In about one to two years, depending on the technology area, the patent attorney will receive written notice from the PTO as to whether the application and its claims have been accepted in the form as filed. More often than not, the PTO rejects the application because either certain formalities need to be cleared up, or the claims are not patentable over the “prior art” (anything that workers in the field have made or publicly disclosed in the past). The letter sent by the PTO is referred to as an Office Action or Official Action. If the application is rejected, the patent attorney must file a written response, usually within three to six months. Generally the attorney may amend the claims and/or point out why the PTO’s position is incorrect. This procedure is referred to as patent prosecution. Often it will take at least two PTO Official Actions and two responses by the patent attorney, and sometimes more, before the application is resolved. The resolution can take the form of a PTO notice that the application is allowable; in other words, the PTO agrees to issue a patent. During this process, input from the inventor(s) is often needed to confirm the patent attorney’s understanding of the technical aspects of the invention and/or the prior art cited against the application. The PTO holds patent applications confidential until published by the PTO, 18 months after initial filing.
Thus, an inventor may under certain circumstances create prior art against his or her invention (thereby jeopardizing patent rights) by publicly disclosing an invention prior to the filing of a patent application.
If you are to disclose your invention to The University of Alabama, we will conduct a patent and literature search as part of our assessment. Some commercial databases that we use to conduct these searches are Relecura and PatSnap.
PCT provides two advantages. First, it delays the need to file costly foreign applications until the 30-month date, often after an applicant has the opportunity to further develop, evaluate and/or market the invention for licensing. Second, the international preliminary examination can allow an applicant to simplify the patent prosecution process by having a single examiner speak to the patentability of the claims which can save significant costs in prosecuting foreign patent applications.
An important international treaty called the Paris Convention permits a patent application filed in a second country (or a PCT application) to claim the benefit of the filing date of an application filed in a first country. However, pursuant to this treaty, these so-called ”convention applications“ must be filed in foreign countries (or as a PCT) within one year of the first filing date of the U.S. application (either provisional or regular).
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For information, questions, or permission requests please contact:
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How can I learn more about University copyright policies?
We recommend that you begin by reviewing material in Appendix H of the Faculty Handbook. If you have additional questions, please contact OTT.
What legal rights does a copyright provide?
A copyright owner has the exclusive right to do and authorize any of the following with the copyrighted work:
- reproduce the work
- make derivative works
- distribute copies of the work
- perform and display the work publicly