Patent Application Process FAQs
The Technology Transfer Group is happy to answer your questions!
Do I need a patent to start a business?
No. Patents can provide competitive advantages for business but the patent application process is expensive and risky.
What is the difference between a patent application and an issued patent?
In certain circumstances, an innovation rises to the level of a patentable invention. To meet the legal standard for patentability, an innovation must be useful, new, different from other publicly-available materials or methods in an unobvious way, and described thoroughly. Most inventions are incremental improvements on known devices, compositions, compounds, plant varieties, and methods of manufacturing or using. A patent application can be filed with the U.S. or other governmental agency, requesting for the government to sanction the innovation as an invention by issuing a patent. An issued patent can be used to prevent others from making, using, or selling the claimed invention, whereas a patent application has no such enforcement status. Patenting is a complicated, science-based review process, not a rubber-stamp approval of a form. The patent review process costs tens of thousands of dollars and lasts many years. Sometimes, after the entire review period and expense, the government decides that the innovation is not patentable and no patent issues.
How do I know if my innovation is patentable?
Since patentability is determined by the particular facts of the invention, the previously-known technology, and the law, whether any particular innovation is patentable is a tough question. The best that anyone can do prior to filing a patent application is to gather as many details as possible and then make an informed decision. The steps are:
1) Which specific physical aspects of your innovation distinguishes it from previously-known devices, compositions, methods, or research results?
2) Use a search engine such as Lens.org to double-check your assumptions about the differences between your innovation and what was previously known. Modify your understanding of the invention based on the search.
3) If, after a thorough search, you can identify specific physical differences that are different between your innovation and previous, similar innovations, patent rights might be possible to obtain.
Cal Poly Technology Transfer can help you with this process. Please contact us if you have questions.
Who owns my invention if I make it at Cal Poly?
The Cal Poly Intellectual Property Policy controls the ownership of patents. In general, faculty and students own the inventions they develop at Cal Poly unless:
a) a contract obligates the faculty or student to assign their patent rights to either Cal Poly or another entity.
b) the invention was developed using "extraordinary resources" at Cal Poly, as that term is defined in the IP Policy.
c) the faculty or student invented in a staff role.
Cal Poly Technology Transfer can help determine ownership in a particular case. Please contact us if you have questions.
Remember: patent ownership is not the end of the story. Even if Cal Poly owns the invention, the faculty or student(s) have an opportunity to license the patent and use it to foster a start-up!
Do I need to keep my invention confidential prior to filing a patent application?
Yes! Because patentability is determined by whether the physical aspects of the innovation are new, unobvious, and fully-described, confidentiality prior to filing a patent application is essential. Use non-disclosure agreements (here is an example) liberally, and make sure you file an application prior to any public disclosures. A few examples of common public disclosures are: publishing in a journal, poster sessions, online fundraising, videos, demonstrations, sales, offers to sell, press releases, etc.
Cal Poly Technology Transfer can answer questions you might have about publications and patentability. Contact us!
Is inventorship the same as authorship?
No. Inventorship is determined by law. Authorship is determined by scientific cultural conventions. To be a legal inventor, the contributor must have contributed intellectually to at least one issued claim. In that regard, inventorship is a moving target, since the patent claims change during patent drafting, patent examination, and patent issuance.
Remember: Inventorship is not the end of the story! The person who invents does not have to be, and often is not, the owner of the invention. Further, the business that brings the invention into commercial production is often not the inventor or the owner.
Contact Cal Poly Technology Transfer if you have questions about inventorship. We are happy to help.