Applying for a Patent

Some academic researchers shrink at the idea of patenting their work. Why put protections on an idea you want the world to own and use? Yet securing a patent can often be a critical step in making an idea or technology accessible to real people. No company will invest in your technology without the security of knowing that an invention is yours and yours alone.

Patents are important, but they aren’t quick or easy to secure. The patent examination process is a legal negotiation with the US Patent and Trademark Office (USPTO), involving the exchange of information, argumentation, and amendment.

BU’s Technology Development office is here support you from idea conception to patent filing, monitoring, and maintenance. Read on for details about this process. Then we encourage you to reach out to discuss your idea as early as possible.

Before Filing

Reach Out to Technology Development

For BU faculty and researchers with a new idea or technology, the most important thing you can do is to talk to someone in the Technology Development office as early as possible. Too often, researchers publish or give a talk before kicking off the patent process, inadvertently undermining their ability to get the invention into the hands of real people by protecting it with a patent.

Below are some suggested guidelines for you to consider when deciding when to interact with our office. To get the process started you can either complete the Technology Disclosure Form or contact us.

Avoiding Disclosure of Patentable Ideas

Grants, and in particular federal grants, are the life blood of university research. Work performed under a funded grant can lead to innovation and associated intellectual property (e.g., patents, copyrights, trade secrets, and know-how). However, care should be taken in the preparation of grant applications and grant proposals to avoid, particularly with respect to patents, unwanted and/or unnecessary public disclosure.

An invention is not patentable in the US if it has been described in a printed publication or otherwise known to the public more than one year prior to the filing date of the patent application. In most foreign countries, the right to obtain a patent is lost immediately upon the first public disclosure. To be an invalidating reference, the document (when viewed alone or in combination with other available references) must be sufficiently clear and enabling to permit one of ordinary skill in the art to practice the invention. For these reasons, care should be exercised when drafting documents for submission as a grant application or proposal.

For these reasons, you should be aware that the National Institutes of Health (NIH) places information about awarded grants, including project title, name of the PD/PI, and the project description on the RePORT website. Moreover, when your grant is funded, the Abstract will appear in various databases of federally funded grants (e.g., the NIHNational Institutes of Health CRISP Database, the National Technical Information Service Federal Research in Progress (FEDRIP) Database).

Therefore, you want to be certain that your Abstract not contain an enabling disclosure of your proposed work that may lead to, or itself describe, an invention. You should also be aware that one court (E.I. du Pont de Nemours & Co. v. Cetus Corp., 19 USPQ 2d 1174 (N.D. CA 1990) has held that since a copy of the entire grant proposal was available upon request under the Freedom of Information Act (FOIA), the grant application was a printed publication accessible to the relevant public prior to one year before the date of application for patent in the US, and hence was prior art within the meaning of 35 U.S.C. 102(b).

For these reasons, we strongly discourage the disclosure of proprietary or patentable subject matter. Generally you should avoid such disclosures in the grant application unless it is believed that they are necessary to sufficiently describe the research to thereby secure the desired funding. Under these circumstances, you should attempt to work within the exceptions to FOIA disclosure requirements.

To avail yourself of certain exceptions to agency disclosure of grant documents under FOIA, you can submit proprietary information in the technical plan of the grant application in a separate section and include as a header on each page the following words: Confidential and Proprietary Business Information.

Please note that since each agency provides specific procedures for identifying proprietary information included in a grant proposal, or pages of a proposal, you should carefully follow the agency procedures at the time of submission of the application, as provided in the application guide.

For example, the NIH Grants Policy Statement addresses the “Availability and Confidentiality of Information” (including a discussion of FIOA) in Section 2.3.11 and the accompanying subsections.

If you have a question about how to proceed with regard to a potentially patentable technology and a grant application, you can contact Technology Development.

Idea Evaluation

Technology Development will generally make a decision on filing only after completion of its evaluation, based on the questions below.

Problem/Solution

• What is the problem that you are solving?
• What is the solution?
• What is the current state of the art?
• How is your solution better/faster/cheaper (e.g. advantages)?

