// WHAT IS A PATENT?

A patent is a property right granted to an inventor by the government. This right gives the inventor the opportunity to "exclude others from making, using or selling the invention" in the country where issued, generally for a term of 20 years (as in U.S.) from the date of filing the application.

The United States Patent and Trademark Office ("USPTO") will publish your patent application about eighteen months after you file it. Once a patent application is published, anyone can access the file, including all correspondence between our patent counsel and the USPTO during the pendency of the application.

// WHAT CAN BE PATENTED?

UTILITY PATENTS are granted for any new process, method, machine, manufacture, or compositions of matter, or any new and useful improvement thereof. Most UCLA inventions fall under this category.

DESIGN PATENTS are granted for new, original and ornamental design for an article of manufacture. The appearance of the article is protected. This concept is more commonly associated with commercial products, such as shampoo bottles.

PLANT PATENTS are granted for distinct and new varieties of plants that have been invented or discovered and asexually reproduced.

// WHAT OTHER STANDARDS MUST AN INVENTION MEET?

NEW -- The invention must be a new idea. It is not patentable if the invention is known or used by others, or described in a publication anywhere in the world, more than one year prior to the application for a US patent. It is important for inventors to be able to describe how their inventions differ from the existing knowledge (called "prior art").

NON-OBVIOUS -- The subject matter sought to be patented must be sufficiently different from what has been used or described before that it cannot be said to be obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one material for another, or changes in size, are ordinarily not patentable unless the effect is a surprise.

USEFUL -- The invention must have a useful effect or a purpose. If there is no use for the invention, it is not patentable.

// WHAT ARE THE EFFECTS OF PUBLICATION?

Publishing your invention risks making it not "new" as required for a patent filing. It is therefore best if you disclose your invention to OIPA before you publish it, so that we can decide whether to file a patent application before rights are lost. Often, faculty members will give us a first draft of a manuscript before submitting it for publication. That way, your publication schedule is unaffected while your invention review is expedited. You should then let us know as soon as you find out if your submission is accepted.

In some cases, a publication does not act as a patent bar. The test is whether your publication is considered "enabling" -- in other words, whether someone ordinarily skilled in your field, with the right time and equipment, would know how to duplicate or practice your invention based on the information disclosed in your publication.

Oral disclosure and poster presentations can have same barring effect as printed publication. If you give an enabling disclosure/publication before filing a patent application, foreign patent rights are lost. The USPTO allows a one year grace period to file after such disclosure.

OIPA staff are happy to help you approach business or commercial partners without triggering a patent bar. OIPA will handle secrecy agreements, which make the disclosure non-barring.

// WHO IS AN INVENTOR?

Determining who is named as an inventor on a patent is a legal decision rather than a choice made among participants, and therefore is different from authorship. Only those individual(s) who furnish an idea, not the employer or the person who pays for the development of the idea, can be named as inventors. An inventor is the one who first conceives of the invention in sufficient detail that someone skilled in the art could reproduce the invention.

If two or more persons work together to make an invention, and each had a share in the ideas forming the invention, they are joint inventors. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor.

// HOW DOES OIPA DECIDE WHETHER TO SEEK A PATENT?

OIPA is responsible for managing UCLA inventions. The staff of OIPA will decide whether to pursue a patent application for a particular invention (called "patent prosecution").

• All UCLA employees signed a Patent Acknowledgement Form that requires you to disclose to OIPA any potentially patentable invention you create while employed by the university, whether or not university resources are utilized. See, UC Patent Acknowledgement Form: http://www.ucop.edu/ott/patentpolicy/patentac.html
• To assist with your disclosure obligation, OIPA has created an Invention Disclosure Form that you can easily access online and send to us either electronically or in hard copy. Generally, the best time to disclose is just after you have reduced the invention to practice and before you make an enabling disclosure. See, UCLA Invention Disclosure Form: http://www.research.ucla.edu/forms/invention_report.doc

Patentability is a legal determination and if your invention does not appear to fit the legal requirements, OIPA will not pursue a patent application. Patenting is also extremely expensive, often costing $20,000 to $100,000 for domestic and/or international patent protection, so OIPA must weigh the balance of interests in deciding whether it is the best use of public university resources to pursue a patent application for a particular invention. In many cases, OIPA will not initiate the patent prosecution process, or will later discontinue the process if started, unless a licensee agrees to pay the patenting costs. There are exceptions where OIPA will partially or fully fund a patent application, in which case your licensing officer will discuss that with you.

A decision by OIPA not to patent is by no means a rejection of your invention. Your invention may have enormous scientific merit but may not fit the legal requirements of patentability. Alternatively, your invention may be interesting but not commercially viable so as to justify the costs of obtaining a patent. Although your invention may not be patented, it can still be put to very good use. Remember that if you publish your technology without patenting it, the technology becomes part of the "public domain" and is available to the research community. You may use patented or unpatented technology to approach companies and organizations to collaborate with you on future research or ask them to directly fund your future projects. The staff of OIPA is happy to help with these efforts and to refer you to our other colleagues in the Office of Research Administration as appropriate to your needs.

