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  • Frequently Asked Questions

    • What are my Obligations as an Inventor on a Patent Application?

      We need you to work with OTT and with Rice’s attorneys to prepare draft applications and to give your input on responses to office actions. From time to time, there will also be additional legal documents that must be signed by the inventors and filed with the USPTO or other national patent offices in order for the patent to issue. If you have a patent application pending, it’s critical that you keep an eye out for correspondence from our office, help us stay in touch with inventors who move on from Rice (e.g. students or postdocs who move to new roles) and provide us with signed documents in time to meet legal deadlines – if you don’t do so, it can severely harm your chances of getting a patent application issued.

    • Why do they Call it “Patent Prosecution?”

      This may be a little bit of an archaic use of “prosecution” – in the sense of “the carrying out, performance, or practice of a pursuit, occupation, craft, etc.” or possibly “effort… to obtain or get possession of something.” So, “patent prosecution” is the entire process of filing a patent application, responding to office actions from the US or other national patent office, and following up to have a patent issued. This is distinct from “patent litigation,” which would involve someone taking legal action (such as filing a lawsuit) against someone else for alleged infringement of a patent.

    • What is an “Office Action?”

      Directly from the USPTO: “An Office action is written correspondence from the patent examiner that requires a properly signed written response from the applicant in order for prosecution of the application to continue. Moreover, the reply must be responsive to each ground of rejection and objection made by the examiner.” Office actions lay out in writing a patent examiner’s reasons for rejecting claims or objecting to the patent application on legal grounds. When the USPTO or other national patent office issues an office action, Rice’s patent attorneys report it to our office, and we in turn work with the attorneys and our inventors to draft an appropriate response, which may include arguments against the examiner’s rejections of the claims, or amendments to the claims that address the examiner’s rejections, or both. Responses to office actions must be made by the deadline specified by the patent office; otherwise, the patent application is considered to be abandoned.

    • How Long Does the Typical Patent Process Take?

      It’s usually several years from the filing of a provisional application to receiving a notice of allowance. After filing a provisional, you have a deadline 12 months later to convert it to a non-provisional application. From there, we can either file directly in the United States, or file a PCT application, which is a placeholder application that allows you to later decide whether to file in the US or in most other countries in the world.

      If we file a PCT application, we have to select which countries to file in 18 months after the PCT filing date (which is 30 months after the provisional filing date) – and it’s only after filing in a specific country that the patent application is even put in a queue to be examined. We then have to wait for the USPTO or other national patent office to examine the application and send office actions. It can take several months or even years before we receive the first office action on an application. It is typical to go through several rounds of office actions and responses before an examiner either decides to allow a set of claims to issue or we decide to abandon an application because it is clear the examiner will not allow any meaningful claims to issue.

    • How Does Rice Choose What Countries to File Patent Applications in?

      The usual path is to file a United States provisional application, then at the conversion deadline 12 months later, decide whether to convert to either a US utility application or PCT application. We might choose to file a PCT application if a technology is not licensed and we want to preserve our ability to later file outside the United States if we can find a licensee before the deadline. Due to the high cost of filing and maintaining non-US patent applications, it is Rice’s practice not to file patent applications outside the US for technologies that are not licensed. For technologies that are licensed exclusively, we request the licensee’s input as to where to seek patent protection and almost always file accordingly, provided that the licensee is in compliance with the terms of their license agreement.

    Mission & Vision

    When we make an investment in patent protection for new technology, our goal is to file and pursue patent applications that provide a broad scope of protection and are directed to commercially relevant applications in order to create value for Rice’s commercial partners. Our office facilitates interactions with Rice’s patent attorneys, soliciting feedback from the Rice inventors, to ensure that Rice’s patent applications capture the full commercial scope of our technologies. When technology is licensed by a company, we also work with the licensee to make sure that the intellectual property they license provides the right level of protection for the products and services they intend to provide.


    Functions & Timing

    For an initial patent filing on new technology, our office selects an outside patent attorney with expertise in the technology space the disclosure fits into, sends them the disclosure and any supporting materials, and asks them to prepare a draft patent application for the inventors and OTT to review. Usually, there are several rounds of revisions before all parties are happy with the application and it can be filed. At a minimum, this process usually takes several weeks. In order to improve the quality of the patent application and help the drafting process go quickly and smoothly, please make sure you send as much supporting data as possible to our office at the start of this process so that we can provide all the relevant information to the attorneys from the beginning.

    The typical path for a patent application at Rice is to start by filing a United States provisional patent application. One year after a provisional application is filed, there is a legal deadline to either file a non-provisional application or to abandon the application entirely. This is typically the first point at which we reassess with the inventors whether we want to continue to seek IP protections for this technology. As the primary reason to file and maintain patent applications is to create value for a licensee and put technologies into use for the public benefit, we use all the various legal deadlines in the patent process as opportunities to assess whether there is still commercial value in maintaining the application.

    If we do move forward, we can either file directly in the United States, or file a PCT application, which is a sort of international placeholder application that allows you to decide later whether to file in the US and/or in most other countries in the world.

