Patents and other Legal Protection
What is a patent?
A patent gives the holder the right to exclude others from making, using, selling, offering to sell, and importing the patented invention. A patent does not necessarily provide the holder any affirmative right to practice a technology since it may fall under a broader patent owned by others. Instead, it provides the right to exclude others from practicing the invention. Patent claims are the legal definition of an inventor’s protectable invention.
What type of subject matter can be patented?
Patentable subject matter includes processes, machines, compositions of matter, articles, some computer programs, and methods (including methods of making compositions, methods of making articles, and even methods of performing business).
Can someone patent a naturally occurring substance?
Generally, no. A natural substance that has never before been isolated or known may be patentable in some instances but only in its isolated form (since the isolated form had never been known before). A variation of a naturally occurring substance may be patentable if an inventor is able to demonstrate substantial non-obvious modifications that offer advantages of using the variant.
What is the definition of an inventor on a patent and who determines this?
An inventor is a person who takes part in the conception of the ideas in the patent claims of a patent application. By virtue of this definition, inventorship of a patent application may change as the patent claims are changed during prosecution of the application. An employer or person who only furnishes money to build or practice an invention is not an inventor. Inventorship is a legal issue and may require an intricate legal determination by the patent attorney prosecuting the application.
Who is responsible for patenting?
UCC Innovation is responsible contracts with outside patent agents for IP protection thus assuring access to patent specialists in diverse technology areas. Inventors work with the patent agent in drafting the patent applications and responses to worldwide patent offices. UCC Commercialisation Case Managers will help with the selection and oversight of the outside patent agent.
Is there such a thing as a provisional patent?
No, however there is a provisional patent application, which is described below.
What is a provisional patent application?
A provisional patent applications can provide a tool for preserving patent rights while temporarily reducing costs. This occurs because the application is not examined during the year in which it is pending and claims are not required. A regular patent application and related foreign applications must be filed within one year of the provisional form in order to receive its early filing date (priority date). However, an applicant only receives the benefit of the earlier filing date for material that is adequately described and enabled in the provisional application. As a result, the patent agent may need your assistance when an application is filed as a provisional.
What’s different about foreign patent protection?
Patent protection is subject to the laws of each individual country, although in a general sense the process works much the same. In most countries, however, including Ireland, an inventor will lose any patent rights if he or she publicly discloses the invention prior to filing the patent application.
Is there such a thing as an international patent?
Although an international patent does not exist, an international agreement known as the Patent Cooperation Treaty (PCT) provides a streamlined filing procedure for most industrialized nations. A PCT application is generally filed one year after the corresponding initial (provisional) application has been submitted. The PCT application must later be filed in the national patent office of any country in which the applicant wishes to seek patent protection, generally within 30 months of the earliest claimed filing date (the Priority date).
The PCT provides two advantages.
- It delays the need to file costly foreign applications until the 30-month date, often after an applicant has had the opportunity to further develop, evaluate and/or market the invention for licensing.
- The international preliminary examination often allows an applicant to simplify the patent prosecution process by having a single examiner speak to the patentability of the claims, which can save significant costs in prosecuting foreign patent applications.
What is the timeline of the patenting process and resulting protection?
Currently, the average patent application is pending for about 4-5 years, though inventors in the biotech and computer fields should plan on a longer waiting period. Once a patent is issued, it is enforceable for 20 years from the initial filing of the application that resulted in the patent if patent office maintenance fees are paid.
Why does UCC protect some intellectual property through patenting?
Patent protection is often a requirement of a potential commercialisation partner (licensee) because it can protect the commercial partner’s often sizable investment required to bring the technology to market. Due to their expense and the length of time required to obtain a patent, patent applications are not possible for all UCC intellectual property. We review the commercial potential for an invention before investing in the patent process. However, because the need for commencing a patent filing usually precedes finding a licensee, we look for creative and cost-effective ways to seek early protections for as many promising inventions as possible.
Who decides what gets protected?
UCC Innovation and the inventor(s) consider relevant factors in making recommendations about filing patent applications. Based on a recommendation from the Commercialisation Case Manager, the UCC Director of Innovation ultimately makes the final decision as to whether to file a patent application or seek another form of protection.
What does it cost to file for and obtain a patent?
Filing a regular patent application may cost between €4-6,000.
A PCT application usually costs €10,000-€12,000. A national application in the USA and Europe costs €12,000 to €15,000 followed by individual national filing costs in each European country (and translations where required) and will continue to increase if protection in further countries (Japan, Canada, Australia, China) is also sought. Also, once a patent is issued in any country, certain maintenance fees are required to keep the patent alive. The full patenting process through the lifetime of the patent can easily reach €150,000
What if I created the invention with someone from another institution or company?
If you created the invention under a sponsored research or consulting agreement with a company the UCC Innovation Commercialisation Case Manager will need to review that contract to determine ownership and other rights associated with the contract and to determine the appropriate next steps. Should the technology be jointly owned with another academic institution, the Commercialisation Case Manager will usually enter into an “inter-institutional” Joint Ownership and Management Agreement (JOMA) that provides for one of the institutions to take the lead in protecting and licensing the invention, sharing of expenses associated with the patenting process and allocating any licensing revenues. If the technology is jointly owned with another company, the Commercialisation Case Manager will work with the company to determine the appropriate patenting and licensing strategy.
Will UCC initiate or continue patenting activity without an identified licensee?
Often UCC accepts the risk of filing a patent application before a licensee has been identified. After UCC rights have been licensed to a licensee, the licensee generally pays the patenting expenses. At times we must decline further patent prosecution after a reasonable period (often a year or two) of attempting to identify a licensee (or if it is determined that we cannot obtain reasonable claims from the PTO).
What is a copyright and how is it useful?
Copyright is a form of protection provided by law to the authors of “original works of authorship.” This includes literary, dramatic, musical, artistic, and certain other intellectual works as well as computer software. This protection is available to both published and unpublished works. Irish Copyright & Related Rights Act, 2000-2007 generally gives the owner of copyright the exclusive right to conduct and authorize various acts, including reproduction, public performance and making derivative works. Copyright protection is automatically secured when a work is fixed into a tangible medium such as a book, software code, video, etc.
What is a derivative work?
A “derivative work” is a work based upon one or more pre-existing works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship, is a “derivative work.” The owner of a copyright generally has the exclusive right to create derivative works.
How do I represent a proper UCC copyright notice?
Although copyrightable works do not require a copyright notice, we recommend that you use one. For works owned by the UCC, use the following template: © [Year of first publication] University College Cork. (e.g., © 2023 University College Cork).
What is a trademark or service mark and how is it useful?
A trademark includes any word, name, symbol, device, or combination, that is used in commerce to identify and distinguish the goods of one manufacturer or seller from those manufactured or sold by others, and also to indicate the source of the goods. In short, a trademark is a brand name. A service mark is any word, name, symbol, device, or combination that is used, or intended to be used, in commerce to identify and distinguish the services of one provider from those of others, and to indicate the source of the services. UCC Innovation would consider registering a trade mark if it is important that your customers are able to distinguish products and services based on our IP from those of your competition if you have used a particular title or phrase to describe your invention on a regular basis