BU - Office of Technology Development - Technology Transfer - Invention

Patent FAQ

This section provides definitions of some of the terms you will encounter in the technology transfer process.

Prior Art	PCT Patent App.	Patent Term
Provisional Patent App.	National Phase Patent App.	First to Invent
Utility Patent App.	Chapter II	First to File
Best Mode	Assignment	Interference
Paris Convention	Declaration

A. Prior Art

The total body of knowledge, which teaches or otherwise relates directly to an invention. This is the primary criterion in determining the patentability of a new invention. Establishes novelty and unobviousness of the art that relates to the invention in question. Prior art references include documentary sources such as patents and publications from anywhere in the world, and nondocumentary sources such as things known or used publicly.

B. Provisional Patent Application

An interim patent application that provides a one-year period for product development. It provides the legal effect of an early filing date for an invention. The PPA is much less expensive, and much easier to prepare, than a regular patent application. It does not take the place of a regular patent application, but it does confer patent pending status on the underlying invention.

C. Utility Patent Application

The largest group of patent types. According to 35 USC 101, utility patents are subdivided into mechanical, electrical and chemical categories

D. Best Mode

One of the requirements for a patent to be valid is that the inventors must have disclosed the best way of practising the invention known to them as of the date the patent was filed.

E. Paris Convention

Paris Convention for the Protection of Industrial Property, a milestone in cooperation among countries concerning global protection of intellectual property. Revised in 1967, this agreement between the major countries of the world set the stage for applicants to receive the benefit of an earlier filed foreign application if the national application is filed within one year from the earliest filed foreign application.

F. PCT Patent Application

A PCT patent application is a way to file a single application that retains for the applicant the right to file applications in all designated Contracting States. There are currently over 112 PCT Contracting States. A PCT application claims priority from an initial filing in one of the Contracting States – usually the US for us – and must be filed within 12 months of the filing date of the initial application. The PCT application is published 6 months after it is filed. One of two things can happen to a PCT application:

1. National Phase Patent Application

Eight months after filing the PCT application, the applicant can pick which countries in which to file national phase applications, which then starts a similar cycle of office action and responses as with US applications. National phase applications are very expensive. Even a minimal “developed world” package of the European Patent Office, Japan, Canada and Australia is likely to cost $20,000 just for filing fees and translation costs.

2. Chapter II

Alternatively, seven months after filing the PCT application, the applicant can file a Chapter II request. An International Preliminary Examination Report will be issued, identifying prior art and whether the claims meet the standards for patentability. The decision as to whether and in which countries to seek National Phase applications is deferred till 18 months after the PCT filing. The cost is not reduced.

G. Assignment

Transferring all or part of one's ownership rights in a patent or intellectual property to another. You will be asked to assign your title in patent applications we file on your work to either Trustees of Boston University or Boston Medical Center Corporation as appropriate. You agreed to do this when you signed the patent policy when you joined the University.

H. Declaration

A document that you sign, under oath, as part of the patent application process in which you attest that you have read the patent and that you (or you and your co-inventors as the case may be) are the sole and true inventors of what is claimed in the patent application. The Declaration and Assignment are sometimes filed shortly after the patent application is filed. This is called “Filing Missing Parts.”

I. Patent Term

The length of time that a grant of ownership on intellectual property inures to the creator or owner. Except for extensions granted for various reasons, the term of a US patent is 20 years after filing the original patent application.

J. First to Invent

The U.S. and Philippine patent systems recognizes an inventor's right to a patent based upon the date of actual invention. Disputes are resolved via an Interference.

K. Interference

If there are competing inventors claiming the same invention and the PTO determines that each has met the standard for being granted a patent, the Board of Patent Appeals and Interferences (BOPAI) of the PTO follows an elaborate (and expensive) process called an “interference” to determine who will receive the patent. Good lab notebooks – bound, periodically signed and witnessed – are essential to win an interference. Companies tend to have more robust policies and procedures than Universities on lab records.

L. First to File

Most countries other than the U.S. and the Philippines have "first-to-file" patent systems, where the filing date of a patent application, and not the date of invention, determines which of competing inventors will obtain a patent and when their rights begin

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