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Patent Process

Terms to Know

  • What is a patent?

    A patent is an agreement between the U.S. government and the inventor(s) in which they agree to an exchange wherein the U.S. gives the inventor(s) the exclusive right to benefit from their invention for a period of years. In exchange, the inventor discloses to the public the knowledge of what the invention is, how to make it, and how to use it.

  • What is a provisional patent application?

    The U.S. Patent and Trademark Office (USPTO) offers inventors the option of initially filing a provisional application for a patent. The provisional application is designed to provide a lower-cost initial patent filing in the United States. A provisional application is not required to name the inventors or to have a formal patent claim or an oath or declaration, and it lasts 12 months from the date the provisional application is filed. At the end of the 12-month period, the provisional application is converted to a formal, or nonprovisional, application to be reviewed and examined by the USPTO.

  • What does the "first-to-file" rule mean?

    In 2013, the America Invents Act went into effect. It states that the first person to file a patent on an invention owns the rights to that invention. Because of this Act, the rule now in the U.S., as well as in the rest of the world, is that the first to file a patent application will be awarded the patent, regardless of who invented it first.

  • What is the United States Patent and Trademark Office (USPTO)?

    The USPTO is the federal agency organized under the Department of Commerce that administers patents on behalf of the U.S. government. The USPTO employs patent examiners skilled in all technical fields in order to appraise patent applications. The USPTO also issues federal trademark registrations.

Patenting Process

  • What is the patenting process?

    Once OTD determines that the product can be patented, a patent attorney retained by the Office for Technology Development drafts and files a patent application with the U.S. Patent and Trademark Office (USPTO). Depending on the USPTO backlog, in about one year or longer, the patent attorney will receive a written notice telling whether the USPTO has accepted or rejected the application and its claims. The USPTO letter is called an “Office Action” or “Official Action.”

    If an application is rejected, the patent attorney will file a written response. This procedure is called “patent prosecution.” Often, it takes several Official Actions and responses by the patent attorney before an application is resolved and the USPTO agrees to issue a patent. Patent examination can take many years. Patent examiners look for a variety of qualities, including:

    • Eligibility
    • Novelty
    • Obviousness
    • Sufficient description
    • Enablement
    • Specificity of the claim language
    • Patentable utility of the claimed invention

Patentable Inventions

  • Are all inventions patentable?

    No, not all inventions are patentable. Patentable inventions are defined in the Patent Act. To be patentable, an invention must be useful, novel, and non-obvious. This means:

    • An invention must not have been previously described in a publication.
    • It must have some real-world use.
    • It cannot be something found in nature or be a naturally occurring process.
    • In the judgment of a person of ordinary skill in the art, the invention must not be obvious when looked at in comparison to prior literature in that field.
    • Inventions comprised of combining known elements whose combination is non-obvious may be patentable, as are new uses for previously known compositions or devices.

    The conditions for patentability constitute a very large body of law, and UT Southwestern retains professional and experienced patent attorneys to apply for patents on our inventions. The Office advances all legal fees and costs; the UT Southwestern inventor does not have to provide any such funding.

  • How does UT Southwestern decide to patent inventions?

    Filing a patent application is an expensive process. Thus, before UT Southwestern files any patent application on behalf of the Board, it considers the following with respect to the invention:

    • Needs of a patient population or research community
    • Commercial utility
    • Obligations to the sponsors of the research
    • Competitive superiority
    • Necessity for extensive development work
    • Licensee interest
  • How is inventorship determined?

    Inventorship is determined in accordance with U.S. patent law. Inventorship is limited to those individuals who have made an intellectual contribution to the conception of the invention, embodied by one or more claims described in the patent application.

    The Office for Technology Development does not determine who should be named as an inventor. This is the responsibility of outside attorneys assigned to the file. No individual at UT Southwestern can decide inventorship, although it is important to identify any individuals connected with the project.

    Inventorship may be amended by attorneys during the course of patent prosecution.

    Sometimes, patent prosecution may require dividing the claims into separate applications, which may require amendment of the inventors on each case.

    In rare circumstances, an inventor may be named in the case in error, or an inventor may have been omitted. Provided there was no intent to deceive the USPTO, these errors may be corrected. In fact, it is important to correct any such errors. If inventors are intentionally named incorrectly, any resulting patent may be invalidated.

  • Can software be patented?

    Yes, software can be patented, but in many cases, copyrighting the software provides adequate protection much more efficiently. In some cases, it may be most practical to keep the source code unpublished and resident within computers on local drives or within cloud-based applications.

    Under Board policy, software created by faculty, staff, and students for educational or training purposes is not owned by the Board of Regents. Where the creator or author may own the copyright, educational uses are still reserved to UT Southwestern. For this reason, the OTD encourages the disclosure of the software to the Office by submitting an invention disclosure through the Sophia Invention Disclosure Portal. Any media that creators intend to protect should carry the software copyright (e.g., “Copyright, UT Southwestern Medical Center, [Year]”). Policies and instructions on public release of software source code developed by UT Southwestern faculty, trainees, and employees.

  • How can I preserve UT Southwestern’s ability to claim patent rights?

    To preserve U.S. patent rights, a patent application must be filed within one year of an “enabling” public disclosure of the invention. Enabling means a description that teaches what the invention is and how it is made. But, to preserve foreign patent rights, a patent application must be filed before any enabling public disclosure of the invention. An inventor should complete an invention disclosure through the Sophia Invention Disclosure Portal describing an invention to facilitate the filing of a patent application before disclosing it to the public.

    An enabling public disclosure may occur when a poster, abstract, or manuscript appears in public. Posting anything on the internet and speaking to an audience that may include individuals not employed by UT Southwestern can also be an enabling public disclosure.

Patenting and Publishing

  • What is the effect on patenting if I publish the results of my research?

    Publishing or presenting your research results can prevent OTD from obtaining patent protection, so it is important to submit an invention disclosure through the Sophia Invention Disclosure Portal. Contact your Department Liaison with any questions you may have prior to any publication or presentation. Whenever the OTD receives an invention disclosure, the Office will ask what the publication plans are in order to arrange for a patent application filing in advance of the publication. The OTD will not block, delay, or otherwise interfere with publication plans.