Innovator/Team

• What is the Innovator’s success in the field related to this idea?
• What are the Innovator’s established industry relationships?

Technical Merit

• What is the current stage of development of this technology?
• What needs to be done to move it forward along that development path to the next few milestones?
• Is there interest and available resources (time, funding, students) to do this?
• How does this approach compare with competing approaches?

IP

• What types of IP protection are available?
• Are domestic and foreign patent rights preserved (e.g. have any public disclosures been made, are any expected)?
• What is the known prior art?
• Are there any known freedom-to-operate issues?
• How difficult is it to detect infringement?

Commercial Potential

• What would the product be?
• Who is the customer?
• Who is the end user?
• Is this invention a stand-alone platform or one component among many needed?
• What is the pain point? How much does industry need this?
• Market size?
• Potential Licensees?
• Is there a champion at a potential licensee?
• Willingness of industry to license?
• Regulatory hurdles?
• Time to market?

If Technology Development is going to invest time and money into commercialization of a technology, then we ask that the research team be committed to meeting certain milestones. Those milestones are meant to de-risk the technology and should correspond with the timing of certain events in the patent process that require additional financial support.

If a project ultimately requires patent analysis and/or filing, then the Technology Development team member will request that the PI complete a Technology Disclosure Form if they haven’t already.

Patent Filing Process

Provisional Patent Filings

The Purpose of the US Provisional Patent Application is to establish a date certain (a ”priority date”) for disclosure of the invention (the patent specification) to the USPTO, against which the invention is examined in view of all prior public disclosures in the field of the invention (the “prior art”).

• If a particular invention disclosure passes the criteria for a non-provisional application (described below) then a provisional application with a full specification will be drafted with the assistance of outside counsel.
  • US Provisional Patent Application filings are typically reserved for invention disclosures that have been fully described and enabled by the Inventor(s) and fully assessed by the Technology Development Office (OTD).
  • For invention disclosures, wherein public disclosure is imminent, and the technology is of clear significant importance, OTD may authorize the filing of a “coversheet” US Provisional Patent Application, in an effort to avoid the undesirable loss of potential patent rights.

Non-provisional Filings

Non-Provisional Patent Applications, are patent applications that undergo substantive examination by a patent office, and can mature to issued patents that grant exclusive rights, which are defined by the issued patent claims. All Non-Provisional Patent Applications must be filed within a year of the filing of a US Provisional Patent Application in order to claim the benefit of that application’s priority date.

• The number of non-provisional patent applications that OTD is able to file in a given fiscal year, inherently, is limited by the OTD budget, and the current patent prosecution burden on that budget.
  • OTD endeavors to manage the number of Non-Provisional Patent Applications filed to comply with budgetary constraints.
  • In the event OTD is unable to file a Non-Provisional Patent Application on any given invention disclosure, OTD will work with the Inventor(s) either, to seek alternative funding for the patent filing, or, when possible, to enable the Inventor(s) to file for patent protection on her/his/their own.
• The ultimate objective for the filing of Non-Provisional Patent Applications is to move the technology into the commercial market for the betterment of society. Several factors are considered in making this determination, including:
  • Expected patent claims should have reasonable probability of being issued (e.g., clear novelty and non-obviousness, based on prior art searches).
    • OTD target metric is to have 90% of its Non-Provisional Patent Applications mature to allowance.
  • The “strength” (patent claim scope and breadth) of any issued patent should be sufficient to motivate licensing, or financed start-up activities (Exceptions may apply for narrowly-issued patent claims that are part of a larger patent portfolio strategy with a clear licensing or financed start-up strategy).
    • OTD target metric is to have 50% of its active patent portfolio under license.

Ex-US Patent Filings

Ex-US patent filings are expensive and cannot be covered by the OTD budget.

• Potential Ex-US patent rights are reserved for as long as legally possible (typically 30-31 months from the priority date), to maximize the opportunity and probability for potential license or financed start-up activities.
• In rare instances, OTD may proceed with Ex-US patent filing if the protectable technology is deemed extraordinary, if the patents are licensed and costs are reimbursed by the licensee or licensing is imminent.