Entity Status

SI will inform outside counsel within SI’s initial case authorization email which entity status SI wishes to designate for a given case. Nevertheless, OC should adhere to the following general guidelines when designating ASU’s entity status:

UNLICENSED

If a case is unlicensed and all named inventors are assigning to ASU, OC should designate micro-entity status unless (1) otherwise instructed by SI in the initial case authorization email for the case, or (2) in the case of PCT applications and corresponding national phase applications, each of which should instead be filed using small-entity status.

  • When filing under micro-entity status, it is imperative that “Arizona Board of Regents on behalf of Arizona State University” still appear as the assignee of record (not applicant given the limitations of filing under micro-entity status) and on the face of any ultimately issued patents.
  • If filing under micro-entity status causes any issues on outside counsel’s end relative to needing to secure POAs from the inventors rather than ASU, outside counsel should promptly notify SI.
  • Outside counsel should notify SI prior to filing if OC believes filing under micro-entity status in a given circumstance could cause any issues relative to the right to claim priority in the EPO.

If a case is unlicensed and one or more named inventors are not assigning to ASU (e.g., in the case of a joint owner), outside counsel should err on the side of designating small-entity status unless otherwise instructed by SI in the initial case authorization email for the case or unless outside counsel recognizes that the joint owner likely only qualifies as a large entity (e.g., Toyota Motor Corporation).

LICENSED

If a case is licensed, outside counsel should err on the side of designating small-entity status unless otherwise instructed by SI in the initial case authorization email for the case or unless outside counsel recognizes that the licensee (or a joint entity, if present) likely only qualifies as a large entity (e.g., Toyota Motor Corporation).

Jointly Owned/Undergrad

Additional complexities arise when one of SI’s cases is jointly owned with another non-commercial entity or an individual.

When a case is jointly owned between SI and another institution or non-commercial entity (e.g., another university), SI will enter into an interinstitutional agreement (IIA) with the joint owner. The IIA will designate one institute as the “lead institution” with authority to manage patenting, marketing, and licensing activities on behalf of both parties.

When a case is jointly owned between SI and an individual, such as person who has no duty to assign to ASU, SI manages the situation on a case-by-case basis. The most common instance in which this particular scenario occurs is when (1) an undergraduate student contributes to IP in the course of completing a capstone project required for degree-completion purposes, and (2) the IP is co-owned by ASU due to inventive contributions made by an ASU employee – most commonly a faculty member advising the undergraduate capstone group. In such instances, SI typically outlines three options for the student with the caveat that the decision is the student’s to make and the student should consider consulting with independent legal counsel on the matter:

  1. The student can assign to ASU, in which SI will manage and bear the cost of all patenting activities and ASU will consider the student a “Creator” eligible to participate in the “Creator’s Share” of net licensing income under ASU’s revenue-sharing policy alongside other named “Creators;” or
  2. The student can retain their legal interest in the IP and the parties can enter into an IIA (see above), in which case SI will manage all patenting activities and the parties will agree to a revenue-split of net licensing income, but the student must be responsible for a share of patent expenses that is at least equal to the student’s share in the revenue-split; or
  3. The student can retain their legal interest in the IP and the parties can each independently pursue patenting, marketing, and licensing activities (likely in competition with one another) with no duty to account to one another.

In SI’s experience, most students elect option #1.

If a student selects options #2, outside counsel may use the form agreement linked here Model IIA when requesting any necessary power-of-attorney documents from such student.

Federal Funding

If the invention was conceived or first actually reduced to practice in the performance of work funded, in whole or in part, by any federal grant(s), contract(s) or subcontract(s), our office has reporting obligations and the specification must have exactly (verbatim) the following language or we are not in compliance (see MPEP § 310) and we will end up needing to file an amendment to fix it:

This invention was made with government support under [identify the contract] awarded by [identify the Federal agency]. The government has certain rights in the invention.

If an inventor notifies your office of funding (or you notice an indication of such funding on the documents provided) that we have not notified you of, notify our office as soon as possible so we can confirm the grant information and provide you with the correct clause.

First-Filing Requirements

Prior to filing a patent application for SI, outside counsel should identify, bring to SI’s attention, and propose a path forward (e.g., obtaining a foreign-filing license, making a first filing in a foreign country so as to satisfy such country’s first-filing requirements, etc.) regarding any applicable first-filing requirements potentially implicated by the location of any inventive activity, the citizenship or residency of any potential inventors, or other factors (e.g., with respect to the UK, Greece, India, China, and other regions).

