Patent

A patent is a set of exclusive rights granted for a limited period of time in exchange for a disclosure of an invention. Patentable inventions must be new, useful and non-obvious.

Not all Stanford inventions are patented even if they are licensed. For example, it is not usually necessary to file a patent for biological materials when the cell line producing the biological material is controlled by the researcher. In this case, the license agreement simply forbids transfer of the material to any other parties and requires its return or destruction should the license be terminated.

Software that is under copyright is another type of non-patented technology that we license.

A patent is intended to publicly disclose the best mode of practicing an invention and, in particular, to point out the features that distinguish the invention from prior art. The patent includes drawings, if appropriate; and a specification that is typically broken into several distinct sections, including: the field of the invention, the background, a brief description of the drawings, a disclosure of the invention, a description of the invention, an explanation of the industrial applicability; and at least one claim.

The field of the invention briefly describes the general field of the invention. A sentence or two is sufficient to aid the Patent Office in assigning the patent application to an Examiner and in classifying the resulting patent.

The background section describes the work done in the past and what has prompted the inventor to pursue this invention. This information is referred to as prior art; inventors have an absolute duty to disclose all relevant prior art. The background section typically develops the progression of work and sets forth the shortcomings of the prior art. It is therefore important for the inventor to include all the prior art and to include a description of the shortcomings and differences between each of the prior art references and the invention in this section. Typical sources of prior art include journal articles, published conference proceedings, issued patents, and other printed materials.

The drawings are provided to aid in understanding the invention. Where drawings do not aid understanding or are impractical, they are not included; but, nearly all inventions will have a drawing of some sort. Graphs and tables may also be included in this section.

The brief description of the drawings merely identifies the view shown in each figure.

The summary of the invention sets forth in broad terms what the inventor considers to be the invention and what advantages are gained by the invention. Since it must be written broadly, it typically does not include all the intricate details of the invention's operation. In fact, in most cases, it merely paraphrases the broadest claim.

The detailed description of the invention sets forth the theory on which the invention rests and the intricate details of at least one way (and sometimes several ways) the invention can be implemented. This description must be detailed enough for someone who is skilled in the art to reconstruct the invention and must include a description of the best way, in the inventor's view, the invention can be implemented. Each implementation is called an embodiment and the best one is the preferred embodiment of the invention.

The claims circumscribe the legal bounds of the invention and are generally written using specialized terms. The claims describe the essential elements of an invention, first as broadly as possible and subsequently, more narrowly. It is generally easier to obtain a patent with narrow claims but, if too narrow, others can invent around the patented invention. In order to determine whether or not a product comes within the scope of a patent, one compares the product with each element of the claim; if the product is described by all the elements of the claim, then the product will come within the scope of that claim. For instance, a claim of "a vehicle with two or more wheels" covers bicycles, tricycles, cars, motorcycles etc., but not unicycles.

Patent prosecution is essentially a debate with the Patent Office about the breadth or narrowness of the claims, i.e., the scope of the invention.

Patentability

Licensable inventions may or may not be patentable. To obtain a U.S. patent for an invention, the invention must be:

novel,
useful, and
non-obvious to one skilled in the art.

Novel
To be considered novel, an invention must be the inventor's original work. In addition, the inventor must file a patent application within one year of:

publication (i.e., any unrestricted written description of the invention) anywhere in the world;
public use in the U.S.; or
an offer for sale in the U.S.

While the United States grants this one year "grace period" to file after first public disclosure, most foreign countries have no grace period. In these countries, a patent will not be granted if the invention was known publicly or disclosed in a publication even one day before the patent application filing date. In patent law, the word "publication" is interpreted much more broadly than when used in the typical research community (i.e., in a journal); if you have a question about whether or not a written or oral disclosure of any kind is a publication, please contact OTL.

Useful
An invention will be considered useful if it has some qualitative benefit, i.e., the patent application must specify a demonstrable utility for the invention.

Non-obviousness
A patentable invention must be "non-obvious" to someone of "ordinary skill in the art." This imaginary person "of ordinary skill in the art" does not necessarily include recognized experts in the field; rather it is a hypothetical reference to someone knowledgeable in the field who can understand the invention and has access to the relevant prior art. Because of the abstract quality of this requirement, it is sometimes difficult to predict with certainty whether the patent examiner will find the invention non-obvious.

"Non-obviousness" describes the concept of "unexpected results." An invention can be "non-obvious" if it is a combination of old elements in a new way to produce a new result. Similarly, an invention can be considered "non-obvious" if others have tried to achieve the invention and failed, or if others have been "teaching away from" the invention. Some situations will require affidavits from experts in the field stating the invention is not obvious to one skilled in the art.

