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Frequently Asked Questions about Patents
Quick Answers to Frequently Asked Questions
2. What subject matter is patentable?
3. Is there a difference between an invention disclosure and a patent application?
5. How long does it take to obtain a patent?
6. To whom do I report my invention, and what forms must I use?
8. Who must be named as an inventor on a patent application?
9. What criteria does NASA use in selecting an invention for becoming a patent application?
10. Does my organization have to pay for obtaining a patent?
11. Can I sign a nondisclosure agreement?
1. What is a patent? A patent is a legal instrument which entitles the owner to a limited monopoly on the claimed invention. The patent owner can exclude others from making, using, or selling the patented invention, during the lifetime of the patent.
U.S. patents have a maximum lifetime of 20 years from the date of filing of their application. Maintenance fees must be paid by the owner at 3.5,7.5, and 11.5 years after a patent's issuance in order to keep it in effect. The patent will expire if the fees are not timely paid.
2. What subject matter is patentable? For a patent to issue, the claimed invention must be useful, novel, and non-obvious; the subject matter must be a product (apparatus, article of manufacture, etc.) or process (series of steps to accomplish some end result). Certain things are excluded from patenting, such as mathematical algorithms or naturally occurring substances or phenomena.
3. Is there a difference between an invention disclosure and a patent application? An invention disclosure is a document by which the inventor reports conception of an invention to his/her employer. A patent application is a collection of formal documents, normally prepared by an attorney admitted to practice before the U.S. Patent and Trademark Office USPTO), which has been or will be filed with the USPTO, requesting that a patent be issued on the invention claimed therein.
A patent application consists, at a minimum, of documents describing the invention in a manner prescribed by PTO regulations, including a specification, claims, and drawings, an information disclosure statement which sets forth the most relevant prior art of which the inventor is aware, and an oath sworn to and executed by the inventors certifying that they are the true inventors of the claimed subject matter and all statements contained therein are true to the best of their knowledge.
4. Who issues patents? The United States Patent and Trademark Office (USPTO), which is part of the Department of Commerce, examines and issues all U.S. patents. Under the U.S. Constitution, patents are entirely a matter of Federal law; state governments have no patent-related functions. Federal agencies must submit patent applications, pay fees, and comply with all USPTO regulations just like any private sector applicant for a patent.
Most foreign nations issue patents. The rules for an application's format and contents, and the nature and scope amination to which the issuing agency subjects an application, vary tremendously from country to country. NASA seldom files patent applications in foreign countries.
5. How long does it take to obtain a patent? Time frames are always dependent upon a multitude of factors. However, the quality of the invention disclosure submitted by the inventor, and the quality of the inventor's analysis of the prior art search are consistently the most important factors leading to an expeditious patent process. On average, it takes about 3 years from when an invention disclosure is submitted to Patent Counsel until the USPTO either issues a patent, or finally rejects the patent application. In between, a series of events must occur, including a search of relevant prior art, evaluation of the invention disclosure for both technical merit and commercial potential, obtaining all documentation necessary for unity of title to rest in NASA, preparation of an application, filing the application and associated documents, examination of the application by the USPTO and a response to USPTO office actions, including preparation of amendments necessary to the claims and drawings.
6. To whom do I report my invention, and what forms must I use? Civil servants report their inventions to the GRC Patent Counsel, who is a member of the Office of Chief Counsel. Contractor inventors report their inventions to their contractor employers, who in turn report the inventions to the Commercial Technology Office, which is the "New Technology Representative" designated in the contract.
Civil servants are required by regulation to report to their agency any inventions made in the course of their official duties, or with any contribution of agency resources, including but not limited to time, equipment, or facilities. Civil Servants report their inventions to the field center Patent Counsel. The NASA form prescribed for use by civil servants to report inventions to the agency is NF 1679.
Contractor employee inventors do not report their inventions directly to NASA. Instead, contractor inventors report their inventions to their employer. It is their employer, the contractor, who is required by the provisions of the contract to report to NASA any inventions created by its employees while working under the contract. Many contractors adopt the NF 1679 as their form for reporting inventions to NASA; however, contractor created forms will generally be acceptable to NASA so long as they contain substantially all the information called for on the NF 1679.
7. When an invention has joint inventors, some of whom are employed by NASA and others of whom are employed by NASA contractors or others, who owns the invention? NASA will own at least an undivided fractional interest in the invention, by virtue of the NASA inventor, who is required by law to assign his/her interest to the U.S. Government. Depending upon whether the contractor inventor works for a large or small entity, the contractor will have either 8 months or 2 years, respectively, to comply with the contractual provisions allowing it to perfect its undivided fractional ownership interest. If the contractor does not timely perfect its ownership interest, ownership of the undivided interest in the invention attributable to the contractor inventor falls to NASA.
8. Who must be named as an inventor on a patent application? The law requires that all actual inventors, and only the actual inventors, must be named. Procedures exist to correct erroneous inventorship, but the error must have occurred without deceptive intent on the part of anyone involved. If an actual inventor is omitted, or a spurious inventor added, with deceptive intent, any patent that may issue will be invalid.
To be an actual inventor, one must have conceived of the claimed invention. Reducing to practice the invention conceived by another, or acting at the direction of another while the other conceives of reduces the invention to practice, does not make one a co-inventor.
9. What criteria does NASA use in selecting an invention disclosure for filing as a patent application? In order to be considered for possible filing as a patent application, there are usually three key factors:
a) There must be unity of title in the Government. This means that the entire title to the invention must reside in the Government. Unity of title happens automatically when all the inventors are Federal employees. When there are contractor inventors, however, unity of title cannot occur until either the contractors affirmatively notify NASA they do not intend to assert ownership of the invention, or the time allowed in the contract for them to assert owership has expired. The time varies depending upon whether the contractor is a small entity or large entity.
10. Does my organization have to pay for obtaining a patent? Under current full cost accounting practices, patent costs are shared between the inventor's organization and NASA Headquarters Code G (General Counsel) as follows: NASA HQ, acting through the GRC Patent Counsel, pays any fees required by the USPTO; the inventor's organization pays all other fees, which usually are fees to outside patent attorneys for application and amendment preparation. Additionally, at this time, NASA HQ provides professional prior art searches at no cost to the inventor's organization through contracts it funds. If, due to statutory bars or other time constraints on filing the patent application, a more expedited search is required, the inventor's organization will have fund those services. A typical GRC patent costs the Government about $12,500 to obtain and maintain throughout its full term. The inventor's organization typically pays about 50% of that amount.
Related Links:
http://cto.grc.nasa.gov/patent/patent.asp
NASA Headquarters Intellectual Property Website
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