Assignment

All ASU inventors and others with a duty to assign to ASU under the ABOR IP policy assign to:

Arizona Board of Regents on behalf of Arizona State University

(A body corporate of Arizona State)

Outside counsel should prepare assignments for all cases using whichever of the following templates is appropriate in view of the circumstances:

ASU Employee:

SI Assignment Template – ASU Employee

Non-ASU Assigning to ASU (please verify with SI which version to use):

SI Assignment Template – Non-ASU Assignor

SI Assignment Template – Non-ASU Assignor – RSP 604

Outside counsel should send the assignments to the inventors for signature (and copy [email protected]) when circulating the draft application to the inventors and SI for review.

Outside counsel should always send assignments for signature using DocuSign or an equivalent electronic-signature mechanism unless outside counsel has concerns about the validity of such an electronic signature in a particular jurisdiction, in which case outside counsel should raise such concern with the SI Lead and copy [email protected].

Outside counsel should utilize auto-reminder features built into DocuSign or equivalent electronic-signature mechanisms to automatically follow up with inventors on a reasonable basis (e.g., once every other week) while limiting billable firm time associated with manually sending reminders. Outside counsel should notify SI after an inventor has remained nonresponsive for a period of three months.

Note: Send SI a copy of the Notice of Recordation as soon as possible for SI’s records.

Assignments after the provisional application stage:

Outside counsel should record the executed assignment obtained at the provisional application stage against future corresponding nonprovisional, PCT, and national stage applications unless such future applications possibly contain new matter compared to the provisional application, in which case outside counsel should obtain and record new assignments that explicitly reference such future applications.

Outside counsel must check for any new assignments required from any new inventors named in such future applications that were not named in the provisional application.

When recording assignments in national phase applications or direct filings in ex-US jurisdictions, outside counsel must adhere to local requirements to ensure assignments are valid (e.g., countersignature requirements in EPO cases).

Outside-party assignments – If SI has confirmed that a case appears to be jointly owned, outside counsel should ask the joint owner to send outside counsel and SI the outside party’s signed assignment documents (prepared by such outside party) for such outside party’s own inventors (copying [email protected]). To conserve SI’s bandwidth/costs in unlicensed cases, outside counsel should generally make one attempt and, if the joint owner never replies, outside counsel should move on without providing additional reminders provided that such assignment is not required for purposes of preserving the right to claim priority in a foreign region (e.g., EP), managing power-of-attorney or entity-status considerations, or otherwise.

Power of Attorney

THE SIGNATORY FOR POWERS OF ATTORNEY IS:

Adriana Kuiper

Associate VP & COO, ASU Knowledge Enterprise
Arizona Board of Regents on behalf of Arizona State University

Provisional Applications

Budget and Timing

UNLICENSED
  • Flat Fee – $3,000 plus filing fees
  • Turnaround time for first draft – Four (4) weeks from authorization unless circumstances dictate a faster timeline (e.g., imminent public disclosure, bar date, etc.)
  • Filing deadline for final draft – Six (6) weeks from authorization unless circumstances dictate a faster timeline (e.g., imminent public disclosure, bar date, etc.)
LICENSED
  • Outside counsel-provided cost estimate after Licensed-Application Conference – Because the cost and scope of a provisional application can vary widely and depend on many circumstances, outside counsel should initiate a discussion with SI and its licensee to discuss the circumstances in which SI and its licensee are pursuing the provisional at issue (the “Licensed-Application Conference”). After the Licensed-Application Conference, outside counsel should provide SI and its licensee with a cost estimate for preparing a provisional application tailored to the circumstances and consistent with industry-standard best practices.
  • Turnaround time for first draft – Unless otherwise agreed-upon in advance among outside counsel, SI, and SI’s licensee, four (4) weeks from authorization in the absence of circumstances that dictate a faster timeline (e.g., imminent public disclosure, bar date, etc.)
  • Filing deadline for final draft – Unless otherwise agreed-upon in advance among outside counsel, SI, and SI’s licensee, six (6) weeks from authorization in the absence of circumstances that dictate a faster timeline (e.g., imminent public disclosure, bar date, etc.)

