Introduction to Patents and Their Applications Boston College Office of Technology Transfer & Licensing

Introduction to Patents and Their Applications

• Boston College Office of Technology Transfer & Licensing

What is a Patent?

• A legal protection which gives an inventor the right to exclude others from performing certain activity in the country of issuance

• Sanctioned monopoly for a set number of years in exchange for disclosure to the public

• Does not give the inventor the right to make, use or sell the patented invention

Why Patent an Invention?

• Source of recognition for the inventor(s)

• Incentive to develop a commercial product

• License to an existing company
• Start up a new company

• Protection against imitators

What Can Be Patented?

• Must be:

• Novel: not previously known or used by others
• Useful: have a known use or produce a concrete and tangible result
• Non-obvious:
• Is it obvious to PHOSITA (Person Having Ordinary Skill In The Art)?
• Can not be found in a single or reasonable combination of patents that would yield a predictable result

Notable Events in US Patent History

• 1790: 1st US Patent Act entitled “An act to promote the progress of useful arts”

• 1850: Introduction of the concept that an invention must be non-obvious as well as new and useful

• 1978: Patent Cooperation Treaty put into effect; allows single worldwide filing

• 1980: Bayh-Dole Act – Universities retain title to results of Federally funded research

Publication Vs. Patent

• Scholarly Publication

• Authorship somewhat negotiable

• Must have done the work

• Effort paramount

• Future ideas can interfere with subsequent patentability

• Only directly comparable results can lead to loss in priority

What are the Parts of a Patent?

• Abstract

• Background of the Invention

• Summary of the Invention

• Figures with brief descriptions

• Detailed description or “specification”

• Fully discloses what the invention is
• How it is made?
• How it can be used?

• Claim(s): sets the legal boundaries of protection

• Independent
• Dependent

3 Different Types of Patents

• Utility Patent

• Most common type granted
• Works to produce a useful result
• Process (ex. making a new chemical or a new business method)
• Machine (ex. camera)
• Article of Manufacture (ex. carpet)
• Composition of matter (ex. adhesive)

How Does One Obtain a Patent?

• First assessment for whether or not the invention is patentable AND marketable

• File provisional application (~$10K)

• International (PCT Application) (~$20-30K) – non-binding examination and allows an applicant to postpone the applications for up to 30 months

• US Utility Application (~$20-30K) – binding examination

• Examination rounds and appeals require more time and money

• Total average cost of a US patent: $50K

• Total average time to obtain a US patent: 3-6 years

BC’s Approach to Obtaining a Patent & Commercialization

• Disclosure: Ideally when you can describe both what the invention is and what it accomplishes

• Evaluation:

• Can this invention be patented?
• Is there any prior art? Is this invention new, useful, & non-obvious?
• Is it worthwhile to patent this invention?
• What product could come from this patent? Is there a market for said product?

• Provisional application: Preserves worldwide rights against initial disclosure; gives you 1 year to decide whether or not to pursue patent

• Initial publication: If you publish prior to filing a provisional application you lose the rights to file internationally

Patent Cooperation Treaty (PCT): an international application which claims priority to a provisional US application & have option for protection for up to 111 countries.

• Patent Cooperation Treaty (PCT): an international application which claims priority to a provisional US application & have option for protection for up to 111 countries.

• Non-confidential disclosure (NCD) is generated and summarizes the technology as well as the unmet need/opportunity.

• During this phase more marketing & search for licensee should be completed. If there is no market or the market is too narrow, then the application may not be pursued past this point.

• After the re-evaluation there may be additional publications with interesting animal data, prototyping, or further commercialization

Continuation of marketing/finding a licensee as well as additional publications

• Continuation of marketing/finding a licensee as well as additional publications

• National stage applications with expensive examination rounds

• Rarely get this far in the patent process without a licensee

What are the chances of obtaining a patent?

What are the chances of licensing a patent?

Examples of Successful University Patents

• Gatorade & U. of Florida: more than $94 million in royalties since 1973

• Google & Stanford: could earn more than $200 million depending on how the stock performs

• Remicade & NYU: $650 million deal with Royalty Pharma in May 2007

Boston College’s Commercialized Patents

• ChiroTech: exclusive patent license - catalysts for asymmetric olefin metathesis 1999; collaboration with MIT

• Solasta Inc: thin solar technology, company founded in 2006

• GMZ Energy: nanotechnology based materials, collaboration with MIT, patent granted in 2007

Resources

• For More Background Information:

• www.autm.net
• http://www.ladas.com/Patents/USPatentHistory.html
• http://www.bitlaw.com/patent/requirements.html
• http://www.columbia.edu/cu/ogc/practice_areas/patent_lic.htm