Inventing a Faster Path to Patents

The process of obtaining a patent can be long and arduous even under the absolute best circumstances. It takes resources, patience and a bit of luck.

Edward Orona, director of grants and sponsored programs, plays a large role in facilitating the process of obtaining grants that Youngstown State University faculty typically need to fund their research.

“Anything that goes to the U.S. Patent Trademark Office takes a long time to get done. Currently there’s a three-year waiting period. … Because they get so many patent applications from across the country, it takes them three years to act on them,” Orona said.

Beyond the fact that a patent application can get caught up in the bureaucratic process at the national level for up to three years, there is a lot of preparation that must go into a patent before ever submitting it.

While not much can be done to fix the overflow of applications to the USPTO, it’s in the best interest of the inventor to get his invention from completion to submission in as timely a fashion as possible. This is especially important considering that patents are awarded on a first-to-file basis. The sooner a patent is obtained, the sooner it can become available for use and provide royalties to its owner.

Tom Oder, professor of physics, recently received the university’s first patent this past August. He completed his invention in 2009 and was embroiled in the patent process for approximately five years.

At YSU, patents are processed through the Office of Graduate Studies and Research. Oder has concerns about the efficiency of this route.

“The dean of graduate studies and research has many things to do. You can’t expect him to be doing all of those things in addition to patents,” Oder said. “There has to be a separate [entity] to make things flow quicker.”

Scott Martin, interim associate dean for research, did not work directly with Oder on his patent as he is new to the position. He does sympathize with Oder’s experience however, and is in favor of fine-tuning the system.

“I think in view of the fact that we are having more frequent situations in which faculty members have ideas they think could be patentable, we need to look at the intellectual property policy and see if there are any bottlenecks in there that need to be overcome or eliminated,” Martin said.

Patent or intellectual property law is its own diverse and complex field. As such, it is not handled directly by YSU’s Office of General Counsel. The office instead hires outside lawyers who specialize in the field.

One potential bottleneck to obtaining patents at the university is the lack of a dedicated entity for facilitating the patent process.

“If you go to Akron or some other large research university, they have several patent attorneys who focus just on that,” Orona said. “They have a separate transfer technology office that deals with that. We don’t. We don’t have those resources.”

YSU actually does have a research foundation, however. The relatively new YSU Research Foundation was founded in 2010. As the foundation began after Oder began the process of pursuing his patent, the foundation was not involved.

While the foundation has yet to really be tested, it figures to play a large role in future attempts to obtain patents at the university.