Claims

UNLICENSED
  • Outside counsel should endeavor to, within SI’s standard flat fee, draft 20 total claims, including at least two independent claims of varying scope with the remainder of claims being dependent claims directed to fallback points of novelty.
LICENSED
  • In a licensed case, outside counsel should draft the claims in accordance with both the strategy agreed-upon during the Licensed-Application Conference and industry-standard best practices. In one instance, for example, the licensee may wish to invest $3,000 in a provisional application and may expect such application to bear the scope and formality level of one of SI’s unlicensed provisional applications. In another instance, however, the licensee may be willing to invest additional funds above and beyond $3,000, but may expect the resulting provisional application to be correspondingly more robust and formal (e.g., more akin to a nonprovisional application).

Specification

UNLICENSED
  • Literal support for claims – SI expects the claims to be collapsed back into the detailed description section in narrative form to preserve literal support for such claims.
  • Description of drawings – SI expects the detailed description to provide a thorough, walk-through description of at least whatever drawing counsel deems the most important drawing (e.g., schematic illustrating an important point of novelty in a device); other drawings should at least be briefly summarized so as to meet the requirements of 35 U.S.C. 112.
  • Federal funding statement – Must be included in the specification when funding is present.
  • Reference numerals – Not expected within standard flat fee at the provisional stage
  • Format – SI expects every provisional application to look like a patent application (e.g., with appropriate headers found in a nonprovisional); it should not look like a copy-pasted journal publication with claims at the end (e.g., should not contain “I,” “we,” or other first-person pronouns).
  • Patent profanity – Outside counsel should ensure that terms or phrases that are potentially detrimental or at best introduce risk while adding little value (e.g., “preferably,” “The invention is . . . .”) do not appear in the application.
  • Custom cover sheets – Outside counsel should not, in as-filed form, contain custom law firm cover sheets listing the title, inventors, and prosecuting firm for an application. Such cover sheets are not required by law or the MPEP and only create more work for SI in the future if the list of inventors or other data needs to be updated.
LICENSED
  • In a licensed case, outside counsel should draft the specification in accordance with both the strategy agreed-upon during the Licensed-Application Conference and industry-standard best practices. In one instance, for example, the licensee may wish to invest $3,000 in a provisional application and may expect such application to bear the scope and formality-level of one of SI’s unlicensed provisional applications. In another instance, however, the licensee may be willing to invest additional funds above and beyond $3,000, but may expect the resulting provisional application to be correspondingly more robust and formal (e.g., more akin to a nonprovisional application).

Drawings

UNLICENSED
  • Informal line drawings – SI expects provisionals to contain, at least in an informal presentation sufficient to meet the requirements of 35 U.S.C. 112, all drawings providing by SI or the inventors unless including a particular drawing would be superfluous/cumulative based on other drawings already included in the application. Each drawing should be described in the detailed description.
  • Formal line drawings – SI does not expect formal line drawings in our provisionals; SI prefers to defer the cost of such formal drawings.
LICENSED
  • In a licensed case, outside counsel should prepare the drawings in accordance with both the strategy agreed-upon during the Licensed-Application Conference and industry-standard best practices. In one instance, for example, the licensee may wish to invest funds on formal line drawings at the provisional stage. In another instance, however, the licensee may prefer to defer such costs.

