Patents
“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.
Please see other commonly asked questions below:
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.
What is an “Office Action?”
"...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.” -From the USPTO
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.
Patents
An invention disclosure or disclosure is the first notification that an invention has been created, and establishes the description and chronology of an invention.
Invention disclosures include a detailed description of an invention that explains how it was created or developed. Moreover, it explains the importance of the invention, why it improves on current designs, and what differentiates and distinguishes the invention from other prior art. This is important, as it allows OTT to understand what potential paths toward IP protection and commercialization can occur.
Please see other commonly asked questions below:
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.
What is an "Office Action"?
"...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.” -From the USPTO
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.