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TECHNOLOGY TRANSFER

Patenting

Patent Filing

  • Obtaining a patent on a new invention is an expensive proposition. Filing an initial 12-month provisional patent application is relatively affordable. However, it costs between $25,000 – $35,000 (over a period of 3-5 years) to secure U.S. rights alone. Obtaining foreign rights are considerably more expensive, depending on the scope of protection sought. T2 works with the inventors to develop an appropriate patenting strategy for the commercialization of each disclosure.

  • Some new discoveries (like certain research tools or computer software) will be readily adopted through publication or open dissemination. In these cases, the best strategy may be to publish or openly distribute the new innovation rather than secure patent protection. In this situation, T2 will work with the inventors/authors to provide them with the legal tools they need, if any, to allow for open dissemination.

  • If, however, an invention has potential commercial value and patent would likely be necessary to attract commercial investment, T2 will work with the inventors to secure patent protection. The timing of filing for patent protection will be based on a variety of factors, including upcoming publication dates and the invention’s stage of development. A patent application is not always filed in advance of marketing activities.

  • Because language used in patent applications and patent office communications is nuanced and highly stylized, T2 hires outside patent attorneys with the appropriate expertise to handle CAU’s patent filings.

CAU inventors are not expected to draft patent applications or to directly respond to patent office communications. In advance of a filing, the inventors will be asked to provide the patent attorneys with copies of any writing (papers, presentations, reports, etc.) about the invention, preferably in an editable format (such as Word). During the patent prosecution process, the inventors will be asked to review and assure draft patent applications and office actions are technically accurate and to help distinguish their invention from similar technologies that may be cited against the patent application by the U.S. patent