The cost of filing a patent application varies considerably and depends on technology sector and the size of the application, number of required supporting drawings, and the number and type of claims. A US Provisional Patent application can typically be secured through contract patent counsel for less than $1,500 and provides one year of “patent pending” status. A full US Utility Patent application must be filed before the Provisional Patent application expires and can range from $8,000 to $25,000 depending on complexity. An alternate pathway to the US Utility filing is a PCT application which also must be filed prior to the expiration of the Provisional Patent application but serves to reserve the future patent rights within the 88 member countries of the Patent Cooperation Treaty. PCT applications tend to run 25% more than a US Utility Patent application and can vary widely. If a PCT filing is used, at the 30 month anniversary of the first filing (likely a US Provisional Patent application), individual patent applications must be filed within each country where rights are to be sought. Because certain countries require patents to be filed and argued in their national language, translations are often required and can again add considerably to the cost. An example case where a PCT was followed with patent applications in the USA, China, Japan, Australia, Canada and Europe cost approximately $50,000 in filing and translation costs, with potentially another $100,000 or more in back and forth arguments with each of the national patent offices prior to patent allowance.
Due to the excessive fees involved, the TTO can only carry the costs for US Provisional Patent applications, USUtility Patent applications or PCT applications out-of-pocket and barring a licensee willing to offset the further cost of foreign filings, foreign patent rights will not be pursued out-of-pocket.
Depending on technology type, the patent process can take from 3-6 years from the time a patent application is filed and when a patent is issued. As of 2010, pendency in the US Patent Office, the time it takes before the patent office issues a first office action on the merits of an application, is approximately 36 to 40 months depending on technology category. From the first office action, a patent will typically be finally rejected or allowed within 18 months.
UCSD faculty and researchers should submit a disclosure to the UC San Diego TTO when a new innovation has been created. For your convenience, standardized disclosure forms are available directly from TTO or can be down loaded from the TTO Website.
If the innovation is related to a new invention, discovery, or tangible research material, the invention disclosure form will be the appropriate form to complete. New inventions or discoveries include such subject matters as new methods, new compositions of matter, new uses of existing materials, new devices, or combinations of the above. Tangible research materials are unique and valuable proprietary materials derived from UC San Diego research and exploration that third parties will have to invest much time, effort, and money at risk to duplicate them independently.
If the innovation is related to a work of creative authorship, the copyright disclosure form will be the appropriate form to complete. A work of authorship includes writings, program codes, images, or architectural designs and layouts etc. The work must be creative and fixed in a medium; but it may be an original work or a derivative of an existing work. Utility is not required.
Invention income that is available for distribution to the inventors is that money left over once the TTO has recovered all of the UC’s out-of-pocket case-related expenses. This does not include any UC, UCSD or TTO overhead, but does include unreimbursed patent expenses, legal opinions, and other services rendered to secure the asset and its related income. Invention income net of these typical costs is distributed according to the University Patent Policy, which as of this writing prescribes 35% to be shared equally amongst the inventors, 15% to UCSD Research, and 50% to be shared between the UCSD campus and the State of California’s support of the UC system in general. No portion of invention income is withheld by the TTO. (Patent Distribution Chart)
Copyright income is distributed 33% to be shared equally amongst the authors, 34% to the home academic unit or department, and 33% to the campus. If authors and departments agree, an alternate copyright distribution is 85% to the research project and 15% to the campus. (Copyright Distribution Chart)
Once TTO receives an invention or copyright disclosure, an evaluation process begins that will include investigating and/or determining:
- Proper inventorship or authorship.
- If the Regents of The University of California or any third party should be the proper owner of the intellectual property.
- If any sponsor of the work leading to the innovation should be notified.
- If any sponsor has pre-assigned rights to the innovation.
- The need or strategy to protect the innovation.
- The potential users and market of the innovation.
Upon completion of this evaluation, TTO initiates an active marketing campaign to transfer the innovation to the private sector by licensing to a commercial entity. Researcher assistance is important in making this whole process successful and rewarding. TTO looks forward to an opportunity to work with you in this endeavor.
If you need assistance in making a disclosure, have any questions or suggestions, or would like to have a presentation to your unit on intellectual property issues and policies, please do not hesitate to contact us.
Typical UC Patent Timeline: (If you are having trouble viewing the chart below, please click here to download PDF)
If an invention has not been licensed at the ten-month anniversary of a provisional patent filing and all sponsor obligations have been fulfilled, several options exist.
Sample release letters:
Once you have reported an invention or copyright to the TTO, a senior member of the TTO staff will contact you and begin the process of assessing patentability and commercialization options. This process will include preparing marketing materials, identifying contacts within industry who may value your ideas, and developing a mutually agreeable commercialization plan which the licensee will commit to via a license agreement with the TTO.
Once the license agreement is in place, you may or may not be asked by the company to aid in the further development of your idea. This may come in the form of sponsored research back to your lab, hiring one or more of your former students, or asking you to participate as a consultant pursuant to University policies on Permissible Consulting.
Over time, your technology may reach commercial sales of products or services based upon your work. At this point revenues may begin to flow back to the University, a portion of which will be personal income to you, as well as support for further research in your lab and department.