Patents & Copyrights
A patent for an invention is an intellectual property right granted to an inventor, issued by the United States Patent and Trademark Office (USPTO), “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States”. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed.
There are three primary types of patents:
Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
Except in rare cases, Caltech and NASA file utility patents on JPL-developed technologies.
Utility patents fall into two categories – provisional patent applications and nonprovisional patent applications. A provisional patent consists primarily of a detailed description of the invention (including drawings, where appropriate) but does not include a detailed list of claims. A provisional patent is not examined by the USPTO on its merits and cannot directly result in an issued patent but does establish a US patent filing date. The cost to file a provisional patent is typically ~$150, excluding any attorney fees.
A nonprovisional patent application is required before a patent can be issued on an invention. It must be filed within one year of the provisional patent filing date to be able to claim the earlier (provisional) filing date. If a nonprovisional patent application is filed outside of that one-year time period or filed directly (i.e., no prior provisional patent application) then the nonprovisional patent filing date is the effective date. A nonprovisional patent application requires detailed claims and typically drafted by an experienced patent attorney or agent. As a result, the cost of filing a nonprovisional patent application can easily exceed $20,000 (including attorney fees).
Occasionally there is a need to file for patent protection in countries other than the United States. In these cases, a PCT (Patent Cooperation Treaty) patent application is filed. These applications can be very expensive and are only filed by Caltech when patent protection in other countries is clearly warranted.
Copyright is a form of protection provided by the laws of the United States to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works (including software). Copyright protection subsists from the time the work is created in fixed form. Only the author or those deriving their rights through the author can rightfully claim copyright. In the case of works made for hire, the employer and not the employee is considered to be the author. Except for certain exceptions, the US Government (including NASA) cannot assert copyright protection. As a contract, this limitation does not apply to Caltech.
Software is automatically copyright-protected by Caltech. A decision to patent software is based on a whether the additional protection provided by a patent is warranted, or if the copyright is sufficient for any software licensing activities. Since the copyright is held by Caltech, NASA does not elect to file a patent on JPL-developed software even when Caltech declines to file a patent.
Patenting Process at JPL
The patenting process at JPL starts with the filing of an NTR. All NTRs submitted by JPL innovators are first evaluated by the OTT technical staff (NTR Evaluators) before forwarding both the NTR and evaluation to Caltech and NASA. This evaluation consists of a technical and commercial assessment, which is used to determine if patent protection is warranted and if there are any technology transfer opportunities based on the innovation represented in the NTR. These technology transfer opportunities may include commercial licensing, foundation for a start-up company, external commercial and government partnerships, and reimbursable programs.
An initial assessment is made for each NTR to determine if the NTR is adequate for evaluation. The NTR must describe the innovation in sufficient detail to convey a clear understanding of the innovation and its intended use. Additional material, in the form of attachments, may be required for aiding in the filing of a patent application.
Next, the evaluators perform a technical and commercial assessment of the NTR so that a determination can be made regarding intellectual property protection for subsequent commercialization and/or other technology transfer opportunities. The OTT office routinely interacts with the innovators during this evaluation phase. The technical assessment includes determination of the following:
Comparison to current state-of-the-art
Ownership (sole verses joint ownership)
Prior/pending publications or disclosures
Relationship to prior NTRs and Caltech/NASA patents
Current or future NASA uses
NASA Tech Briefs publication decision
Eligibility for NASA Space Act Awards
Similarly, the commercial assessment includes determination of the following:
Contact with companies by the innovators/JPL personnel regarding technology
Potential commercial uses
Potential for additional developmental funds from outside sources (reimbursable task potential), including commercial and other government agencies
Innovator’s desire to commercialize
Relationship to existing and available technologies
Both the technical and commercial assessments are used for making a decision regarding patent protection. Typically, Caltech files a large number of provisional patents based on identifiable commercial or reimbursable task potential. During the one year period of protection that the provisional patent provides, the innovator(s) have additional time to further develop their technology or secure additional funds as well as allowing OTT/Caltech the opportunity to further investigate the commercial or reimbursable task potential. Before the provisional patent expires (one year after filing), a determination is made to (1) file a nonprovisional patent application, (2) refile the provisional patent application, or (3) allow NASA the opportunity to elect title to the invention. This determination is made by a secondary evaluation involving the OTT office and the innovator(s).
Once a decision is made by Caltech to file a nonprovisional patent application, the materials are forwarded to a patent attorney to draft the patent application. This process may require input and support from the innovators, and may even involve meetings between the patent attorney and the innovators. Innovator support during the drafting of the patent is critical to ensure that the patent application is complete and the claims adequate describe the invention.
Obtaining a Patent Waiver by an Inventor on JPL-developed Technology
If Caltech and NASA decline to patent an invention by a JPL researcher(s), the researcher(s) may wish to go forward with patenting the invention at their own expenses. A patent waiver is the necessary documentation that allows an inventor to claims title to the patent.
