Where can I find more information on the patenting process for Duke-NUS technologies?
Please refer to the Duke-NUS Researchers page for CTeD’s commercialization process as well as the patent policy in Duke-NUS.
What is a patent?
A patent is a legal document that offers the patent owner a property right over his/her invention. A patent grant provides the owner (See Ownership and Inventorship section below to understand more about patent ownership) a right to exclude all others from performing acts such as practising, using, reproducing, selling etc., the invention and its products. Carrying out these acts by anyone except the patent owner and his/her licensees would constitute infringement of the patent, which is a punishable offence. The patent owner enjoys these rights in exchange for disclosing all relevant information about the working of the invention which can be clearly understood by a person possessing ordinary skill in that field of technology. Patent rights are time-bound and territorial, meaning the rights of a patent owner are usually restricted to a period of 20 years and available only in those countries where the patent owner has applied for and successfully secured a grant of patent. In other words, the patent owner gets a limited monopoly over his/her invention.
What constitutes a patentable subject matter?
Patent laws around the world define patentable or patent-eligible subject matter. Patent ineligible subject matter categories include (but are not limited to) laws of nature, algorithms, mathematical formulae, artistic works etc. These categories are considered patent ineligible subject matter since they fall under the spectrum of abstract ideas and/or discoveries. Patent eligible subject matter is, for example a process, a machine, a method of manufacture or composition of matter, which is novel and non-obvious and has some commercial applicability. “Novelty” of an invention is assessed by identifying either a new physical attribute, a new combination or a new use over the existing or prior developments available to the public anywhere in the world (also known as prior art). “Non-obviousness” of an invention is assessed by determining whether the new physical difference, a new use or new combination is not obvious to a person with ordinary skill in the field of the invention and whether the new attribute, use or combination produces new and unexpected results.
What is the advantage of filing a patent application?
Almost all jurisdictions follow the first-to-file principle, wherein an inventor who files a patent application first is awarded the rights upon the grant of his/her patent. The granted patent provides a negative right, in that the owner can exclude all others from practising, using, reproducing and selling the product/process, essentially granting him a monopoly over that invention for a period of 20 years. The owner can sue others, who perform the above-mentioned activities, for patent infringement. In this way, filing a patent application is an essential first step in exploiting one’s invention for commercial benefits and preventing all others from doing so. If an inventor fails to file a patent application for his invention but instead publishes the invention in the scientific literature, then others may copy and exploit the same invention commercially, without the inventor having any recourse.
What are the stages in the patenting process – from filing to grant?
0 month: The first step usually is to prepare and file a provisional patent application. In Singapore, US and many other countries, a provisional application is a relatively inexpensive application. The purpose of filing a provisional application is two-fold: (1) obtain an early filing date i.e. a priority date, which is to establish the novelty and non-obviousness over the relevant prior art as on that date, and (2) gain 12 months to strengthen the application by generating more exemplifications of the invention.
12 months: After 12 months, the provisional application must be converted into a non-provisional application. There are 2 ways of doing this, either (1) by filing non-provisional applications directly in countries where the patent protection is sought, or (2) via a PCT application. PCT is an abbreviation for Patent Cooperation Treaty, an international treaty on patents with currently 152 contracting nations. PCT enables one to buy time during which to further assess the merits of the invention, and to assess the likelihood of it being adopted by the relevant industry. Another advantage of the PCT application is deferment of patent filing costs in different countries, which are relatively expensive, for a period of 18 months. For the filed PCT application, international authorities will carry out prior art searches and prepare a written opinion which may assist the applicant in his/her assessment of the application. However, the grant of patent rights in any country remains under the control of the respective national patent offices – during the so called “national phase”. Duke-NUS usually takes the PCT route. (Information on PCT adapted from the WIPO website.)
30 months: National Phase Entry: After 18 months from the PCT filing, the applicant must decide in which countries to seek grant of patent rights and enter the national phase. The PCT application and the search reports will then be transmitted to national patent offices. National offices of the designated countries will examine the patent application based on their country’s patent laws and the international search report. The national offices will issue “office actions” to which the applicant is entitled to respond and request reconsideration, if the applicant’s claims are rejected by the examiner. This examination process is essentially a negotiation, between examiner and applicant, about the scope/breadth of the patent claim that will be allowed. Finally, subject to fulfilment of all the requirements of the national office, a patent may be granted in that country. The term of that granted patent is 20 years from the date of the originally-filed non-provisional or PCT application.
A patent has been filed with the help of CTeD for an invention arising out of my laboratory, what steps should I follow next?
Once a provisional application is filed, the inventor is required to generate data that demonstrates the working of the invention unambiguously and supports the patent claims. The inventor gets 12 months for this, after which a PCT must be filed. CTeD will meet regularly with you to track progress to help ensure that the data necessary for patent prosecution is available. Refer to answer for Q.4 for more information on patent filing procedures.