Page 25 - Innovator Handbook

a limited budget, patent applications are not possible for all FAU inventions. OTD carefully reviews the commercial potential for an invention before investing in the patent process. However, because the need for commencing a patent filing usually precedes finding a licensee, OTD looks for creative and cost-effective ways to seek early protection for as many promising inventions as possible.
Who decides if a patent application will be filed for an invention?
OTD and the inventor(s) discuss all of the relevant factors in deciding whether to file a patent application. Ultimately, OTD makes the final decision as to the patent strategy for a particular invention.
What does it cost to file for and obtain a patent?
A provisional patent application may
cost between $1,000 and $5,000 to file, depending on the number and complexity of claims drafted. Filing a non-provisional U.S. patent application may cost between $10,000 and $15,000. To obtain an issued patent may require an additional $10,000 to $15,000 for patent prosecution. Filing and obtaining issued patents in other countries may cost $20,000 or more per country. Also, once a patent is issued in the U.S. or in foreign countries, certain fees are required in order to maintain the patent.
What if I create a patentable invention with someone from another institution or company?
Generally, the invention is jointly owned by FAU and the other institution or company. Each inventor will assign his or her rights to their employer. OTD will work with the other entity to determine a management plan for the invention. If the other entity is a university or research institution, the parties will execute an Inter-Institutional Agreement (IIA) that designates which party will take the lead in protecting and commercializing the invention and determines each party’s share of expenses incurred and revenue received. If the invention is jointly owned with a company, OTD will work with
the company to determine the appropriate patenting and licensing strategy.
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