A Guide for Inventors at INL — 2017 11 Obtaining a patent starts with the filing of a patent application. The application includes a specification describing how to make and use the invention and one or more claims that define the scope of what is new about the invention. The claims are used by courts to determine the scope (boundary of the property rights) of the invention in the event of infringement. Before applying for a patent, a prior art search is generally conducted, including a patent search and a search for similar ideas in academic and technical literature. If relevant prior art is found, the findings of the search are included in the patent application. Internal or outside patent counsel will draft patent applications using input from the inventors and CMs. The patent attorney or agent drafts the application, and the inventor reviews the draft patent application before it is filed. Inventorship of the claims in the patent application is also addressed, and the inventor will be asked to sign an Inventor’s Declaration (that the patent application is an accurate and true description of the invention) and an Assignment Agreement under which the inventor’s rights are assigned to INL. U.S. patent applications are filed with the United States Patent and Trademark Office (USPTO). The USPTO is the federal agency organized under the Department of Commerce, which administers patents (and federal trademark registrations). The USPTO employs patent examiners skilled in all technical fields in order to evaluate patent applications. Patents are filed as either a provisional or nonprovisional U.S. patent application, an interna- Common Patent Questions Why is patenting necessary? Potential commercialization partners (licensees) need patents to protect the investment required to bring the technology to market.Without any IP protection, competitors could simply duplicate the invention. Why are some inventions not patented? Due to the expense, it is not always cost-effective to pursue a patent.The commercial potential for an invention is carefully reviewed before investing in the process. What is the inventor’s role in patenting? Inventors and TD professionals work with the patent attorney during the patenting process.Also, inventors will review patent document drafts, as well as sign assignments and other legal documentation.Although patent law is highly complex,TD will guide the inventors during the process. How long does it take to get a patent?The average pendency of a patent application in the U.S. is between two and four years. Inventors in the biotechnology and computing fields should expect longer waiting periods. How much does it cost to get a patent? The filing and obtaining of U.S. patents generally costs between $20,000 and $30,000. Filing and obtaining patents in other countries may cost $30,000 or more per country. Maintenance fees or annuities are also required at 3½, 7½, and 11½ years in the U.S. and more often in foreign countries. Filing a PCT application generally costs $2,500 for PCT office fees plus attorney fees associated with preparation and conversions. How long is an invention protected by patent? Once granted, a patent generally has a life of 20 years from the first filing date. Will INL pursue a patent without an identified licensee? INL often files a patent application before a licensee has been identified.After INL licenses the invention, the licensee generally assumes the patenting expense.At times,TD may decide not to maintain patent protection after a reasonable period if potential licensees cannot be identified.