Patent Clinic

Resources for Inventors

“The patent system added the fuel of interest to the fire of genius.” - Abraham Lincoln

“One might think that the money value of an invention constitutes its reward to the man who loves his work. But... I continue to find my greatest pleasure, and so my reward, in the work that precedes what the world calls success.”
- Thomas Edison

Being named an inventor on an issued patent continues to be a rewarding achievement and allows common people to join the ranks of individuals such as President Lincoln (who was the only U.S. president who has received a U.S. patent) and Steve Jobs, just to name a few. At the same time, it is also paramount for inventors to recognize and consider the commercial aspects of their inventions as the patent applications progress through the patent system. Some patents may never have any commercial value while others gain instant market acceptance. It is also common that additional resources, trial and error, and repeated failures, are required before any money-making return is realized from an issued patent.

John Marshall's Patent Clinic provides inventors like you with assistance navigating the U.S. patent system. The following documents will help you in your pursuits:

These guides provide general and foundational information about the US patent system. Changes to patenting are likely as the patent law is amended from time to time. For example, the Patent Act was amended by America Invents Act on September 16, 2011, and the amendments drastically change the U.S. patent practice.

Programs We Offer

Provisional Program
The Patent Clinic provides assistances to needy inventors to draft and file nonprovisional patent applications; however, with the implementation of the America Invents Act (AIA), the patent filing system of the U.S. is now a first-inventor-to-file (FITF) system. That is, the effective filing date of a patent application is a major factor in determining what is a prior art. Before the effective date of the AIA, it was the invention date. Therefore, the FITF system applies to applications filed on or after March 16, 2013, with no claim to prior filed application on or before March 15, 2013, or applications filed on or after March 16, 2013, that include claims that were not previously disclosed in applications filed on or before March 15, 2013.

Preparing and drafting a nonprovisional patent application takes time. Because this change of law, which has affected individual inventor’s ability to obtain a nonprovisional patent application in compliance US patent laws and rules, the Patent clinic has initiated an interim program: Provisional Program.

In the Provisional Program, the Patent Clinic assists an inventor to file a provisional patent application based on the information provided by the inventor (see “How to Submit Your Invention For Consideration” section below). A provisional patent application is a patent application that can serve as the basis for the nonprovisional patent application to be filed within one year while claiming the filing date of the provisional patent application. Typically, the provisional patent application does not comply with all the formal formatting requirements of a nonprovisional patent application, but it includes, substantively, all the subject matter of the invention. For more information, please review the information links above or helpful information from the USPTO website:

The Patent Clinic will not review the completed questionnaire for accuracy, completeness, patentability, novelty, nonobviousness, etc., except that the inventor must answer in the affirmative whether he or she meets the micro-entity requirement posted by the USPTO. The Patent Clinic has the discretion to reject submissions if the inventor fails to answer that question affirmatively. Therefore, it is the inventor’s responsibility to ensure each question is answered completely and thoroughly, because the provisional application, if filed, would serve as the basis for the later-filed nonprovisional application claiming priority therefrom. Once the questionnaire is completed and received, the Patent Clinic will assist the inventor with the filing of a provisional patent application (during spring or fall semester). The inventors will be responsible for the filing fee, including the provisional application filing fee.

If the provisional patent application is filed, the Patent Clinic will begin the evaluation of the invention as discussed in the sections below. It is to be noted that the mere fact that the Patent Clinic has assisted you in filing the provisional application DOES NOT mean your submission has been accepted to the Nonprovisional Program. If the invention is selected by the Patent Clinic to perform the Nonprovisional Program, a nonprovisional patent application will be filed claiming the priority to the provisional patent application filed during the Provisional Program.

Nonprovisional Program
If inventors do not wish to participate in the Provisional Program described in the section above or whose submission has been accepted through the Provisional Program, the Patent Clinic will proceed with the Nonprovisional Program, which does not involve the filing of a provisional patent application. Again, the inventor must answer in the affirmative whether he or she meets the micro-entity requirement posted by the USPTO. The Patent Clinic has the discretion to rejection submissions if the inventor fails to answer that question affirmatively. The Patent Clinic will evaluate the invention as discussed in the sections below. If the invention is selected, the Patent Clinic will draft and file a nonprovisional patent application within a reasonable amount of time, typically three to six months. Again, the inventors will be responsible for the filing fees (basic filing fee, examination fee, search fee).

Sometimes, the inventor might have already filed a provisional application. In that case, the Patent Clinic will evaluate your submission accordingly, given the time frame below. If the one-year deadline is shorter than the time allotted below, the Patent Clinic has the discretion to reject the submission.

