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Building a Strong IP Infrastructure: Understanding Patents and the Filing Process

Helping innovators and startups thrive involves supporting their ideas from infancy to execution and providing them with the tools necessary to protect their intellectual property (IP).

Patents play a critical part in the protection of IP, and the novelty of complex inventions. When an innovator files a patent for their invention, and that patent is eventually issued, they are then able to establish a strong IP infrastructure that not only supports them and their company, but also the needs of the populations they serve and provide solutions for.

The Science Center devotes time to exploring the ins and outs of the patent filing process, as patents are crucial for the advancement of the startups it supports. The Center’s startup cohorts participate in in-person and virtual seminars and presentations, many of which are led by attorneys at firms like Duane Morris, who are subject matter experts in patents and IP. The presentations serve an important role in introducing innovators to the major categories of IP and providing them with tangible information and resources to advance their startups and obtain patent protection down the line.

The Science Center’s relationships with patent attorneys and experts allow it to cultivate a unique, collaborative learning environment where startup founders can utilize others as a sounding board for their ideas, ask questions about their research advancement, and come away with a wealth of practical guidance to apply to their work and IP development and protections.

Although the term gets thrown around a lot in STEM environments, many people don’t really know what a patent is, or understand the difference between a patent application and an actual issued patent. As much as it would make innovators’ lives easier in the short term, filing a patent isn’t as simple as going to a patent attorney and having them fill out a form and submit it to a patent office. Just like life sciences inventions often involve highly technical, complex processes that can’t be summed up in a few pages, patents must reflect the complexity, novelty and dynamic impact of the ideas and inventions they represent.

The typical patents that attorneys write may range anywhere from 50-250 pages long, and they are a combination of scientific and legal components that require very thoughtful language and information to convey a product’s value. Attorneys and those involved in the application and filing process must be extremely careful not to negate an invention’s novelty or include details that may jeopardize an applicant’s filing success.

Timing is everything when filing a patent application, and correctly filing within a deadline period can mean the difference between abandoning an application and having to start the process over from square one or being able to move forward through the examination process, and eventually, to an issued patent.

The timeline varies for different industries, but typically, the more complicated an invention and its technology is, the more time it may take to put together a robust application. The process starts with filing an application, and the patent application is then picked up by a patent examiner who conducts a prior art search to determine what similar inventions or ideas are already out there. A provisional patent is granted once filing occurs, and the national filing phase takes place within one year of the provisional patent being granted. After the prior art search, patents enter the examination and granting phase, which can take anywhere from 18 months to over 5 years, depending on the complexity of the subject matter.

During this time, examiners create an examination report – referred to by attorneys as an office action – kickstarting the three-month countdown clock for an attorney response, which begins at the date of office action mailing. The duration of the examination varies by country, subject area and the applicant’s budget.

Cost is a huge consideration for many inventors, as patents tend to be very expensive. Patent filing fees don’t change much, but attorney fees are more variable. If a client goes to their patent attorney to request expedited filing, they may incur additional attorney fees. If they request to make a last-minute entry in the international phase and they need to get patent applications translated to be filed in certain countries, clients may also have to pay surcharges on those translations.

One of the many roadblocks innovators encounter during the patent filing process is inadvertent disclosure of their invention. It's normal for scientists, or any industry professionals, for that matter, to want to inform others about their cutting-edge achievements. But if patent applicants publicly disclose one or more aspects of their invention prior to filing an application, it can have serious consequences for obtaining patent protection, both in the U.S. and globally.

Typically, in the U.S., applicants have a one-year grace period in which to file a patent application after public disclosure. Most significant commercial jurisdictions around the world don’t offer that grace period, so if applicants talk about their invention, or submit it to an academic journal and an abstract gets published, then they have disclosed it. Disclosure doesn’t only apply to written communication, though – it can be done through oral communication, or even a PhD dissertation thesis.

Though there are certain guidelines every innovator must follow throughout the patent process, advancing a company’s work, innovations and IP footprint is not a one-size-fits-all approach. It’s essential that startups work with experts and advisors who can speak to the unique value they offer and guide them through the process of protecting and validating their IP.

Read this recent release about our Capital Readiness Cohort to learn more about how we support startups in establishing and growing their IP infrastructure.