Inventorship

An inventor is a person who conceives of an original and non-obvious idea which can be described clearly -- the invention.
The patent application claims determine who is and who is not an inventor. The claims define the invention from a legal viewpoint, and therefore, should be used as guides in determining inventorship.
A person who contributed a basic idea that resulted in the development of the invention as it is claimed in the patent application is considered an inventor. This may or may not include people who actually made a physical embodiment of the invention; however, an inventor must have contributed an essential element which developed into one of the embodiments as well.
A person who contributed only labor and/or the supervision of routine techniques, but who did not contribute to the idea - the concept of one of the embodiments of the claimed invention - is not considered an inventor.

For example, a routine translation of someone else's idea into physical reality by a technician does not make the technician an inventor.

A person who contributed something in the way of an extraneous idea while the invention was being developed, but the idea did not contribute directly to the claimed invention is not considered an inventor. It does not matter how brilliant or helpful the idea was, if it is not directed to the invention as it is being claimed, the person is not an inventor.
Under patent law, joint inventors have joint rights in an invention.

Important Note: Do not confuse inventorship with authorship on a scientific publication. The courts have specifically held that authorship and inventorship have different criteria and are not equivalent.

The Attorney Interview Process

If a decision is made to go forward with filing a patent application, you will communicate with the patent attorney hired by the associate.

Preparing for the Attorney Interview

Collect and briefly summarize all relevant printed materials, publications and/or patents.
Prepare rough sketches, graphs, and/or tables describing the invention, including labels. Typically, a set of informal but uncluttered drawings that include labels for each important component will aid the attorney's draftsman in preparing these drawings for the application.
List as many alternative ways your invention can be implemented, improvements on the inventive concept, and uses of your invention as you can.
Prepare a description of the preferred embodiment of the invention.
Prepare a description of the advantages and uses of the invention.
Prepare a glossary of terms.

The Attorney Interview

Don't assume the attorney knows the subject matter in detail.
Develop the theory behind your invention from a very basic level.
Don't skip any steps in the derivation of equations.
Explain all possible embodiments and applications of the invention.
Have your files and pertinent materials easily accessible.
If practical, show the attorney the physical embodiment.

After the Attorney Interview

Following the discussion, the attorney will prepare a draft of the patent application that includes the specification and drawings described above. You will then receive a copy of this draft to review and provide the attorney with your comments.

At this stage, it is important to point out any errors or misrepresentations the attorney has made and to explain any possible changes you have made to the preferred embodiment since the initial discussion.

After the attorney prepares the final draft of the patent application, you will be asked to sign an oath or declaration stating that you are the inventor and sign an assignment of the patent application to The Board of Trustees of The Leland Stanford Junior University.

Your copy of the application should be treated as confidential and kept in a safe location. Similarly, the filing date and the serial number assigned to the application by the Patent and Trademark Office should not be revealed to outsiders.

The attorney sends the patent application and accompanying papers to the U.S. Patent and Trademark Office (PTO) for filing and prosecution. About two years or more after the filing date, a Patent Examiner will search through the PTO files and will usually reject all or some of the claims based on his/her search findings. The Examiner will send a first Office Action to our patent attorney explaining the reasons for rejecting the claims.

When the attorney receives the Office Action, you will be asked to comment on the Examiner's rejections. You may need to provide additional information to the attorney regarding differences between the cited references and your invention. We have three months to respond to the Examiner, extendable month by month for three months by paying extra fees.

The attorney will then prepare an Amendment that modifies the scope of the original claims and/or argues that the Examiner's interpretations of the prior art and claims are in error. Upon receiving the amendment, the Examiner will again consider the claimed invention in view of the prior art and either allow or reject all or some of the claims, as amended. This process will continue until the Examiner either allows the claims or makes the rejection "final" (often after the second Office Action).

If the rejection is made final, the attorney may find it necessary to file a divisional application claiming separate and distinct inventions; a continuation-in-part (CIP) application to add information that was not part of the original disclosure; or a continuation application in which a new application is filed including only the information contained in the original application. In such an event, you will be asked to provide further information such as: additional characteristics distinguishing your invention from the cited references, changes you have made or plan to make to your invention, and any additional uses of your invention. In some situations, it may be appropriate to appeal a final rejection to the PTO's Board of Appeals.

The cost of prosecution and the likelihood of getting commercially useful claims helps OTL determine the course of patent prosecution. If licensed, the licensee typically has input into the decision as to how to/whether to pursue a patent.

Patent prosecution often takes many years before a patent is granted. Once granted, a U.S. patent is presumed valid and enforceable for 20 years from the earliest filing date. Non-U.S. patents have varying patent terms and, if granted, are usually effective as of the filing date. If patentable, non-U.S. patent applications are generally filed within one year after the U.S. filing date.