Provisional/Nonprovisional Program Comparison

Differences

Provisional Program

Nonprovisional Program

Patent Clinic time evaluating, searching, etc. before accepting the submission before filing of a Provisional Patent Application

None

Not applicable

Inventor time in completing the questionnaire before filing the Provisional Patent Application

Depends on inventor

Not applicable

Cost of filing the Provisional Patent Application

Provisional filing fee paid for by inventor

Not applicable

Patent Clinic time evaluating, searching, etc. for determining acceptance in the Nonprovisional Program

3-5 weeks after filing the provisional patent application

3-5 weeks after receiving the questionnaire submission

Patent Clinic time to prepare a Nonprovisional patent application

3-6 months

3-6 months

Cost of filing the Nonprovisional patent application

Nonprovisional filing fee paid for by inventor

Nonprovisional filing fee paid for by inventor

Patent Prosecution Program
From time to time, an inventor may have already filed a nonprovisional patent application and needs assistance with prosecuting the nonprovisional patent application. The Patent Clinic can assist the inventor, provided that the response to any action from the USPTO is reasonable and that the inventor is willing to pay for any extension of time fees when necessary. The Patent Clinic will ask the inventor to sign a power of attorney authorizing the Patent Clinic to act on his or her behalf. During prosecuting the patent application, if the inventor disagrees with the course of action by the Patent clinic or if the inventor contacts or attempts to contact the patent examiner without the Patent Clinic’s prior approval, the Patent Clinic will withdraw from representing the inventor. This is because the USPTO requires that once an applicant “has appointed a representative to conduct all business before the USPTO, the USPTO will not engage in dual correspondence with applicant and applicant’s representative. Accordingly, applicant must conduct all future correspondence with this Office through the representative of record. If applicant no longer wishes to be represented by the representative of record, a revocation of power of attorney must be submitted. All correspondence address must be included on the correspondence instructing the Office where all future communications are to be mailed.”

Submitting Your Invention for Consideration

General Workflow
Submission of disclosure and other information to the Patent Clinic does not guarantee that the Patent Clinic will provide any services or will undertake the requested patent work, and it does not establish an attorney-client relationship between the Patent Clinic and the inventor. Any rejected submission will be destroyed or returned to inventors based on inventors’ instructions. If the inventor wishes to have the submitted material returned, please include a self-stamped return envelope in the submission.

In general, patent work for the Patent Clinic is planned early in July for each fall semester and late November for each spring semester. The Patent Clinic reviews each submission by performing a preliminary patentability search before accepting the submission. You will be notified if the Patent Clinic will accept the submission. Due to the submissions we receive, we may end accepting submissions for Provisional Program, Nonprovisional Program, or Patent Prosecution Program after we have already received enough work for the following semester. In that case, we encourage you to submit your submission again when we open the submission window again.

Once your submission is accepted, you will receive a formal engagement letter from the patent clinic outlining the work to be done. The Patent Clinic is organized in such a way that one or more students will work on your submission, supervised by the Patent Clinic director(s) and/or faculty supervisor(s). Due to the nature of the clinic, unless there is a pending due date, the Patent clinic could not meet inventor’s timelines or personal deadline.

Submitting Your Invention for Consideration

  1. Complete the questionnaire completely and thoroughly. If you wish to participate in the Provisional Program, in particular, your answers to the questions in the questionnaire is your provisional patent application and provides support for the nonprovisional patent application at a later time.
    1. Please answer the questions on separate sheets.
    2. Please use plain English and explain your answers. For example, please assume the reader has no understanding whatsoever about your invention. As such, please describe your invention as simple as possible by providing details to each part and element of your invention. The details may include information such as shapes, sizes, color, weight, etc.
    3. Please also describe in detail how different pieces of your invention fit together. For example, please avoid statements such as “the base and tower can be combined together...” Instead, a statement such as “For example, a L-shaped bolt of 2” long may be coupled between the base and the tower at the distal end of the base...”
    4. Please also describe how would someone use the invention as if you would have used the invention.
  2. Provide a list of search terms that you have searched on online search engines, such as Google, Yahoo, Bing, etc.
  3. Provide the search results from the list of search terms (2) above.

Failure to provide these items may result in rejection of your submission.

Your answers will only be seen only seen by a person, or persons, licensed by the USPTO and thus required by federal regulations (37 CFR Part 11) to keep the information secret and, if not licensed by the USPTO, having signed an agreement to abide by all the terms of 37 CFR Part 11.

As such, after reviewing the guides and processes above, and if you would like to submit your invention for consideration, please download and complete the invention disclosure questionnaire and send it to us at the address shown on the “Contact Us” page.

Clinic Resources