Nonprovisional and PCT Applications

Budget and Timing

UNLICENSED
  • Flat Fee – $5,000 plus filing fees (i.e., $8,000 inclusive of whatever firm time was billed for the provisional). This flat fee is not intended to cover costs charged by outside vendors in connection with the preparation of formal drawings and sequence listings.
  • Turnaround time for first draft – At least four (4) weeks prior to the statutory conversion deadline unless circumstances dictate otherwise (e.g., SI did not provide conversion instructions at least eight weeks prior to the statutory conversion deadline).
  • Filing deadline for final draft – No later than the statutory conversion deadline.
  • RO/ISA (in the case of a PCT application) – Unless SI indicates otherwise, always use the USPTO as the receiving office (RO) and international search authority (ISA).
LICENSED
  • Outside counsel-provided cost estimate after Licensed-Application Conference – Because the cost and scope of a nonprovisional/PCT application can vary widely and depend on many circumstances, outside counsel should initiate a discussion with SI and its licensee to discuss the circumstances in which SI and its licensee are pursuing the nonprovisional/PCT at issue (the “Licensed-Application Conference”). Outside counsel should prepare licensed nonprovisional/PCT applications in accordance with both the strategy agreed-upon during the Licensed-Application Conference and industry-standard best practices. In one instance, for example, the licensee may wish to invest $5,000 in a nonprovisional/PCT application based on a prior $3,000 provisional and may expect such nonprovisional/PCT application to bear the scope of one of SI’s unlicensed nonprovisional/PCT applications. In another instance, however, the licensee may be willing to invest additional funds above and beyond $8,000 in aggregate for the provisional and nonprovisional/PCT, but may expect the resulting nonprovisional/PCT application to be correspondingly more robust (e.g., additional embodiments described in detail, alternative claim sets prepared in advance, etc.). After the Licensed-Application Conference, outside counsel should provide SI and its licensee with a cost estimate for preparing a nonprovisional/PCT application tailored to the circumstances and consistent with industry-standard best practices.
  • Turnaround time for first draft – Unless otherwise agreed-upon in advance among outside counsel, SI, and SI’s licensee, four (4) weeks prior to the statutory conversion deadline unless circumstances dictate otherwise (e.g., SI and its licensee did not provide conversion instructions at least eight weeks prior to the statutory conversion deadline.
  • Filing deadline for final draft – No later than the statutory conversion deadline.

Claims

UNLICENSED
  • Outside counsel should draft 20 total claims, including at least two independent claims of varying scope with the remainder of claims being dependent claims directed to fallback points of novelty.
  • Outside counsel may draft more than 20 claims and more than three independent claims for purposes of discussion (or additional searching in the case of a PCT application) provided doing so can be accomplished within the flat fee, but outside counsel should not actually file more than 20 total claims or more than three independent claims (which would result in excess claim fees) in a nonprovisional application without first obtaining approval from SI.
  • To the extent outside counsel drafts multiple dependent claims in a PCT application, outside counsel should avoid including in the actual as-filed claims listing (but instead include in the detailed description of the specification) any multiple dependent claims that would be deemed improper (and thus not included within the scope of the search) under the national practice of the region or country serving as the International Search Authority (e.g., in the case of the U.S., multiple dependent claims other than those referring to base claims in the alternative). In such cases, outside counsel should instead include such multiple independent claims within the detail description of the specification to ensure SI has sufficient support to pursue them in ex-US jurisdictions such as the EPO.
LICENSED
  • In a licensed case, outside counsel should draft the claims in accordance with both the strategy agreed-upon during the Licensed-Application Conference and industry-standard best practices. In one instance, for example, the licensee may wish to invest $5,000 in a nonprovisional/PCT application based on a prior $3,000 provisional and thus may expect such application to bear the scope and formality-level of one of SI’s unlicensed provisional applications. In another instance, however, the licensee may be willing to invest additional funds at conversion above and beyond $8,000 in aggregate for the provisional and nonprovisional/PCT, but may expect the resulting nonprovisional/PCT application to be correspondingly more robust and formal (e.g., more than 20 total claims).

Specification

UNLICENSED
  • Literal support for claims – SI expects the claims to be collapsed back into the detailed description section in narrative form to preserve literal support.
  • Description of drawings – SI expects the detailed description to provide a thorough, walk-through description of each and every drawing included in the specification in a manner sufficient to meet the requirements of 35 U.S.C. 112 and, in the case of a PCT application, corresponding requirements in the EPO and other prominent ex-US jurisdictions.
  • Federal funding statement – Must be included in the specifications when funding is present.
  • Patent profanity – Outside counsel should ensure that terms or phrases that are potentially detrimental or at best introduce risk while adding little value (e.g., “preferably,” “The invention is . . . .”) do not appear in the application.
  • Custom cover sheets – Outside counsel should not, in as-filed form, contain custom law firm cover sheets listing the title, inventors, and prosecuting firm for an application. Such cover sheets are not required by law or the MPEP and only create more work for SI in the future if the list of inventors or other data needs to be updated.
LICENSED
  • In a licensed case, outside counsel should draft the specification in accordance with both the strategy agreed-upon during the Licensed-Application Conference and industry-standard best practices. In one instance, for example, the licensee may wish to invest $5,000 in a nonprovisional/PCT application based on a $3,000 provisional and may expect such application to bear the scope and formality-level of one of SI’s unlicensed nonprovisional/PCT applications. In another instance, however, the licensee may be willing to invest additional funds above and beyond $8,000 in aggregate for the provisional and nonprovisional/PCT, but may expect the resulting nonprovisional/PCT application to be correspondingly more robust and formal (e.g., additional embodiments described in detail, alternative claim sets prepared in advance, etc.).

