Thursday, November 17, 2011

An Overview of Licensing -- Part 7 in our IP and Patents Series

This is the seventh in a planned 20-part series of articles on intellectual property.  In future posts, we will explore additional aspects of licensing and commercialization of products.

In this posting, we will provide a brief summary of licensing – what it is, who grants the lcienses and what licensees can expect, generally.

What is licensing?

Licensing allows someone else to use a protected idea; that is, a license is an agreement that allows the licensee to use the technology for some purpose - usually to create products based on the technology - in exchange for a license fee and/or a commission on revenues.

In other words, the licensee will take the idea and turn it into a viable product or otherwise create some kind of revenue stream off the technology.  The inventor will then see a portion of those revenues under the terms of the license.

The license will typically have some level of restrictions on it; for example, it may allow the licensee to use the licensed technology in certain applications, or geographic areas.  In addition, it might be exclusive to one licensee or there may be multiple licensees for a given technology.

Who grants licenses?

The person or organization who grants the license is the one who has the rights to the protected technology, usually through a patent or an active patent application. 

Licensing can be a major source of revenues for inventors, research and development facilities, etc.  In fact, most major universities, and many smaller ones, have departments solely committed to licensing and related activities.  They can go by several monikers, including “Technology Transfer” or “Commercialization” or something else, but what they do is generally the same thing: take technologies created at their institution and provide the rights to those technologies to companies or other licensees so some money can be made off the idea.

One of the largest, and most successful, licensing organizations is the Wisconsin Alumni Research Foundation (WARF), based in Madison, WI.  This is the licensing arm of the University of Wisconsin.  WARF was established over 80 years ago as a patent management agency.  Their first license agreement was with Quaker Oats for a process involving vitamin D in cereals.  The license arrangement allowed WARF to control which companies received licenses to the new process.  This ensured that the process was not abused and that profits on the process would be shared with the University.

What about the licensee?

As alluded to earlier, the licensee will typically be required to pay license fees, usually determined by royalties on sales or some other commission-type structure, and could also have milestones that it will be required meet in order to maintain the license.

Details on a typical license and its structure and terms will be addressed in upcoming installments.

Thursday, November 10, 2011

The Patent Process - Part 6 in our Patents and IP Series

This is the sixth in a planned 20-part series of articles on intellectual property protection. In future articles, we will also explore licensing and commercialization of products in later posts.

In this article, we will provide a brief summary of the patent process – what is involved and what to expect.

Assuming you need to file a utility patent (the most common type), the first thing you should do, in our opinion, is contact a qualified patent attorney or agent.  Patent laws are complex as is the filing process, and a good patent attorney or agent will know the intricacies involved and ultimately save you from making mistakes and missteps that would cost you money, time and possibly jeopardize your invention. 

The process that a good patent attorney or agent will walk you through, will include the following:

International protection?

Getting a patent in the United States means you have patent protection in the United States.  However, in and of itself, a US patent grants no protection in other countries.

The Patent Cooperation Treaty (PCT) established a union, which now includes most of the world’s nations, for “cooperation in the filing, searching, and examination, of applications for the protection of inventions.”[1]   The PCT reserves the right to file a patent in any of the 140+ countries that are members of the union, for a specific period of time.

By filing a PCT application you are giving yourself time to consider which additional countries you might want to file in as well. 

Provisional application?

One way to get a fast priority date and save money in the short term (but maybe not the long term) is to file a provisional application.  This consists of a “filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement.”[2]

These are easier documents to file, can generally be filed faster and will ensure that the priority date is as early as possible. 

One of the good things about provisional applications is that it delays the need to submit a full application for 12 months, while protecting the priority date.  That will give you time to put together a good, solid complete application and to consider whether your invention is worth patenting and protecting for 20 years.

One of the bad things about a provisional patent is that it does not allow for any new matter on the invention.  So, if something comes up during the year that would apply to the invention, it cannot be added to the provisional application.  In addition, while it is less expensive to file a provisional application, and will generally cost less attorney’s fees to prepare and file, at the end of the day it will probably cost more in attorney’s fees to file the provisional, plus the full application later than if you just bit the bullet and filed the full application to begin with.

Other things to consider

There are some other things to consider, such as an expedited application, which your attorney or agent can discuss with you.  Once the application is completed and filed, the US Patent and Trademark

Office will send an acknowledgement that it received the application.  After that, it becomes mostly a waiting game.

An examiner will eventually analyze the application and will respond with an office action.  At this point, the inventor and the attorney or agent will need to respond to the office action.

If the patent is allowed, the applicant needs to pay the issue and publication fees, as well as any maintenance fees in the future.  If the patent is not allowed, the applicant may still be able to request a reconsideration or appeal. 

In summary, the single best piece of advice we can give is to contact a good patent attorney or patent agent.  In our opinion, the best way to find a good patent attorney or agent is to seek out the recommendations of colleagues.

In our next installment, we will discuss an overview of patent and intellectual property licensing.

[1]  The PCT’s website can be found here:

Thursday, November 3, 2011

Patent Basics - Part 5 in our Patent and IP Series

This is the fifth in a planned 20-part series of articles on intellectual property protection. In future articles, we will also explore licensing and commercialization of products in later posts.

In this article, we will provide a brief summary of the basics of a patent – what it protects, what kinds of patents are available and how it is comprised.

The US Patent and Trademark Office (USPTO) determines and issues patents in the United States. 

There is a ton of information on patents at their website:, as well as many other sites, which are run by patent attorneys and other experts.   For detailed information, we encourage you to read those sites as well.

Contrary to what you might think, a patent (in this case, we are discussing a utility patent) does not grant someone the right to make or use or work on an invention, but rather, it prohibits others from infringing on the patent.  The law then defines infringement as when someone, without the proper authority, “makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent.“[i]   The “term” of the patent begins at the filing date, which is the date the USPTO receives a proper application.

There are three kinds of patents:

  • Utility patent – this is the most common type of patent and can be issued “to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof”[ii].  A utility patent term is 20 years from the filing date.
  • Design patent – protects the appearance of something.  A design patent generally consists of multiple drawings and is used to prevent someone else from making something that looks the same.  In other words, from a very basic perspective, the design patent protects how something looks, while a utility patent protects what it does.  A design patent term is 14 years from the filing date[iii].  
  • Plant – this is a patent that protects plants – the kind that you find in a garden.  It can be issued to someone to protect a new kind of plant they have developed. 
Utility patents have several elements, principally[iv]:
  • Utility Patent Application Transmittal Form or Transmittal Letter
  • Fee Transmittal Form and Appropriate Fees
  • Application Data Sheet (see 37 CFR § 1.76)
  • Specification (with at least one claim)
  • Drawings (when necessary)
  • Executed Oath or Declaration
  • Nucleotide and/or Amino Acid Sequence Listing (when necessary
All these have to be presented to the patent office with proper information in a certain way, which is why you really should hire a professional, qualified patent attorney or agent to prepare and file your patent.  Otherwise, you can cause delays in your application and possibly even lose your opportunity to file.

In our next installment, we will discuss the patent process, the time required and costs.

[i]  US Patent Act, 35 U.S.C. 271(a), which can be found at: