What is OTC's patent strategy?
If the Office of Technology Commercialization (OTC) decides to file a patent, it will try to time the initial filing with as close as possible BUT PRIOR TO any enabling publication or disclosure related to the invention. In essence, this will give MD Anderson 30 months to find a licensee prior to nationalization. (See "How does OTC market my invention?".)
The initial filing is typically a US provisional patent application. This filing serves to protect our right to patent the invention in all jurisdictions even after disclosure. A typical provisional application costs approximately $10,000.
The provisional application must be converted to a PCT filing or US utility patent application within 12 months. At this time any new information or data may be added to the application. Typically, if the inventor is still actively developing the technology, OTC will convert the provisional application to a PCT filing, which protects patentability worldwide. The cost of filing a PCT typically costs about $3500, but may be more if a large amount of information is added during the conversion.
Eighteen (18) months after the PCT filing (or 30 months from the initial provisional application filing date), OTC must nationalize the patent. This means that a separate patent application must be filed in every national jurisdiction for which patent protection is sought (e.g., US, Europe, Canada, Mexico, Japan, Australia, etc.). At this point, patenting costs grow exponentially and can run into the hundreds of thousands of dollars for worldwide protection. Because of these high costs, OTC will not nationalize the patent in any foreign jurisdiction unless the technology is optioned or licensed and such costs are paid for by the licensee. OTC will consider nationalizing in the US if the technology is still being actively pursued and is licensable.