Patents provide their assignee the right to prevent others from making, using, or selling the patented invention, they are one of the most common form of protection for inventions, and can cover compositions of matter, methods of use, processes, machines and even new methods of use of known compositions.
An issued patent provides the inventors with a monopoly on making, practicing and selling the invention for the patent term (usually 20 years from the application date).
Patents are expensive to file, prosecute to issuance, and maintain after issuance, therefore the UILO will only file patent applications for inventions that, in our assessment, either have:
- a reasonable expectation of recouping a multiple of the patenting costs; or,
- have a strategic importance to UBC, through the promotion of societal or academic benefit.
The fundamental question when deciding whether to file a patent application is not whether a patent can be obtained, but rather what the scope and commercial/strategic value of the patent will be. in order to establish this, the UILO will not ordinarily commence filing patent applications until the full assessment of a technology is complete (within ninety days of disclosure to the UILO). The UILO has now developed a special procedure to allow researchers to pay for the UILO to file a provisional patent application prior to completion of the assessment process.
In order for an invention to obtain patent protection, it must meet the following general criteria:
- Novelty: The invention cannot have been publicly disclosed, prior to the filing, or priority date, by the inventor or any other party. Any form of public disclosure, including talks, web postings, conference posters, or academic publications will result in the loss of patent rights in most of the world. However, there are exceptions in a few countries that offer a one year grace-period after a public disclosure. These countries include the US, Australia and Canada.
The UILO will undertake a rigorous search of the patent and journal literature prior to patent filing, in order to ensure that the invention is novel and to determine the scope of likely protection an issued patent will ultimately afford.
- Non-obviousness: This is a complex and evolving area of patent law but, fundamentally, an invention is patentable only if its conception is not considered to be obvious to a person skilled in the field of research. Obviousness objections may arise if a patent examiner can combine two or more known components or bodies of knowledge in a manner that "suggests" the new invention, even if the suggestion does not specifically enable the invention to be made or used. This requirement varies by country and has recently become substantially more difficult to meet in the US Patent and Trademark Office.
- Usefulness: This requirement is the lowest bar to patenting and is generally easily met. This criterion is used to prevent the patenting of inoperable devices, such as perpetual motion machines.
It is also important to remember that inventions can be patented, but mere ideas cannot. Inventions require the enablement of an idea.
The UILO works with a number of patent agents who have expertise in various disciplines, and a UILO technology transfer manager acts as the contact with the patent agent. Upon the UILO's decision to file a patent application, the cost of patent filing is funded by UBC through the UILO.
Inventors are expected to take an active role in providing the information and expertise for the technical aspects of the patent filing, and are named on the patent as the inventor(s).
If the UILO decides to file a patent application on a disclosed invention, it will determine the appropriate patenting strategy and the types of filing depending upon the nature of the invention and its commercial potential. In most cases, patenting will begin with the filing of a provisional patent.