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Patenting FAQs
Questions About Patenting

Patenting FAQs

Patenting FAQs

Who pays the costs of patenting an invention?

AzTE covers all the costs of patenting an invention. After an invention is licensed, AzTE usually asks the licensee to reimburse these expenses.

Who is eligible to disclose an invention to AzTE and to use AzTE's services?

Any employee or student of the Arizona State University may disclose an invention to AzTE.

If I publish a paper or make a presentation on my technology at a meeting, will my invention still be patentable?

After you publish, present or otherwise publicly disclose your invention, you have one year from your first disclosure date to file a U.S. patent application, referred to as an inventor grace period. After one year has passed, you lose all U.S. patent rights. Therefore, it is best to file a patent application before or as quickly as possible afterwards. Most foreign countries have no grace period; that is, publication (or any form of public disclosure) of your invention immediately bars you from obtaining foreign patent rights.

Provisional Patent Application

Expires one year after file date
A provisional patent application is a legal document filed in the United States Patent & Trademark Office (USPTO) that protects your invention and establishes an early filing date (priority date).  This application will not be examined and will not issue as a patent.

Patent Cooperation Treaty (PCT) Application

Expires 18 months after the provisional expires
This is a temporary patent application process that preserves your right to file foreign patent applications in countries that participate in the treaty with a few exceptions (Taiwan being the most notable). The application is examined and a search report is provided which includes a general opinion about the patentability of the invention; this report informs the decision to file any national-phase patent applications. The PCT application will not issue as a patent.

Does AzTE file Patent Applications in countries other than the United States?

AzTE will not file in foreign countries unless there is a significant market in that country or there is a licensee.

Non-Provisional Patent Application

Can also be referred to as a National Phase application
A Non-Provisional patent application will be examined by the USPTO and, if granted/issued will confer the right to exclude others from making, using or selling the invention in the United States or importing the invention into the US.  

Continuing Patent Application

Occasionally, after a final rejection, AzTE makes the business decision to continue to try to obtain a patent.  This takes the form of either a Request for Continued Examination (RCE) or a Continuation application.  These essentially amount to a “do-over” of the original examination.  This is an expensive process, and in many cases it can be minimized by replying in a timely fashion after receiving a Final Office Action (within 2 months).

Divisional Patent Application

After a Restriction Requirement has been issued and replied to, AzTE occasionally files a separate application on one of the inventions identified by the examiner but which AzTE did not choose to continue to prosecute in the original application.  This is a Divisional application.  It is most prevalent in chemical composition of matter applications

Continuation-in-Part (CIP) Patent Application

This is an application which uses part of an existing patent application, and also adds new material.  Depending on the patenting strategy, a CIP is sometimes pursued in these situations.  In other cases, an entirely new application is justified.

Invention Disclosure Statement (IDS)

Due after a non-provisional patent is filed
An IDS is a submission of background art or information that is known to anyone involved in the patent application, and that may be relevant to the patentability of your invention.

Restriction Requirement

Due 2 months after mail date, four 1 month extensions are available but there is a late fee assessed every month after the second month.
A restriction requirement will be issued when the examiner determines that the application claims two or more independent inventions.  The application must choose one invention to proceed with.

Non-Final Office Action

Due 3 months after mail date, three 1 month extensions are available but there are increasing late fees assessed for every month after the third month.
A NON-Final office action is an official communication from a USPTO examiner and gives reasons why the examiner has allowed and/or rejected the claims.  

Final Office Action

Due 2 months after mail date, four 1 month extensions are available but there are increasing late fees assessed for every month after the third month.
A FINAL office action means the examiner did not find the response to the non-final office action persuasive and is maintaining their rejection(s) or has found new grounds for rejecting the claims.  

Notice of Allowance

Response and payment due 3 month after mail date, NO EXTENSIONS
A notice of allowance is an official communications that specifies which claims have been allowed to issue as a U.S. Patent.  



Search Inventions

Looking for a technology or invention to commercialize? Arizona State University has over 600 technologies available for licensing. Start your search here or submit your own invention.