When an employee comes to work at JPL, they must sign the California Institute of Technology Patent and Copyright Agreement. This agreement assigns the rights to any invention conceived or developed as a result of their employment with JPL/Caltech. Caltech has the first opportunity to elect title to any said invention, and NASA can elect title if Caltech declines. An inventor can only request a patent waiver for the purpose of filing a patent if both Caltech and NASA have declined to elect title to the invention.
Before an inventor can file a patent on their technology, they first must obtain a patent waiver from both Caltech and NASA. These are two related but separate processes; a waiver must first be granted by Caltech before NASA will consider the patent waiver request.
To start the process, a patent waiver should first be requested from Caltech. However, since this process involves the completion and signing of legal documents by both Caltech and the inventor(s), the following should be considered:
Patent waivers are not automatic
Even if both Caltech and NASA have indicated that they have declined to elect title on an invention, there may be reasons not to grant a patent waiver. First, any patent waiver request will be reviewed to determine if Caltech or NASA wish to reverse their previous decision and would now like to elect title to the technology. Secondly, the waiver will be reviewed to determine if there are any strategic reasons to deny the patent waiver request. In addition, the JPL/Caltech Ethics Office may review the patent waiver request to ensure that granting a patent waiver does not present a conflict of interest for the inventor.
Obtaining a patent waiver may represent a conflict of interest
A patent waiver request may be subject to review by the JPL/Caltech Ethics Office. Even if both Caltech and NASA have declined to elect title on the technology, the Ethics Office may determine that granting a waiver represents a conflict of interest for the JPL employee.
Obtaining a patent waiver can take some time
While the Caltech patent waiver process can be negotiated in a relatively short time period (less than one week), the NASA patent waiver process can take several weeks or months. All NASA patent waivers must be submitted by the center’s NASA patent counsel and are subject to approval by the NASA Inventions and Contributions Board (ICB), which meets every two months. The NASA ICB may decide to put off a decision on a patent waiver request for a variety of reasons. As a result, a provisional patent can often expire before a patent waiver can be granted and a nonprovisional patent can be filed.
Filing a patent can be expensive
A typical estimate for filing and prosecuting a nonprovisional U.S. patent typically varies from $15,000 to $30,000 for legal and filing fees, assuming small entity (or micro entity) fees. These costs can increase dramatically for foreign patent filings; depending on the circumstances, foreign patent filing costs can exceed $100,000. These costs should be considered before requesting a patent waiver from Caltech and NASA.
All of the inventors on the patent have rights to the patent
All of the inventors have the same rights to a patent (including the right to license the patent) regardless of who pays for high legal expense for the patent prosecution. Therefore, the inventors may wish to sign an agreement on how the patent expenses are paid and who has the rights to the patent after it issues.
Prior disclosures can prevent the granting of a patent
A prior art search for publications and products is strongly encouraged. Enabling public disclosures (publications, presentations, poster session by the inventor or others) and products sold anywhere in the world affects the ability of an inventor to obtain a U.S. or foreign patent. As previously mentioned, the patent waiver process can take some time and there is a possibility that any provisional patents filed by Caltech may expire before patent waivers are granted by both Caltech and NASA. Therefore, it is important to consider whether there have been any prior disclosures or products being sold in determining if the invention is still eligible for patent filing
Patent waivers for foreign patents are problematic
Caltech files foreign patents only on an exceptional basis due to the very high cost and relatively low benefit of foreign patents. If Caltech files a United States patent, but declines to file foreign patents, the inventor(s) can request that the title to the foreign patents be waived to the inventors, but there are several issues that must be considered in addition to all of the issues with the abovementioned U.S. patents. First, foreign patents are extremely expensive, often time costing well over $100,000. Second, there may be overlap with the foreign patent rights and the U.S. patent rights. For example, a product that is made in the U.S. and sold in Europe will be subject to the U.S. and European patents, and visa versa. Third, two separate patent owners for the same technology create an additional complication for licensing and commercializing the technology because the licensee must negotiate with two separate parties. Therefore, due to the high cost and complexity - and low benefit – Caltech approaches the waiving of foreign patents with caution.
Patent waivers are not granted for software
Even if a patent is not filed on software developed at JPL, Caltech retains copyright to all software. Therefore, a patent waiver will not be granted for software.
Patent waivers can only be requested by an inventor listed on the NTR or by a company that an inventor works for
Waivers will not be granted for a person not originally listed on the NTR when it is filed with the JPL Office of Technology Transfer or someone that cannot legally be added to the NTR due to an inadvertent omission.
If, after reviewing this information you still wish to pursue a patent waiver, please contact Becky Hernandez (Rebecca.Hernandez@caltech.edu) at the Caltech Office of Technology Transfer to start the process. If a patent waiver is granted by Caltech, you will then be asked to contact the NASA patent attorney at JPL to initiate the NASA patent waiver process.