Patent FAQs

What is the role of each inventor in the patent process?
The role of each inventor is to work and respond to TTBD and outside patent counsel requests for input and/ or information. While some aspects of the patent process may require significant participation by each of the inventors, TTBD strives to make efficient use of the inventors’ time. Also, each inventor must keep TTBD informed of upcoming publications or interactions with companies related to the intellectual property (IP).

Does OHSU initiate or continue patenting a technology without an identified licensee?
OHSU often accepts the risk of filing a patent application before a licensee has been identified. After OHSU’s rights have been licensed to a licensee, the licensee generally reimburses OHSU for the patenting expenses. At times, TTBD must decline further patent prosecution after a reasonable period of attempting to identify a licensee (or if it is determined that reasonable patent claims cannot be obtained).

Can inventors publish the results of their research and still protect the commercial value of IP they develop or create?
Yes, but since patent rights are affected by these activities, it is best to submit an IP Disclosure form well before communicating or disclosing the invention to anyone who is not an OHSU employee. Inventors must inform TTBD of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal submission, dissertation/thesis, publication, or other public presentation that includes any aspect of the invention.

What is the America Invents Act (AIA) and how does that relate to patents at OHSU?

The America Invents Act enacted in 2013 was the biggest change in US Patent Law since 1952 and there were many changes to the law. Most of the changes are invisible to OHSU employees outside of TTBD. The most important rule change related to research at OHSU involves the change from a “First-to-Invent” to a “First-Inventor-to-File” approach. This affects who would be awarded a patent if a brand new idea is independently invented by two separate inventors. Prior to March 2013: “First-to-Invent” - requires you to prove you invented first regardless of who filed first. After March 2013: “First-Inventor-to-File” - requires you to file a patent application first, regardless of who invented first.

Under the new first-inventor-to-file regime, should OHSU be filing provisional applications early in the process?
No. What has not changed is the requirement that for patent claims to be valid, the claims must be enabled by the specification. The main test for enablement is whether a person having ordinary skill in the art would be able to make and use the claimed invention from the description given in the specification without undue experimentation. For a patent claim to have priority to a provisional application, the claim must be enabled at the time the provisional application was filed. With the new emphasis on filing date provided by the AIA, it is likely that it will be more important to have fully enabled provisional applications in the future.

Visit our Patent Process page for more information or contact us.