14 U.S. and Foreign Patent ApplicationTimeline U.S. First U.S. application 12 months 18 Months 12 to 36 Months Patent application typically pubIished File application under Patent Cooperation Treaty (PCT) International search report indicates related patents and publications First office action from USPTO generating OTM responses and amendments to the claims International U.S. International INL Patenting strategy and decisions Decisions to file patents are made by TD, with advisement from IP Legal and BEST committees. These are business decisions based on costs, the necessity of protection to achieve commercialization, probability of success in licensing, and recovering expenses, potential market impact, and benefit to the R&D program. There is an expectation that all patents filed are potentially commercially valuable enough to recoup at least the patent expenses. Periodically, TD reviews their patent portfolio and, in cases where the patent is not licensed, assesses whether to continue prosecution or maintenance. Release of intellectual property to inventor If TD decides not to pursue, or to discontinue pursuit of commercialization efforts on an innovation, they will release the invention to DOE. DOE may assign INL’s ownership rights to the inventors if there is an interest in pursuing a patent and commercializing the innovation independently. For any federally funded invention, the federal agency must approve the assign- ment, which may take a few weeks or months to finalize. U.S. patent application decisions The most common strategy is to file a regular U.S. patent application, which provides protection of the invention in the U.S. In some circumstances, a U.S. provisional patent application may be filed: in cases of urgency; when the commercial potential is not well-understood; if the need to add additional subject matter to the application within a year is anticipated, or to extend the patent’s life by a year (the trade-off is that this strategy also delays the issuance and enforceability of the issued patent by that year of delay in commencing the patent prosecution). International patent application decisions International patents involve escalating expenses, and converting a PCT application into a specific foreign country, or filing in foreign countries directly, has much greater cost implications than the decision to file in the U.S. This is primarily because of