The following is a list of terms frequently used in the technology transfer and commercialization process:
An actual or implied giving up of a patent application or invention by some positive act or failure to act within a reasonable or statutorily determined time.
An answer to an office action by a United States Patent and Trademark Office Examiner, usually modifying, correcting, adding or removing claims, correcting drawings and/or distinguishing prior art in an attempt to overcome objections to allowance of the application.
One who receives rights in a patent from another by an assignment (the signing over of a right).
Transferring all or part of one's ownership rights in a patent or intellectual property to another. You will be asked to assign your title in patent applications filed on your work to the University of Utah. You agreed to do this when you signed the patent policy when you joined the University.
One who assigns rights to a patent by an assignment
One of the requirements for a patent to be valid is that the inventors must have disclosed the best way of practicing the invention known to them as of the date the patent was filed.
Alternatively, seven months after filing the PCT application, the applicant can file a Chapter II request. An International Preliminary Examination Report will be issued, identifying prior art and whether the claims meet the standards for patentability. The decision as to whether and in which countries to seek National Phase applications is deferred till 18 months after the PCT filing. The cost is not reduced.
A numbered paragraph or paragraphs at the close of a patent application specifically stating what the inventor alleges as the invention. The claims define the legal scope of a patent.
This is the initial step in invention; the formulation of the idea which is the basis of the patent application.
Unlike a continuation-in-part (CIP), a continuation application does not add any new material. A continuation application may be filed, for example, after a final rejection by the USPTO in order to maintain the benefit of the original filing date.
Cooperative Research and Development Agreement (CRADA)
Confidential Disclosure Agreement (CDA)
A CDA or non-disclosure agreement (NDA) is crucial for an inventor or any other party who needs to protect confidential information. As the importance of the confidential information increases, so does the relative complexity of the Agreement.
A legal right of ownership attached to an original work which provides for protection for original works of authorship fixed in any tangible medium of expression which can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device (typically used for texts, software and visual and audio materials).
A document that you sign, under oath, as part of the patent application process in which you attest that you have read the patent and that you (or you and your co-inventors as the case may be) are the sole and true inventors of what is claimed in the patent application. The Declaration and Assignment are sometimes filed shortly after the patent application is filed. This is called "Filing Missing Parts."
Only one invention may be claimed in a patent application. If the patent examiner determines that an application contains more than one invention, the applicant will be asked to "elect" which invention will be prosecuted. The remaining invention(s) may then be prosecuted by means of a divisional application.
The study and evaluation of a patent application in the USPTO by a patent examiner to determine whether or not it is in proper form and of such a character that the invention described therein can be patented.
First to File
Most countries other than the U.S. and the Philippines have "first-to-file" patent systems, where the filing date of a patent application, and not the date of invention, determines which of competing inventors will obtain a patent and when their rights begin.
First to Invent
The U.S. and Philippine patent systems recognizes an inventor's right to a patent based upon the date of actual invention. Disputes are resolved via an Interference.
Using the invention described in a claim of a valid patent without license or consent of the owner of the patent rights.
A proceeding for the purpose of determining which of two or more applicants for patents on the same invention is the legally recognized inventor. Such an action may take place between two or more applicants, two or more holders of patents, or an applicant and a patentee. If there are competing inventors claiming the same invention and the PTO determines that each has met the standard for being granted a patent, the Board of Patent Appeals and Interferences (BOPAI) of the PTO follows an elaborate (and expensive) process called an "interference" to determine who will receive the patent. Good lab notebooks – bound, periodically signed and witnessed – are essential to win an interference. Companies tend to have more robust policies and procedures than Universities on lab records.
A term often used to refer generically to property rights created through intellectual and/or discovery efforts of a creator that are generally protectable under patent, trademark, copyright, trade secret, trade dress or other law.
One who contributes to the conception and reduction to practice of one or more of the claims in a patent application or patent.
The date on which the patent actually issues. This is not to be confused with the filing Date, which is the date the patent application was physically received by the USPTO.
The patent fees due at 4, 8 and 12 years needed to keep a U. S. utility or plant patent in force for its full life.
Material Transfer Agreement
A Material Transfer Agreement (MTA) is a document that is used by scientists and their institutions when they wish to transfer materials to other scientists and institutions. MTAs provided by outside organizations may contain clauses that are not consistent with the University of Utah policies and procedures and/or federal law. Signing one of these agreements could severely impede a scientist's ability to carry out his or her research or to publish in a timely fashion. It is important that all MTAs are evaluated and signed by an appropriate TVC representative.
This is an application filed in a country after the PCT application is filed. If, for example, you file an application in the U.S. on January 1, 2000, and you file an international application under the PCT on January 1, 2001, you can and must, if you want patent protection in the countries you designated in your PCT application, enter prosecution in those designated countries either 20 months or 30 months after your initial filing date of January 1, 2000. The applications filed in the designated countries are referred to as nationalized PCT applications. National phase applications are very expensive. Even a minimal "developed world" package of the European Patent Office, Japan, Canada and Australia is likely to cost $20,000 just for filing fees and translation costs.
Non Exclusive License
A grant under a patent with reservation by the licensor to make a similar grant to others.
A declaration issued by a government agency declaring someone the inventor of a new invention and having the privilege of stopping others from making, using or selling the claimed invention; a letter patent.
Patent Cooperation Treaty (PCT)
Under the PCT, a single international patent application can be filed in one language with one patent office–usually the US for us–in order to simultaneously seek protection for an invention in up to 117 countries throughout the world. The PCT usually claims priority to and must be filed within 12 months of the filing date of the provisional patent application. Although the PCT system does not provide for the grant of an international patent, the system:
Typically a form that contain statements indicating the character of an invention, its construction, operation and application. A full disclosure is a statement sufficient to indicate to a person skilled in the art to which it pertains the necessary information to practice an invention.
An examination of the publications and patents in the USPTO to determine the probable patentability of the invention.
The total body of knowledge, which teaches or otherwise relates directly to an invention. This is the primary criterion in determining the patentability of a new invention. It establishes novelty and unobviousness of the art that relates to the invention in question. Prior art references include documentary sources such as patents and publications from anywhere in the world, and non-documentary sources such as things known or used publicly.
In the United States, the term is used to designate the date an invention was first conceived and reduced to practice. Throughout the world, priority refers to the date a patent application was filed.
The prosecution of a patent application is the overall process conducted by a patent attorney before the U. S. Patent and Trademark Office.
Provisional Patent Application
An interim patent application that provides a one-year period for product development. A Provisional Application is not examined but can serve as the basis of priority for a later-filed application.
The length of time that a grant of ownership on intellectual property inures to the creator or owner. The term of a US patent is 20 years after filing the original patent application, except for extensions granted for various reasons.
In patent law, public disclosure of an invention would include a published paper or an abstract, slides presented at a meeting, a poster presentation, private correspondence and advertisements, and meetings with people and/or companies who have not executed a Confidential Disclosure Agreement.
Utility Patent Application
An application that can result in the issuance of a utility patent, which can protect novel, useful and non-obvious processes, machines, manufacture, or compositions of matter. A Utility patent has a term of 20 years from the application date.
Uniform Biological Materials Transfer Agreement (UBMTA)
This agreement has been implemented in an effort to streamline the process of transferring materials. The UBMTA is an MTA that NIH and more than 120 institutions have agreed to use. Among institutions that have signed the UBMTA Master Agreement, materials can be transferred upon execution of an Implementing Letter.