Patents are the most common form of technology IP protection. On average, Yissum files about 90 new patents annually.
The process takes time. We usually advise inventors to give us at least six month’s notice prior to the time they intend to publish or publicly disclose the invention. Once Yissum receives a Notice of Invention from a researcher:
- Our patent attorney (or outside attorneys) conducts a patent search.
- We review the patent strategies and endeavor to understand their different strengths and weaknesses in relation to potential markets.
- We conduct a preliminary evaluation. Yissum applies for IP protection either in the United States or in Israel. Further evaluation may lead to patent applications in Europe, Japan, or other countries, depending on the technology and market scope.
- In some cases (for example, because of an impending publication a patent application must to be filed prior to a proper evaluation), patents may be filed in the United States as provisional applications, a process that grants protection for one year.
Provisional patents are used because they are:
1) less expensive to draft and file;
2) not required to be as detailed as a regular patent application and are not subject to the formalities involved in a regular patent application; and
3) grant us time to better evaluate the invention, thereby allowing us to decide whether to incur the expense of the drafting and filing of a regular patent application.
We cover the patent costs when we opt to pursue the patenting process. If we decide not to pursue a patent, inventors may initiate and continue the patent process independently, at their own expense. In either case, according to the Hebrew University regulations, all inventions and know how developed by HU researchers belongs to Yissum.
