How does the patenting process generally work?

If the invention analysis determines that a patent application is worth filing in order to commercialize an invention, ITA works together with the inventor(s) and an expert outside patent attorney to form the best strategy for filing a patent. It is essential that the inventors review the draft carefully to ensure that all aspects of the invention are covered.

Often upon review of the draft, the inventors identify additional aspects of the invention that were not disclosed earlier. Since these aspects have to be included in the application, the claims are often revised and the question of who the inventors are (which is defined with respect to the claims) is often revisited, such that new inventors may be added or deleted. These inventors must review the entire application as well to help identify potentially more material that needs to be added.

Depending upon the complexity of the invention, it can take anywhere from a few days to a few weeks to file a patent application. ITA usually begins the patent process by filing a provisional patent application that is then converted into a PCT or US application twelve months later.

The timeline is tabulated below:

Time scale (years)

Activity

0

A provisional patent application is filed in the USPTO; any further development of the invention must be done within 12 months of filing. This period is crucial for adding value to the patent. If any details of the invention are publicly disclosed prior to filing, the opportunity to patent is lost.

1

Potentially updated PCT application or US application is filed; at this stage more data can be added to the invention.

1.5

Patent application is published and thus becomes available to the public.

2-4

Patent examiner reviews and responds to the patentability of the invention being claimed; the patent attorney working with ITA, the inventor(s) and the examiner provides rebuttal and/or modifies the claims – this process is often repeated a few times.

5-7

Patent is granted or rejected individually in each of the designated countries.

4-20

Patent maintenance fees are payable annually in certain countries. In the US, a maintenance fee is due at 4, 8 and 12 years after issuance of a patent. If these maintenance fees are not paid, the patent becomes abandoned.