Asked in Patents (Intellectual Property)

Q: I am working on a thesis. I am interested in a patent. How much will it cost?

it's about Treatment of bisphenol-a residue streams

2 Lawyer Answers
Liliana Di Nola-Baron
Liliana Di Nola-Baron
Answered
  • Patents Lawyer
  • Washington, DC

A: Assuming the patent is still valid, you will need to contact the patent's owner or assignee to see if you can license or buy the patent or certain rights. There is no fixed price. You should have an attorney who specializes in licensing work with you.

Liliana Di Nola-Baron, J.D.,Ph.D.

Attorney at Law

Di Nola IP

www.DiNolaIP.com

Liliana@dinolaip.com

202-734-0253

Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: I interpreted your question as an interest in filing a patent application on innovations that are part of your work on your thesis.

If that is your question then here are two useful bits of information.

If you are a Ph.D. candidate and work in a lab funded with federal dollars or are paid for work as a graduate student, it is very likely that your university will deem your work to be their intellectual property. The first step is to review all documents that you have signed and university policies. If it looks like the University will own your patent, then work through your advisor or department chair and contact your university's office of tech transfer (name varies greatly from school to school -- may be something like the office of innovation and ventures). They may take the lead on filing a patent application that names you and other co-inventors. They may have a program to share some of the royalties with the inventors. They may decide that they are not interested and may officially cede the rights to you.

It can get really ugly if you go rogue and file a patent application that does not respect the University rules.

If you are an undergraduate, then it is most likely that you own the IP free of the university.

If you think that you are free and clear of the university then should check with a local attorney that is familiar with university policies and your specific facts before moving forward.

A second point to consider is that often on the road to a Ph.D. thesis, there are a string of publications by yourself and the research team. Those publications become part of the prior art and may immediately terminate your options to seek a patent in most countries (if you do not already have an application on file). I said may because it really hinges on whether what you published enabled someone to make and use your idea in combination with everything already known on that subject. Some publications don't share enough detail to be enabling so this is a fact specific inquiry that cannot be addressed here.

In the United States, the publication starts a one-year clock (be careful as journals often have an electronic publication a few months ahead of the paper publication).

You need to confer with a patent attorney to sort out the impact of any publications including whether the deadline to file in the US may be sooner than you think.

I am an engineer, not a chemist, so I won't give you numbers on seeking a patent but I will warn you that the cost to file the initial application is often about half of the total costs as there are costs for Information Disclosure Statements, and most importantly, the costs to respond to the initial rejections from the patent examiners.

Finally, you need to understand that there is always a risk that you will spend a lot of money and come out of the process with no patent at all.

I suggest that you take an initial look at patent in this space. Here are some tips on using the free tools. https://bit.ly/Patent__Searching

If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at

https://lawyers.justia.com/lawyer/kevin-e-flynn-880338

Kevin E Flynn

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