologies are disclosed to WiSys that involve collaboration between a UW System researcher and a researcher at another institution. In order for a patent to be valid, all inventors, however located and affiliated, must be named on the patent application.
Some of these other inventors may have contractual agreements with their institutions or other employers concerning intellectual property rights. In such situations, WiSys will arrange an Inter-Institutional Agreement with the other institution to permit clean licensing of the invention.
The Patent Application
In order to have access to a variety of legal technical specialists, WiSys retains specialized outside patent attorneys to draft its patent applications. Before the attorney handling your invention begins to draft the application, your intellectual property manager will arrange for you and any co-inventors to meet with the attorney to explain the invention and supply other information. You will review the patent application before it is filed. In addition, you will be asked to sign a Declaration of Invention and a formal assignment document that is recorded in the Patent and Trademark Office.
Your input is crucial, both at the drafting stage and later, when the patent attorney must respond to Patent Office questions and comments. Although the attorney is responsible for writing the application and meeting Patent Office administrative requirements, it is difficult for a patent application to proceed smoothly without the committed participation of a lead inventor (usually the faculty member most intimately involved with the research). The whole process, from filing the application to obtaining a patent, may take anywhere from a year to several years.
When the patent attorney describes the invention in a patent application, the description must be complete enough to enable a person skilled in the field to actually practice (duplicate) the invention. In other words, this enabling disclosure must reveal the best mode of practicing the invention. The best mode is the version of the invention that the inventor considers to be the best at the time the patent application is filed. If the disclosure is not enabling, the application will be denied. If the best mode is not revealed, and the patent is later challenged in a lawsuit, a court may find the patent invalid.
A patent application ends with a numbered series of statements called claims, each summing up the invention in a single sentence. Each claim looks at the essence of the invention in a slightly different way. The claims set the metes and bounds of the invention covered by the patent.
Prior Art and Barring Events
Relevant past technology that may be considered by the Patent Office in evaluating novelty and non-obviousness is sometimes called the prior art. Prior art is the knowledge of prior artisans, that is, people skilled in the relevant fields. If a patent application is filed in the U.S., anything that has been published, used in public, offered for sale, or sold for at least one year prior to the application's filing date, becomes part of the prior art for the application, no matter who did the publishing, using, or selling.
For example, if an article is published and then a year passes before a patent application is filed on an invention, the Patent Office will not grant a patent on the invention unless it finds that the invention is novel and non-obvious when compared to the published article. The one-year anniversary of a publication, public use, sale, or offer for sale, is commonly referred to as a bar date. After this date passes, the inventor cannot receive a patent on the invention.
In talking about published information, the patent statute refers to information disclosed in a printed publication. However, this term is understood very broadly. For patent purposes, "published" means any printed, photocopied, typed, microfilmed, or otherwise fixed communication that is available non-confidentially and is findable by those in the field.
Not only standard academic publications, but also abstracts, master's theses, Ph.D. dissertations, even tape recordings of speeches, all become "printed publications" once they are delivered to subscribers, distributed at a meeting, shelved and cataloged in a library, etc. Even Internet communications are normally considered printed publications.
While the U.S. offers a one-year grace period after publication, public use, sale, or offer for sale, most foreign countries have no such grace period. Furthermore, even oral disclosures can have the same effect in foreign countries as publications. For example, while a talk or poster session (without handouts or an abstract) may not have an effect on a U.S. patent application, either could immediately bar a patent overseas.
This discussion of prior art and barring events is only a summary overview. The law includes various exceptions and a seemingly common term, such as "printed publication," may have a special meaning in patent law. The U.S. or foreign effects of a particular event may not be obvious. Always tell the attorney drafting your patent application about any possible barring events so that the attorney can determine their importance.
Your patent attorney must be informed about anything that could be prior art for another, vital reason. Deliberate failure to notify the Patent Office of prior art relevant to an application can make the patent invalid.
Patent Office Activities
After a patent application is filed in the U.S. Patent and Trademark Office, a patent examiner reviews it for utility, novelty, non-obviousness, and enabling disclosure. The patent examiner corresponds with the patent attorney about the application, issuing formal comments and opinions called office actions. Commonly, the examiner's first office action rejects some or all of the claims. The attorney's responses and other efforts to adjust the claims and convince the examiner to accept or allow them, is called patent prosecution.
You will be asked at times to help WiSys' attorney do the best job of answering these office actions. A quick, detailed reply to an office action is important because the patent office sets time deadlines for response.
The patent prosecution may take anywhere from a few months to several years. There is always a possibility that a patent may never be obtained, or if obtained, may not include the key desired claims that create commercial value. But if the application is granted, then the patent issues and the revised text of the application is published as a patent document.
Your intellectual property manager will send you a copy of your patent when it issues.
Patent Term
Currently in the United States, a patent has a life of 20 years from the date the patent application is filed. A change was made in 1995 to harmonize this aspect of U.S. patent law with that of the rest of the world. Formerly, the U.S. patent life was 17 years from the date of patent issuance. New patent law set forth in the 1999 American Inventors Protection Act allows for patent term adjustment to extend the life of a patent that has taken longer than three years to issue due to U.S. Patent Office delays.
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