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Process

Patent Prosecution Process

Patent Prosecution Contact:
Joy Tsai
Office of Technology Transfer &
Business Development
Thomas Jefferson University
1020 Locust Street
Jefferson Alumni Hall, Suite M34
Philadelphia, PA 19107

(215) 955-6862
(215) 923-5835 (fax)

Contact Ms. Tsai

Patentability Assessment

It is OTT’s experience that a patentability assessment on a discovery/invention requires an average of 4 to 8 weeks by a patent attorney, depending on the amount of supporting information provided in the Report of Invention (ROI), assuming no publication deadline. OTT works with the inventor candidates to manage and balance challenges imposed by the publication deadline with the proposed patent protection strategy. If the patentability assessment of discovery/invention is negative, OTT offers an opportunity for the inventor candidate group to communicate with the patent lawyer for further evaluation, if necessary. If the negative evaluation is confirmed, OTT will inform the inventor candidates and proceed to close the case file. If the discovery/invention lacks sufficient supporting data, OTT will inform the inventor candidates and proceed to close the case file and will re-open the case once it receives additional supporting data from the inventor candidates.

According to the TJU Patent Policy, OTT has 1 year from the time it receives a complete ROI to take actions, and 2 years to take actions if the ROI is not complete when submitted. Whether an ROI is complete is a determination made by OTT. However, OTT acts rapidly once it receives a complete ROI from the inventor candidates. Please click here for further information about the TJU Patent Policy and to view a reference copy.

Patenting Process

If patent protection is decided to be a preferred tool to provide TJU’s potential commercial partners with a competitive edge and the ROI is patentable, OTT instructs a patent attorney to file for patent protection on the ROI. Following is the patent protection strategy.

Provisional Application

A provisional application is designed to provide a lower-cost first patent filing and to secure a priority date in the United States. Applicants are entitled to claim the benefit of a provisional application in a corresponding international application (also known as PCT application, as explained below) filed no later than 12 months after the provisional application filing date.

If a discovery/invention is patentable and the patent attorney considers that the discovery/invention has sufficient supporting data for a patent application, and OTT determines that the discovery/invention has potential commercial interest, TJU often seeks patent protection by filing a provisional patent application

OTT conducts aggressive marketing during the 12 month period after filing a provisional patent application. By 1 to 2 months prior to the expiration date of a provisional application, the industry feedback that OTT has received is important in determining whether to continue the patent prosecution

During the 12 month period after the provisional application is filed, OTT advises the inventor candidates to continue conducting experiments to collect more supporting data and to keep OTT informed of the progress of the discovery/invention. Potential licensees always request to review additional supporting data and updated development of the discovery/invention. If there is positive marketing feedback, TJU may determine to continue the patent prosecution. The additional supporting data that inventor candidates have collected may be included in a PCT application filed before the provisional application expires. It is OTT’s experience that inventor candidates appreciate the feedback and are interested in the industry insights.

Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) is an international patent law treaty that provides a unified procedure for filing patent applications to protect inventions in each of its Contracting States (As of September 28, 2009, there are 142 Contracting States to the PCT). A patent application filed under the PCT is sometimes called an international application or a PCT application

The main advantages of the PCT application procedure, are (i) the unified international filing procedure, and (ii) the possibility to delay the national procedures as long as possible since the respective fees and translation costs in each Contracting State (country) are also very expensive, and (iii) the claimed discovery/invention is not examined by any country’s patent office at this stage.

If TJU decides to continue the patent prosecution based on positive marketing feedback, a PCT application will be filed before a provisional application expires. A PCT application expires 30 months from the priority date (e.g. provisional application filing date), which is 18 months from the PCT application filing date. By 1 to 2 months prior to the expiration date of a PCT application, TJU must assess the industry feedback that OTT has obtained and determine whether to continue the patent prosecution.

If the discovery/invention is not licensed by the time a PCT application is set to expire, TJU does not continue the patent prosecution, since costs at this point rise to a minimum of $100,000 and the University legal expenses budget does not warrant such spending unless OTT can recover the investment. With that said, TJU sometimes enters the national phase in the United States if the marketing feedback indicates potential commercial interest.

National Phase

By 1 to 2 months prior to the expiration of a PCT application, TJU must determine whether to expend a portion of the legal expenses budget to proceed to the National Phase of patent examination of the PCT application in individual countries. Unless the discovery/invention is licensed, TJU will not enter into the National Phase. In the National Phase, the claimed discovery/invention is translated to the Contracting State’s language and is examined by the respective Patent Office. The associated filing fees, annual taxes, and translation costs are extremely expensive, and can easily exceed $100,000 to obtain a single patent in a foreign country. The average process time varies but usually takes more than 4 years before the individual examining patent offices make a decision on whether or not a patent is granted. There are additional fees to maintain the patent once it is granted

Based on the business strategy of the company that licenses the discovery/invention, the company may select the Contracting States, if any, in which to enter into the National Phase to initiate patent prosecution.


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