Patent Law & Patentability Fundamentals
Patent Law & Patentability Fundamentals covers the statutory and procedural foundations that every research administrator working near invention management needs to recognize, even without formal legal training. The core questions a patent examiner asks track directly to specific sections of the U.S. Patent Act: is the subject matter eligible (35 U.S.C. 101), is it novel (35 U.S.C. 102), is it non-obvious over the prior art (35 U.S.C. 103), and is it described and claimed with sufficient clarity to enable someone skilled in the field to practice it (35 U.S.C. 112). This sub-cluster organizes reference material around that same structure -- the same one the USPTO uses in its own patent-basics guidance -- so administrators can trace a disclosure through the questions a patent office actually asks, rather than through generic IP vocabulary. It also covers the practical lifecycle around those legal tests: provisional versus non-provisional filings, priority dates, publication timing, prosecution and office actions, and grant. Because research institutions increasingly professionalize invention-management staff, this area overlaps with the 'IP Protection' domain tested in the Licensing Executives Society's Certified Licensing Professional (CLP) credential, and pages here are written to support that same baseline competency. This is deliberately foundational content: it does not cover license negotiation or commercialization strategy (see the licensing and commercialization sub-clusters), but it is the vocabulary and legal scaffolding those later stages depend on.
Guides
Germany’s Employee Inventors Act (ArbnErfG): The 30% Rule for University Inventors
Germany’s Employee Inventors Act (ArbnErfG) requires universities to compensate employee-inventors when an institution claims and commercializes their invention. Section 42 sets that compensation at 30% of gross exploitation revenue for university researchers — a distinct, more generous rule than the case-by-case formula used for private-sector employees.
Italy’s 2023 IP Code Reform: Law No. 102/2023 and the Abolition of the Professor’s Privilege
Law No. 102/2023 abolished Italy’s professor’s privilege, shifting default patent ownership from individual researchers to their universities and public research institutions — the reverse of Sweden’s still-live model.
Merck KGaA v. Integra Lifesciences (2005): The Research-Use Safe Harbor Under 35 U.S.C. § 271(e)(1)
How the Supreme Court’s unanimous 2005 ruling broadly defined the FDA research-use exemption to patent infringement under 35 U.S.C. § 271(e)(1), why it differs from the narrow common-law experimental-use exemption left by Madey v. Duke, and what it means for university TTOs advising faculty on patented research tools and compounds.
Amgen v. Sanofi (2023): The Enablement Ruling Reshaping University Antibody and Biotech Patents
The Supreme Court’s unanimous 2023 Amgen v. Sanofi ruling invalidated broad antibody genus claims for lack of enablement under 35 U.S.C. 112(a) — and the USPTO’s January 2024 guidelines that followed reshape how university biotech and antibody patents should be drafted and prosecuted.
Can AI Be a Patent Inventor? USPTO’s Revised AI-Assisted Inventorship Guidance and Thaler v. Vidal
AI cannot be named as a patent inventor under U.S. law, per Thaler v. Vidal and USPTO’s November 2025 revised guidance — but AI-assisted inventions remain fully patentable when a human contributes significantly to conception. Here is what changed, and what TTOs should document.
Missed the Invention Disclosure Deadline Before Public Disclosure: Consequences and Next Steps
What actually happens when an invention is publicly disclosed before a patent application is filed — the U.S. one-year grace-period limit, the lack of a grace period in most foreign jurisdictions, and the concrete steps to take once a deadline has already been missed.
Provisional Patent Application Disadvantages: Strategic Risks Beyond DIY
The real strategic downsides of filing a U.S. provisional patent application, even when professionally drafted: no early patentability signal, deferred (not eliminated) cost, an unforgiving 12-month deadline, and priority-date limits on claims that expand beyond what was originally disclosed.
Patent Prosecution Highway (PPH): How It Speeds Up International Filing
The Patent Prosecution Highway lets a university leverage an allowed claim in one patent office to fast-track examination of a corresponding application in another, with no added government fee.
Correcting Inventorship on an Issued Patent (35 U.S.C. § 256)
How to fix an incorrect inventor list on an already-issued US patent: the § 256 certificate-of-correction process, when reissue or a district-court action is required instead, and the ownership/validity risk of leaving an error uncorrected.
How to File a Provisional Patent Application Yourself (DIY)
A practical, honest guide to self-filing a USPTO provisional patent application: required elements, current fees, Patent Center submission steps, and the real written-description and enablement risks of doing it without an attorney.
How Much Does a Patentability Search Cost?
Typical cost ranges for a patentability search — DIY, professional search firm, and attorney-reviewed opinion — and how the expense fits a TTO’s invention-evaluation budget.
Invention Secrecy Act & Patent Secrecy Orders in Federally Funded Research
How 35 U.S.C. §§ 181-188 lets the USPTO impose secrecy orders on patent applications, what that means for federally funded university research, and what tech transfer offices need to do when one is issued.
Can You Patent an Idea? The Abstract-Idea Rule Explained
An idea alone is never patentable under U.S. law. Learn why the abstract-idea exception under 35 U.S.C. § 101 exists, what actually turns an idea into a patentable invention, and how to protect an idea before it gets there.