// HOW ABOUT A QUICK OVERVIEW OF THE PATENT PROCESS?

DECISION TO FILE -- Remember that OIPA is responsible for deciding whether and when to file a patent application for UCLA inventions. That decision-making process is more fully described in the separate OIPA Pamphlet: "What Happens to Your Invention?" Once OIPA decides to file a patent application, the first step is to select appropriate patent counsel by area of expertise. Patent counsel may then take several weeks to prepare an adequate patent application. (Please note that if there is a very complete manuscript submitted with the Invention Report form, it is often possible to file a provisional application quickly if necessary and appropriate.)

INVENTOR V. APPLICANT - If OIPA files a patent application, you will continue to be the inventor, but you will be asked to assign your rights in the invention to The Regents of the University of California. An issued patent ultimately will list you as the inventor, and The Regents as the assignee. This assignment is standard and patent counsel will send it to you. OIPA and patent counsel will continue to keep you informed of the patent prosecution process and your input will be invaluable, although The Regents is now the patent applicant.

IF THERE IS A LICENSEE -- If OIPA has located a licensee for your invention, the licensee's input will be integral in the patenting process, since the licensee is responsible for creating a commercial plan and thus has a fairly clear idea of which aspects of your invention it needs to protect from competitors.

IF NO LICENSEE - If OIPA decides to file a patent applicant before locating a licensee, we often will start by filing a provisional patent application. That way, if a licensee is later located, it can still provide solid input into the patent process.

PROVISIONAL APPLICATION - The USPTO allows applicants to reserve their rights through what may be viewed as a one year "placeholder." A provisional application should fully describe the "best mode" of creating your invention and should, if possible, describe the aspects of the invention that you wish to protect (called "claims"). The benefits are that a provisional application can be filed quickly and less expensively; it does not trigger USPTO "office actions"; and, it gives OIPA an opportunity to locate a licensee to contribute to a later, more extensive filing.

U.S. UTILITY FILING - If a U.S. Utility application is filed, it is assigned by the USPTO to an examiner with expertise in the appropriate area of technology. The examiner will review the application for legal compliance and a determination of patentability, including a review of prior art to make sure that the invention submitted is new and nonobvious. The examiner will inform the applicant of its decision via correspondence called "office actions."

OFFICE ACTIONS - It is typical that the examiner will initially reject our claims and/or ask for amendment. This process of office actions and responses can last several rounds and may take several years to complete. OIPA and patent counsel may seek your input during this process for technical explanation of your invention. Once the examiner decides that an office action is "final," we can agree to the claims as accepted, request reconsideration, or appeal. Again, the process may take several months or years and may result in claims different from those initially filed. This process of patent prosecution is highly complex legally and technically, and the variations are innumerable. OIPA and patent counsel are happy to explain to you the outcome of your invention's patent application.

FOREIGN PROSECUTION - Since patents are issued by country, we must seek patent protection in each country where we believe we will need it. This process is also long and complex and extremely expensive. Again, we will seek input from the commercial licensee, if any, who wishes to sell or practice the invention in a particular country and so wants to preclude others from doing so.

RE-EXAMINATION BY OIPA - Due to the enormous expense involved in the patenting process, OIPA will sometimes re-examine a decision to pursue a patent application at any point in the process. This is particularly likely where either no licensee has been located after substantial marketing efforts and/or an initial licensee decides it no longer wants to pursue commercialization of the invention.

PATENTING RELATED INVENTIONS - Sometimes during the course of patent prosecution, we may split apart or add to a particular patent application, generally because the USPTO requires us to do so, or otherwise rejects claims that we wish to pursue, or because we want to add some new but related data to an application. These related applications are called continuations, divisionals, or continuations-in-part. OIPA and patent counsel are happy to explain these to you if they occur during your invention's patent application process.

// WHAT SHOULD AN INVENTOR DO?

It is best to disclose your invention to OIPA before you make an enabling publication, and to keep us informed of your publication schedule so that we do not lose potential patent rights. It is also important that you give OIPA a full disclosure of your technology in your initial invention disclosure report, and you keep us informed of any future changes, added data, or new discoveries, even after a patent is issued. See, UCLA Invention Disclosure Form: http://www.research.ucla.edu/forms/invention_report.doc

Your input in the marketing and patent prosecution process is appreciated and is often invaluable to OIPA and to patent counsel.

The staff of OIPA are happy to help with any questions you may have for us.

FOR FURTHER INFORMATION:
– UC Patent Policy: http://www.ucop.edu/ott/patentpolicy/first.html
– UC Patent Acknowledgement Form: http://www.ucop.edu/ott/patentpolicy/patentac.html
– UCLA Invention Disclosure Form: http://www.research.ucla.edu/forms/invention_report.doc
– OIPA Home Page: http://www.research.ucla.edu/oipa