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The Patent Approach of Stanford's OTL:
If no licensee is reimbursing patent costs

I. Background:


II. First Filing Decision

What is a provisional application?
If the OTL case manager determines that an invention has sufficient commercial potential, s/he will probably choose to file a patent application on an invention. Usually, the first application is a U.S. provisional application. The provisional application holds a priority date for one year, but is not examined by the Patent Office. During this year OTL will contact companies to find a commercialization partner for the technology.

Article:  Why Provisionals Need Claims

by Todd Juneau

What are characteristics of an invention with commercial potential?
One question the OTL case manager asks when evaluating the invention is: Is this technology likely to return at least $100K to the University over the lifetime of the patent? If the answer is yes, OTL will probably proceed with the provisional application. Unfortunately, we don't have a crystal ball to know which technologies will be successful or not. Some of the indications things we look for as indicators of an invention's potential are:

Why wait?
Often the OTL case manager does not immediately have sufficient information to fully evaluate an invention, and s/he will delay the decision to file a provisional application. By waiting, OTL can gather input from other sources and make a more fully informed patent decision. Some benefits of delaying a filing decision are:

III. Filing a Regular US Patent Application

What happens after the Provisional year?
One year after the provisional application is filed, OTL must decide whether or not to file:

A. a non- provisional application claiming priority to the provisional application and/or
B. a Patent Cooperation Treaty (PCT) application (which preserves foreign rights).

Unlike a provisional application, the non-provisional application is reviewed by a patent examiner and therefore incurs ongoing expenses after the initial filing. Typically, the case manager has used the year following the provisional filing to assess the market more thoroughly and to try and identify a licensee. If these efforts have been unsuccessful, the commercial interest in the invention is usually unlikely to change. Under most circumstances, the case manager will choose to file a non-provisional application based on a provisional application only if there is a licensee or if a company has expressed overwhelming interest in an invention.

Are there other decisions made after a regular U.S. Patent Application is filed?
About two years or more after a regular U.S. patent application is filed, the Patent Office will issue an Office Action. This correspondence either accepts the patent or rejects it for reasons of novelty, usefulness, and/or obviousness. Most applications are rejected, and patent attorneys must respond to the Office Action. If a patent application for a Stanford invention enters U.S. prosecution without a licensee, the case manager will probably reevaluate the commercial potential when deciding whether or not to respond to an Office Action from the Patent Office.


IV. Foreign Applications

What about patents under the Patent Cooperation Treaty (PCT)?
Most of time, the United States has the majority of the market for commercial products covered by Stanford patents. Also, there are additional costs for filing a PCT application (which preserves foreign rights at the time a regular U.S. application is filed). Because of this, OTL would need a significant commercial interest to justify pursuing a PCT without a licensee.

Do you ever file National Phase without a licensee?
If a PCT is filed, 18 months later OTL must decide whether or not to file National Phase (i.e., a patent in specific countries) applications directly in foreign countries. All told, foreign patent protection can cost $200K or more. One reason is that Stanford pays both the US attorney and the foreign associate when prosecuting foreign patents. In addition, there are translation costs and multiple maintenance fees. Usually at the time of National Phase filing, OTL has been trying to find a licensee for the invention for over two years. After this time, it is highly unlikely that commercial interest will change. Therefore, under normal circumstances, Stanford's OTL does not file foreign National Phase patent applications unless a licensee is reimbursing patent costs.


V. Alternatives to an Attorney Filing a Patent Application

If an inventor wishes to file a patent application himself/herself, OTL can provide information on how to write, file and prosecute patent applications. The OTL case manager responsible for the invention can provide more information.