How Do I Get a Design Patent? Requirements, Process, and USPTO Filing
A design patent protects the ornamental appearance of an article of manufacture, not its function. This guide covers 35 U.S.C. Chapter 16, the single-claim and drawings-only application rules, the 15-year post-AIA term, and how design patents fit alongside utility patents for TTOs.
How to File a Patent Application Online: A USPTO Patent Center Guide
A step-by-step walkthrough of filing a patent application online through USPTO Patent Center: what a TTO needs before filing, provisional vs. non-provisional differences, current fees, and the most common mistakes in self-filed applications.
Patent Application Format: Specification, Claims, Drawings, and Abstract
How the sections of a utility patent application specification are structured under 37 CFR 1.71-1.84 — background, summary, drawings, detailed description, claims, and abstract — distinct from filing mechanics or design-patent format.
Patent Lawyer Requirements: The Full Path to Becoming a Patent Attorney
Becoming a patent attorney requires two separate tracks: a JD plus state bar admission, and the USPTO patent bar exam. A patent agent completes only the second track. This guide covers the full requirements, timeline, and what the distinction means for a TTO hiring outside counsel.
Patent Law Requirements: The Four Tests an Invention Must Pass
The four legal requirements a patentable invention must meet — eligible subject matter, novelty, non-obviousness, and enablement/written description — explained together and cross-linked to each statute’s dedicated guide.
35 U.S.C. § 103: Non-Obviousness, the Graham Factors, and KSR
What 35 U.S.C. § 103 requires, the Graham factors, and how KSR v. Teleflex reshaped the obviousness standard for combinations of known elements in university patent prosecution.
Unified Patent Court and Unitary Patent: A Guide for University Tech Transfer Offices
What the EU’s Unitary Patent and Unified Patent Court mean for university-held European patents, including the transitional-period opt-out decision TTOs need to make before June 2030.
Independent Inventor: USPTO Entity Status, Fees, and University IP Assignment
What counts as an independent inventor for USPTO fee purposes, how small- and micro-entity discounts work, and why signing a university invention-assignment agreement changes a student or postdoc inventor’s status.
USPTO Exam (Patent Bar): Eligibility, Format, and Fees
The ‘USPTO exam’ searchers usually mean is the patent bar: the registration examination required to prosecute patent applications before the USPTO. This guide covers eligibility categories, exam format and passing score, fees, the patent-attorney-vs-patent-agent distinction, and why it matters for technology transfer offices.
Can You Patent a Recipe? Novelty, Obviousness, and Trade Secret Alternatives
Recipes are technically patentable subject matter as a process, but almost all fail the novelty and non-obviousness requirements under 35 U.S.C. 102/103. This guide explains why, what food-related inventions do get patented, why trade secret protection is the more common real-world route for commercial formulas, and where university food-science research has a genuine (if narrow) path to patentability.
35 U.S.C. § 101: Patentable Subject Matter and the Alice/Mayo Eligibility Test
What 35 U.S.C. § 101 requires, the judicial exceptions courts have read into it, and how the Alice/Mayo two-step eligibility framework applies to university software and diagnostic/biotech inventions.
35 U.S.C. § 112: The Specification, Enablement, and Written Description Requirements
35 U.S.C. § 112 sets the written description, enablement, and best-mode requirements a patent specification must satisfy — explained for university tech-transfer offices drafting and defending invention disclosures.
PCT Patent Application: The International Filing Route Explained
What a PCT (Patent Cooperation Treaty) application is, its timeline from priority date through 30/31-month national phase entry, how it fits a U.S. provisional filing, and why technology transfer offices use it to defer the cost of multiple national patent filings.
Provisional Patent Application: A Worked Example, From Disclosure to the 12-Month Deadline
A step-by-step worked example of a university invention moving from disclosure through a provisional patent filing to the 12-month non-provisional deadline — including a sample draft description and what happens if the deadline is missed.
Cost of Filing a Patent: USPTO Fees, Attorney Costs, and PCT Costs
A full cost breakdown for filing a U.S. non-provisional utility patent: USPTO filing/search/examination fees by entity size, typical attorney and patent agent drafting costs, and PCT international filing costs.
How Long Do Patents Last? Patent Term, Maintenance Fees, and Extensions
Utility patents run 20 years from the earliest non-provisional filing date under 35 U.S.C. § 154, kept in force by USPTO maintenance fees, and can be lengthened by patent term adjustment (PTA) or, for drug/device patents, patent term extension (PTE).
Provisional Patent Applications: USPTO Requirements, Cost, and the 12-Month Deadline
What a USPTO provisional patent application is, its filing requirements, current USPTO fees, the non-extendable 12-month pendency period, and why university technology transfer offices file them to protect priority ahead of an SBIR award or licensing deal.
35 U.S.C. § 102: Patent Novelty and Invention Disclosure Timing
How 35 U.S.C. § 102 novelty and its one-year grace period interact with university invention-disclosure practice and Bayh-Dole election-of-title deadlines under 37 CFR 401.14.
