Technology Commercialization

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Provisional patent application What happens aer a patent filing? What are your responsibilities as an inventor? This quick guide to provisional applications is designed to help you keep it all straight, and covers the following topics: • Provisional Application as a first filing • Conversion to a U.S. Utility or International Application • Patent examination process PROVISIONAL APPLICATION AS A FIRST FILING 1. Provisional applications are not examined—the USPTO holds them for one year and they expire if not converted to a Utility application 2. Provisional applications provide a “place holder” to preserve patent rights if the invention will be publicly disclosed (i.e. in talks, posters, abstracts, or publications) 3. Provisional applications remain unpublished if not converted, and remain unpublished for their first 18 months if converted. At 18 months, provisional applications are publicly accessible along with the publication of the patent application 4. Only the invention described and enabled in a provisional application (i.e. described at a level that someone could duplicate or build the invention) would be protected— improvements that were not discussed in the application may not be protected Q: What do I need to do in the year following a Provisional filing? The “year” following provisional application filings is actually only 10 months, because OTC must make patenting decisions ahead of the one year deadline, and give patent attorneys time to draft applications. During the 10 months, you should continue to accumulate data to support the invention described in the provisional application.

them know if you find papers, patents, abstracts or other information related to your invention. Q: Aer an application is filed, is it safe to talk or publish papers on my invention? You should let your TSM know ahead of time about any talks, publications, posters or abstracts you’ll submit regarding your invention. While the provisional application may protect your patent rights, any new data or improvements you publish or present after may not be protected. Q: What if companies want to talk to me aer the provisional application filing? Whether or not an application has been filed, all discussions with companies should occur under a Confidentiality Agreement (CDA). Let your TSM know ahead of time, and OTC’s contracts group will get the CDA in place. It’s also important to be aware that discussions with others about your invention may complicate inventorship and ownership. CONVERSION TO A U.S. UTILITY OR INTERNATIONAL APPLICATION Provisional applications may be converted up to one year aer filing, and are generally converted to either a U.S. Utility patent application or an International Patent Application (also called a PCT application).

Send your OTC Technology Strategy Manager (TSM) any new data related to the invention, and let Office for Technology Commercialization • [email protected] • 612.624.0550 © 2013 Regents of the University of Minnesota. The University of Minnesota is an equal opportunity educator and employer.


Technology Commercialization

Office for

Q: What do I need to do to facilitate conversion of my provisional application?

require your prompt input and/or signatures. For example:

Provide all additional information, data and documents relevant to the invention to your TSM no later than the “10 month date” after the application filing. Work with your TSM and the patent aorney assigned to the case to review patent dras; your input is valued and critical for success! The patent aorney will also need information from you to determine proper legal inventorship on the patent application.

• "Assignment" documents need to be signed by all inventors to comply with inventor's duty to assign patent rights to the university

It’s critical to promptly sign documents and provide information requested by the Office of the General Counsel (OGC) and OTC, as well as patent attorneys and paralegals. Failure to do so can result in the loss of patent rights.

• You may be asked to assist in preparing responses to patent examiners during patent prosecution


In addition to assignments and declarations, OGC sends PDF copies of legal paperwork to all university inventors to keep you informed and is for your records. In general, your input is not required unless your TSM contacts you directly and asks for feedback or signatures.

1. This is a long term process that can easily take 3-5 years or longer, and may be affected by a backlog of patent applications at the USPTO 2. This process involves negotiation and concessions between the attorney and the examiner at the USPTO (i.e. the “patent prosecution” process) 3. The examiner assigned to the case is expected to begin examination within 14 months of filing the conversion application. Though they may not begin the examination for up to three years 4. Your patent application remains confidential until it is published by the USPTO— approximately 18 months after the provisional application filing date

• A "Declaration" must be signed by all inventors to secure the filing date of the Utility application • Inventors have an ongoing legal duty to inform the USPTO about information that may be “material” to the patentability of your invention. Send this information to your TSM to forward to the USPTO

Q: Do I need to respond when I receive patent filing paperwork from OGC or an aorney?

Importantly, unpublished patent related information is confidential, and should be treated as such. Such paperwork, including patent dras, should not be left in common area printers, and should be shredded or stored in a secure place. Q: What is an “Office Action” from the patent office?

Q: What are my roles and responsibilities during this time?

This is where the Patent Examiner presents his or her position regarding patentability and your patent application. In general, if your feedback is needed to respond, your TSM or a patent attorney assigned to your case will contact you. To preserve patent rights, we are under strict legal deadlines, so prompt replies are required.

While each patent examination process is unique, there are standard forms and processes that will

QUESTIONS? Our expert staff is here to help you.

5. Claim “rejections” by the Patent Examiner are routine, and should be expected

Office for Technology Commercialization • [email protected] • 612.624.0550 © 2013 Regents of the University of Minnesota. The University of Minnesota is an equal opportunity educator and employer.

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