    If we file a PCT application, we have to select which countries to file in 18 months after the PCT filing date (which is 30 months after the provisional filing date) – and it’s only after filing in a specific country that the patent application is even put in a queue to be examined. It can take several years and several rounds of responses with the patent office/examiner before a patent will actually issue. Your involvement throughout this process to assist our office and the patent attorneys with responding to office actions and arguing for claims to be allowed is crucial. It is typical to go through several rounds of office actions and responses before an examiner either decides to allow a set of claims to issue or we decide to abandon an application because it is clear the examiner will not allow any meaningful claims to issue.

    Please understand that due to the high cost of filing and maintaining non-US patent applications, it is Rice’s practice not to file patent applications outside the United States for technologies that are not licensed. For technologies that are exclusively licensed, we work closely with the licensee on patent prosecution and request their input as to where to seek patent protection and almost always file accordingly, provided that the licensee is in compliance with the terms of their license agreement.

    The timeline below provides an overview of the patent filing and prosecution process:

    300-Patent-Filing-and-Prosecution-Timeline

    For additional information on the patent prosecution process and the ways we need inventors to stay involved throughout, please see our IP FAQs at the top right-hand side of this page. If you have any questions not covered by the FAQs, please reach out to techtran@rice.edu.

    Next Steps

    After a provisional application is filed, we will check in with you a few months before the deadline to convert to a non-provisional application to reassess our strategy for IP protection and discuss any new data that may be included in the conversion/non-provisional application. While we have a non-provisional patent application pending, we will periodically receive office actions that require the inventors’ assistance in responding to. Your active assistance throughout the entire patent prosecution is critical to ensure that we get the strongest possible protection for your invention. It is extremely difficult to prosecute and maintain patent applications without the involvement of the inventors.

    While a patent application is pending, our licensing team will be actively working with you to fulfill our agreed-upon commercialization plan, whether this is through marketing the technology to potential licensees, keeping in touch about the formation of a new startup company, or some other strategy.

    Furthermore, at various points in our marketing and licensing efforts, it may be desirable to enter into various kinds of agreements with outside companies to assist their evaluation of a technology. For example, a confidentiality agreement can allow you to share unpublished data and patent applications with a company and allow the company to share confidential information about business goals that your technology may help them achieve. Or, you may want to send or receive materials to demonstrate a technology’s potential uses, which usually requires a material transfer agreement that lays out the materials’ permitted uses. OTT’s contracts group manages the process of getting these and other industry-related contracts in place.

    Patent Prosecution and Review

    Mission & Vision

    When we make an investment in patent protection for new technology, our goal is to file and pursue patent applications that provide a broad scope of protection and are directed to commercially relevant applications in order to create value for Rice’s commercial partners. Our office facilitates interactions with Rice’s patent attorneys, soliciting feedback from the Rice inventors, to ensure that Rice’s patent applications capture the full commercial scope of our technologies. When technology is licensed by a company, we also work with the licensee to make sure that the intellectual property they license provides the right level of protection for the products and services they intend to provide.


    Functions & Timing

    For an initial patent filing on new technology, our office selects an outside patent attorney with expertise in the technology space the disclosure fits into, sends them the disclosure and any supporting materials, and asks them to prepare a draft patent application for the inventors and OTT to review. Usually, there are several rounds of revisions before all parties are happy with the application and it can be filed. At a minimum, this process usually takes several weeks. In order to improve the quality of the patent application and help the drafting process go quickly and smoothly, please make sure you send as much supporting data as possible to our office at the start of this process so that we can provide all the relevant information to the attorneys from the beginning.

    The typical path for a patent application at Rice is to start by filing a United States provisional patent application. One year after a provisional application is filed, there is a legal deadline to either file a non-provisional application or to abandon the application entirely. This is typically the first point at which we reassess with the inventors whether we want to continue to seek IP protections for this technology. As the primary reason to file and maintain patent applications is to create value for a licensee and put technologies into use for the public benefit, we use all the various legal deadlines in the patent process as opportunities to assess whether there is still commercial value in maintaining the application.

    If we do move forward, we can either file directly in the United States, or file a PCT application, which is a sort of international placeholder application that allows you to decide later whether to file in the US and/or in most other countries in the world.

    If we file a PCT application, we have to select which countries to file in 18 months after the PCT filing date (which is 30 months after the provisional filing date) – and it’s only after filing in a specific country that the patent application is even put in a queue to be examined. It can take several years and several rounds of responses with the patent office/examiner before a patent will actually issue. Your involvement throughout this process to assist our office and the patent attorneys with responding to office actions and arguing for claims to be allowed is crucial. It is typical to go through several rounds of office actions and responses before an examiner either decides to allow a set of claims to issue or we decide to abandon an application because it is clear the examiner will not allow any meaningful claims to issue.

