Full Filing Decision
The CRI uses the year while the provisional application is pending to continue commercialization and marketing efforts. Depending on the results of such efforts, as well as the status of the technology, CRI may or may not pursue a non-provisional application.
The inventors will usually be contacted by NU’s outside patent counsel to assist in drafting the patent application. This generally consists of meeting/phone call with outside counsel, updating research results, data, and technical information, and reviewing the specification and claims that outside counsel drafts. The CRI may file a non-provisional application in the US only (known as a Utility Patent Application) or the CRI may file a PCT application, which is considered a foreign filing, and preserves rights to pursue patent protection in all participating PCT member countries. The CRI’s policy is to file in the US only, unless there is a license agreement in place (in which instance the CRI will file in the jurisdictions requested by the licensee, as the licensee is responsible for the costs).
Substantive prosecution begins “immediately.” Generally, you can expect the first Office Action within one year. An Office Action is a communication from the USPTO wherein the Patent Examiner may reject one or more – even all – of the claims submitted in the application for a variety of reasons, including obviousness, lack of enablement or written description, lack of novelty, or lack of patentable subject matter. An Office Action does not mean Northeastern will not get a patent; it is incredibly rare to not get at least one and usually several Office Actions as we prosecute the patent. Outside counsel, sometimes with input from the inventor(s), will draft arguments in response to the rejections, and will sometimes amend the claims to avoid the rejections altogether. This response and any amendments will be submitted to the Patent Examiner for his/her consideration and further response. This back and forth process is patent prosecution.
Substantive prosecution does not begin right away. When pursuing this type of non-provisional application, the CRI has until 30 months or 31 months (depending on the country or region) from the date of filing of the initial application (in NU’s case, the provisional application) to select jurisdictions to pursue patent protection in – (e.g. Europe, Japan, Canada, Australia). However, the International Searching Authority will conduct a search of the prior art and provide its written opinion of the general patentability of the invention. There is no response required to this communication, but it can inform amendments to the claims down the line. Once jurisdictions have been elected for entry off of the PCT application, substantive prosecution will begin in each jurisdiction (e.g. if the CRI elects to enter the US and Japan, we will get office actions, or the equivalent, from both the US and Japan individually).
The inventor(s) will receive a notice that the CRI is not continuing to pursue patent protection for their invention. Should the inventors wish to pursue patent protection on their own and at their own expense, they may contact the CRI, who will assist in this process.
While any non-provisional application is pending, the CRI will continue commercialization and marketing efforts. Depending on the commercialization process, as well as the patent process, the CRI may decide not to continue patent prosecution of any given patent application. At that time, the inventor(s) will be notified and should the inventors wish to pursue patent protection on their own and at their own expense, they may contact the CRI, who will assist in this process.