Our focus is on technologies with the short or long-term potential to generate substantial commercial value. Sometimes, the most promising inventions require time to allow the technology and/or market to mature. Most times, however, we can begin commercialization as soon as the first application is filed.


Our approach typically employs the following methodology:


Step 1: Enter Into an Agreement with the Patent Owner


To create a (hopefully) long term relationship, the Bastille Progam team meets with institutional patent owners, present the case for the Bastille Program, address whatever concerns may exist and explain the financial arrangements.  Among the many advantages to a client participating in the Bastille Program are the highest quality legal team, an experienced commercialization team, and our alignment of interests through “risk sharing”. Risk sharing means that we take the financial risk and our client has no financial exposure or downside risk.


Step 2: Invention Disclosure


The institution’s authorized staff provides an “invention disclosure” form, which describes a patentable invention or technology which the researcher believes may have commercial potential. This is the beginning of the relationship between a researcher and the Bastille Program.


What is an invention disclosure?


The invention disclosure is a confidential document that provides a snapshot of a technology. The document addresses technical aspects of the technology, such as the science behind the invention, its advantages over prior art, its potential drawbacks, and its scope of use. In addition, the invention disclosure addresses legal matters (such as prior disclosure).


How do I submit an invention disclosure?


You may submit details about an invention using your institution’s form or the invention disclosure form available on our web site.


Step 3: Patentability and Potential Commercial Value Evaluation


The Bastille Program carefully reviews each invention disclosure to determine its (1) fit for the current and anticipated marketplace and (2) patentability.


As part of the technology vetting process, consideration is given to identifying technology’s potential commercial value.  We conduct a thorough market evaluation, which often involves one or more discussions with the inventor regarding his or her thoughts on potential commercial applications.  The process of ascertaining potential commercial value also involves discussions with experts, including Fish & Richardson’s PhD’s in the relevant field of technology.


On a separate track, the patentability of the invention is evaluated and a preliminary search of prior art is undertaken to assess its novelty.


This process forms the basis for our decision whether or not to accept the technology into the Bastille Program. We then notify the researcher and his/her institution if we will accept the technology. If a technology does not qualify for the Bastille Program, the researcher or institution are free to do as they wish with that technology.


Step 4: Prosecute the Patent


This is where Fish & Richardson can benefit your institution.  Fish excels atcreating well-conceived, superbly drafted patent applications with technical gravitas.


What Is patent prosecution?


Patent prosecution is the term applied to the interaction between applicants and their representatives, and a patent office with regard to a patent or an application for a patent.


Preparation of an application


To obtain patent rights for a technology, a subject matter expert at Fish & Richardson drafts an application. This typically involves interviewing the inventor to understand the nature of the technology, particularly with a view to understanding its novelty. This helps Fish’s patent prosecutors distinguish the new technology from what is already known to people familiar with the general field of the invention (this is called “prior art”). During the initial interview, we will ask for drawings and written notes regarding the features of the invention and its background.


During this initial phase (“patent preparation”), we will also determine precisely who contributed to the technology/invention. An incorrect listing of inventors may incurably invalidate any patent that might result from an application. We will also ask whether there have been any publications, offers for sale, or other public disclosures of the technology.


After drafting an application, complying with any further rules (such as having the inventor or inventors review the application prior to filing), and obtaining the applicant's permission, we file the patent application with the United States Patent and Trademark Office (USPTO). We try to file the application as soon as possible because, if two or more applications on the same subject matter are filed, only the party who filed first will be entitled to a patent under the First to File Rule.


Filing an application


The provisional patent applications we file are comprised of:

  • an abstract that briefly summarizes the invention
  • a general, written description of the invention and at least one “embodiment” (The US Patent and Trademark office defines “embodiment” as: “a manner in which an invention can be made, used, practiced or expressed) of the invention that is claimed
  • a set of “claims” (The US Patent and Trademark office observes that “claims" define the invention and are what aspects are legally enforceable. The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery. The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable (clearly understood) by reference to the description) written in a special style that defines exactly what the inventor regards as the particular features of his or her invention (These claims are used to distinguish the invention from the existing prior art, and are compared by the USPTO to the prior art before issuing a patent).
  • A drawing or set of drawings, to facilitate the understanding of the invention

Search and examination


The search and examination phases constitute the main part of the prosecution of a patent application leading to grant or refusal.


A search is conducted by the USPTO for any prior art that is relevant to the application in question and the results of that search are notified to the patent attorney at Fish in what is known as a search report. Generally, the examiner conducting the search indicates in what aspect the documents cited are relevant and to the relevant claims. The materials searched vary but principally cover all published patent applications and technical publications. The patent office can provide a preliminary, non-binding opinion on patentability, to indicate its views.


The examination of patent applications is conducted concurrently with the search. Examination is the process by which the USPTO determines whether a patent application meets the requirements for granting a patent. The process involves considering whether the invention is new, useful and not obvious.


If the examiner finds that the application does not comply with these requirements, an “office action” is issued setting forth the examiner’s objections. In the US, office actions are commonplace. We respond by arguing in support of the application or making amendments to the application to overcome the objection. Alternatively, if the examiner’s objections are valid and cannot be overcome, the application may be abandoned.


The process of objection and response is repeated until the patent is in a form suitable for grant, the Applicant abandons the applications, or a hearing is arranged to resolve the matter.


Step 5: File PCT Application


The most important aspect of the PCT or international application is that it keeps open the ability (for 18 months after the first anniversary of filing the original patent) to file national or regional patent applications in any PCT member state.


A single filing of an international application is made in one language. A search is then made by an authorized International Searching Authority (ISA) to find the most relevant prior art documents regarding the claimed subject matter. The search results in an International Search Report (ISR), together with a written opinion regarding patentability.


The ISR is normally provided by the ISA to the applicant 9 months after filing of the application in the event of a first filing and 16 months after the priority date in the event of a subsequent filing (i.e., claiming the priority of a first filing). The ISR is published together with the international application (or as soon as possible afterwards).


Step 6: Begin Commercialization Campaign


In many cases, we begin to commercialize technology as soon as the USA provisional patent application is filed.


We start by building a business plan that optimizes the technology’s value. Among the many factors we consider are the form of commercialization that we will pursue. Among the possibilities we will discuss with you on a case-by-case basis are:

  • Negotiating a license which gives exclusive rights to the technology, for a designated time period and in a designated area, typically in exchange for staged fees and/or royalties
  • Negotiating a license which gives non-exclusive rights to the technology, for a designated time period and in a designated area, typically in exchange for fees and/or royalties
  • Establishing a joint venture
  • Selling the technology

A licensing agreement is the most commonly used mechanism for commercializing technology from academic and research institutions. Different types of inventions lead to different licensing strategies: A basic scientific tool which could be used by everyone in the field might have a non-exclusive license, whereas an invention requiring extensive investment may be licensed exclusively.


Throughout the commercialization process, we keep our clients fully informed of developments. Our clients always have the final decision-making authority, although we hope they will seriously consider our recommendations.







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