Page 22 - Innovator Handbook

inventorship may change as the claims are changed during prosecution of the patent application. An employer or person who furnishes money to build or practice an invention is not an inventor. Inventorship is a legal issue and may require an intricate legal determination by the patent practitioner prosecuting the application.
Who is responsible for patenting?
OTD contracts with outside legal counsel for patent protection, thus assuring access to patent law practitioners in diverse scientific and technical areas. Inventors work with their assigned practitioner in drafting the patent application and corresponding with the relevant patent office in which the application is filed. OTD is responsible for the selection and oversight of outside legal counsel.
What is the patenting process?
Patent applications are generally
drafted by a patent attorney or
patent agent. The practitioner
assigned to your application will ask
you questions about the invention
as he or she drafts the claims. When
the application is finalized, you will
have an opportunity to review the
application before it is filed. At the time of filing, you will be asked to sign an inventor declaration and an assignment under which you assign your rights in the patent to FAU.
It takes anywhere from 12 to 24 months from the date of filing for a patent examiner from the USPTO to respond to an application. The response will either approve the application or reject it in the form of an Office Action. An application may receive an Office Action if the patent examiner argues that the application’s claims are not patentable over the “prior art” (any patents or other documents that were publicly disclosed before the subject application was filed).
To overcome the examiner’s argument, the patent practitioner assigned to your application may file a written response to the Office Action amending the application’s claims and/or arguing why the patent examiner’s position is incorrect. This process is referred to as patent prosecution. During the prosecution process, your input is often needed to understand the technical aspects of the invention and/or the
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