    Please understand that due to the high cost of filing and maintaining non-US patent applications, it is Rice’s practice not to file patent applications outside the United States for technologies that are not licensed. For technologies that are exclusively licensed, we work closely with the licensee on patent prosecution and request their input as to where to seek patent protection and almost always file accordingly, provided that the licensee is in compliance with the terms of their license agreement.

    300-Patent-Filing-and-Prosecution-Timeline

    For additional information on the patent prosecution process and the ways we need inventors to stay involved throughout, please see our IP FAQs at the top right-hand side of this page. If you have any questions not covered by the FAQs, please reach out to techtran@rice.edu.

    Next Steps

    After a provisional application is filed, we will check in with you a few months before the deadline to convert to a non-provisional application to reassess our strategy for IP protection and discuss any new data that may be included in the conversion/non-provisional application. While we have a non-provisional patent application pending, we will periodically receive office actions that require the inventors’ assistance in responding to. Your active assistance throughout the entire patent prosecution is critical to ensure that we get the strongest possible protection for your invention. It is extremely difficult to prosecute and maintain patent applications without the involvement of the inventors.

    While a patent application is pending, our licensing team will be actively working with you to fulfill our agreed-upon commercialization plan, whether this is through marketing the technology to potential licensees, keeping in touch about the formation of a new startup company, or some other strategy.

    Furthermore, at various points in our marketing and licensing efforts, it may be desirable to enter into various kinds of agreements with outside companies to assist their evaluation of a technology. For example, a confidentiality agreement can allow you to share unpublished data and patent applications with a company and allow the company to share confidential information about business goals that your technology may help them achieve. Or, you may want to send or receive materials to demonstrate a technology’s potential uses, which usually requires a material transfer agreement that lays out the materials’ permitted uses. OTT’s contracts group manages the process of getting these and other industry-related contracts in place.

    Frequently Asked Questions

    • What are my Obligations as an Inventor on a Patent Application?

      We need you to work with OTT and with Rice’s attorneys to prepare draft applications and to give your input on responses to office actions. From time to time, there will also be additional legal documents that must be signed by the inventors and filed with the USPTO or other national patent offices in order for the patent to issue. If you have a patent application pending, it’s critical that you keep an eye out for correspondence from our office, help us stay in touch with inventors who move on from Rice (e.g. students or postdocs who move to new roles) and provide us with signed documents in time to meet legal deadlines – if you don’t do so, it can severely harm your chances of getting a patent application issued.

    • Why do they Call it “Patent Prosecution?”

      This may be a little bit of an archaic use of “prosecution” – in the sense of “the carrying out, performance, or practice of a pursuit, occupation, craft, etc.” or possibly “effort… to obtain or get possession of something.” So, “patent prosecution” is the entire process of filing a patent application, responding to office actions from the US or other national patent office, and following up to have a patent issued. This is distinct from “patent litigation,” which would involve someone taking legal action (such as filing a lawsuit) against someone else for alleged infringement of a patent.

    • What is an “Office Action?”

      Directly from the USPTO: “An Office action is written correspondence from the patent examiner that requires a properly signed written response from the applicant in order for prosecution of the application to continue. Moreover, the reply must be responsive to each ground of rejection and objection made by the examiner.” Office actions lay out in writing a patent examiner’s reasons for rejecting claims or objecting to the patent application on legal grounds. When the USPTO or other national patent office issues an office action, Rice’s patent attorneys report it to our office, and we in turn work with the attorneys and our inventors to draft an appropriate response, which may include arguments against the examiner’s rejections of the claims, or amendments to the claims that address the examiner’s rejections, or both. Responses to office actions must be made by the deadline specified by the patent office; otherwise, the patent application is considered to be abandoned.

    • How Long Does the Typical Patent Process Take?

      It’s usually several years from the filing of a provisional application to receiving a notice of allowance. After filing a provisional, you have a deadline 12 months later to convert it to a non-provisional application. From there, we can either file directly in the United States, or file a PCT application, which is a placeholder application that allows you to later decide whether to file in the US or in most other countries in the world.

      If we file a PCT application, we have to select which countries to file in 18 months after the PCT filing date (which is 30 months after the provisional filing date) – and it’s only after filing in a specific country that the patent application is even put in a queue to be examined. We then have to wait for the USPTO or other national patent office to examine the application and send office actions. It can take several months or even years before we receive the first office action on an application. It is typical to go through several rounds of office actions and responses before an examiner either decides to allow a set of claims to issue or we decide to abandon an application because it is clear the examiner will not allow any meaningful claims to issue.

    • How Does Rice Choose What Countries to File Patent Applications in?

      The usual path is to file a United States provisional application, then at the conversion deadline 12 months later, decide whether to convert to either a US utility application or PCT application. We might choose to file a PCT application if a technology is not licensed and we want to preserve our ability to later file outside the United States if we can find a licensee before the deadline. Due to the high cost of filing and maintaining non-US patent applications, it is Rice’s practice not to file patent applications outside the US for technologies that are not licensed. For technologies that are licensed exclusively, we request the licensee’s input as to where to seek patent protection and almost always file accordingly, provided that the licensee is in compliance with the terms of their license agreement.