Patent Approach

This overview is based on Stanford University’s patent approach, shared with permission and adaptation for the University of Miami. Due to the complexity in technology management, our patent practices may be revised from time to time and differences may exist between the procedures referenced in this overview and what is appropriate in individual circumstances. Exceptions and variations will be made due to specific factors. It is not intended to, and does not and may not be relied upon to create any right or remedies, entitlement or obligations.

University of Miami Office of Technology Transfer (“OTT”) seeks industry feedback in the patenting and technology transfer process, and to have licensees cover the patent expenses. In situations where no licensee is identified, which means no company is reimbursing patent costs, the following patent approach is adopted. 


  • Patent protection is expensive. The initial application costs about $7-12K; over its lifetime, one U.S. patent costs about $30-45K. In foreign jurisdictions such as Europe, Japan or China, this figure may be double.

  • In the U.S., a patent application can be filed up to one year after the first public disclosure of the invention. Most foreign jurisdictions are not as forgiving and a disclosure will automatically bar patenting.

  • Some of UM’s successfully commercialized technologies did not have any foreign patents.

  • Patenting is not always required or desired, since the invention could be protected through other means such as copyrights and know-how. A patent application will automatically publish in 18 months, whether or not a patent is ever issued.

  • Many great scientific breakthroughs cannot be commercialized through patenting. The patenting decision does not affect the scientific merit of the invention.

  • If the inventor(s) disagree(s) with the OTT decision whether to file a patent application, arrangements can be made for the inventor(s) and/or the inventor(s)’s department(s) to assume patenting costs for the invention, while OTT continues to market the technology.

First Filing Decision

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  • What is a provisional application?

    If the OTT Licensing Associate determines that an invention has sufficient commercial potential, s/he will probably choose to file a patent application on an invention. Usually, the first application is a U.S. provisional application. The provisional application holds a priority date for one year, but is not examined by the Patent Office. During this year, OTT will contact companies to find a commercialization partner for the technology.

  • What are characteristics of an invention with commercial potential?

    Unfortunately, we don't have a crystal ball to know which technologies will be successful or not. Some of the characteristics that we look for as indicators of the commercial potential of an invention are listed below.

    • OTT Licensing Associate's assessment of a strong, defined market opportunity for a well-developed invention that is patentable and enforceable.
    • Company(ies) who express serious interest in licensing the invention.
    • Another business expert's advice to OTT that the invention is commercially viable.
    • An inventor with past commercial success who thinks the docket will be commercially viable.


  • Why wait?

    Often the OTT Licensing Associate does not immediately have sufficient information to fully evaluate an invention, and s/he will delay the decision to file a provisional application. By waiting, OTT can gather input from other sources and make a more fully informed patent decision. Some benefits of delaying a filing decision are:

    • The inventor has more time to obtain data, which will likely result in a stronger, more commercially interesting patent application if it is filed.
    • The later the filing date on an application, the later the expiration date. If there is a commercial product covered by a patent, a later expiration date will almost always mean greater return to the inventor and to the University.
    • Industry feedback gives us more information on the commercial potential and applications and this can provide some guidance for drafting a patent application.

Filing a Regular US Patent Application

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  • What happens after the provisional year?

    One year after the provisional application is filed, OTT must decide whether or not to file:

    1. a non-provisional application claiming priority to the provisional application, and/or
    2. a Patent Cooperation Treaty (PCT) application (which preserves foreign rights). Unlike a provisional application, the non-provisional application is reviewed by a patent examiner and therefore incurs ongoing expenses after the initial filing. Typically, the OTT Licensing Associate has used the year following the provisional filing to assess the market more thoroughly and to try and identify a licensee. If these efforts have been unsuccessful, the commercial interest in the invention is usually unlikely to change. Under most circumstances, the OTT Licensing Associate will choose to file a non-provisional application based on a provisional application only if there is a licensee or if a company has expressed overwhelming interest in an invention.

  • Are there other decisions made after a regular U.S. patent application is filed?

    About two years or more after a regular U.S. patent application is filed, the Patent Office will issue an Office Action. This correspondence either accepts the patent or rejects it for reasons of novelty, usefulness, and/or obviousness. Most applications are rejected, and patent attorneys must respond to the Office Action. If a patent application for an invention enters U.S. prosecution without a licensee, the licensing associate will probably reevaluate the commercial potential when deciding whether or not to respond to an Office Action from the Patent Office.

Foreign Applications

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  • What about patents under the Patent Cooperation Treaty (PCT)?

    Most of the time, the United States has the majority of the market for commercial products covered by UM patents. Also, there are additional costs for filing a PCT application (which preserves foreign rights at the time a regular U.S. application is filed). Because of this, OTT would need significant commercial interest to justify pursuing a PCT without a licensee.

  • Do you ever file National Phase without a licensee?

    If a PCT is filed, OTT has 18 months to decide whether or not to file national phase (i.e., a patent in specific countries) applications directly in foreign countries. All told, foreign patent protection can cost $200K or more. One reason is that UM pays both the US attorney and the foreign associate when prosecuting foreign patents. In addition, there are translation costs and multiple maintenance fees. Usually at the time of national phase filing, OTT has been searching for a licensee for the invention for over two years. After this time, it is highly unlikely that commercial interest will change. Therefore, under normal circumstances, OTT does not file foreign national phase patent applications unless a licensee is reimbursing patent costs.