Drawings

UNLICENSED
  • Outside counsel should obtain formal drawings from an external patent-drawings vendor for filing in unlicensed nonprovisional and PCT applications. 
  • In doing so, outside counsel must include within such applications all figures necessary to sufficiently convey the applicable subject matter for purposes of meeting the requirements of 35 U.S.C. 112 and, in the case of a PCT application, corresponding requirements in the EPO and other prominent ex-US jurisdictions.
  • To the extent one or more figures present in the provisional application are not necessary in the nonprovisional or PCT application for purposes of meeting requirements of 35 U.S.C. 112 and, in the case of a PCT application, corresponding requirements in the EPO and other prominent ex-US jurisdictions, outside counsel should omit such drawings from the application (e.g., where including a certain figure in the nonprovisional or PCT application would convey duplicative information already taught in a different figure included in the application). In doing so, outside counsel’s goal should be to control the costs associated with the formal drawings while always prioritizing the satisfaction of applicable disclosure requirements.
  • When obtaining formal drawings, outside counsel should work with an external patent-drawings vendor to prepare, professional drawings that meet all USPTO-mandated formalities and comply with industry-standard best practices. 
  • If the vendor’s charge for preparing drawings exceeds $75 per sheet (as distinct from “per figure”), outside counsel must obtain the relevant SI Lead’s approval before hiring such vendor to prepare the drawings.
LICENSED
  • In a licensed case, outside counsel should prepare the formal patent drawings in accordance with both the strategy agreed-upon during the Licensed-Application Conference and industry-standard best practices. In one instance, for example, the licensee may wish to invest funds on formal line drawings at the time of filing. In another instance, however, the licensee may prefer to defer such costs where possible.

National Phase Applications

Budget and Timing

UNLICENSED
  • Flat Fee – No PPH $750/ PPH $1,500 – For PPH filings: see IDS Slides— Steps 1-2 should be completed so that the IDS is ready to file along with the application.
  • Turnaround time for first draft – At least four (4) weeks prior to the statutory conversion deadline unless circumstances dictate otherwise (e.g., SI did not provide conversion instructions at least eight weeks prior to the statutory conversion deadline)
  • Filing deadline for final draft – No later than the statutory conversion deadline
LICENSED
  • Outside counsel-provided cost estimate after Licensed-Application Conference – Because the cost and scope of a nonprovisional application can vary widely and depend on many circumstances, outside counsel should initiate a discussion with SI and its licensee to discuss the circumstances in which SI and its licensee are pursuing the nonprovisional at issue (the “Licensed-Application Conference”). After the Licensed-Application Conference, outside counsel should provide SI and its licensee with a cost estimate for preparing a nonprovisional application tailored to the circumstances and consistent with industry-standard best practices. In the context of a national phase application, the Licensed-Application Conference will likely focus on the number and scope of the claims to be filed upon national phase entry.
  • Turnaround time for first draft – Unless otherwise agreed-upon in advance among outside counsel , SI, and SI’s licensee, four (4) weeks prior to the statutory conversion deadline unless circumstances dictate otherwise (e.g., SI and its licensee did not provide conversion instructions at least eight weeks prior to the statutory conversion deadline)
  • Filing deadline for final draft – No later than the statutory conversion deadline.

Claims

UNLICENSED
  • If SI’s marketing campaign does not lead to an option or license agreement, SI will likely file only a US national phase application (i.e., no ex-US national phase applications) in most (but not all) cases.
  • Outside counsel should propose 20 claims to retain in the national phase application as a redline against the full claim set from the PCT application (with a clean copy as well) within two (2) weeks of the 30-month national phase deadline. Outside counsel should not propose more than 20 claims in an unlicensed case.
  • Outside counsel should work with SI and the licensee to shape the claim set for national entry in accordance with both the strategy agreed-upon during the Licensed-Application Conference and industry-standard best practices. In one instance, for example, the licensee may wish to enter the U.S. national phase with only 20 claims to avoid excess claim fees, while another instance a different licensee may wish to enter the U.S. national phase with 35 claims and may be willing to pay the additional excess claim fees.
LICENSED

Non-U.S. Filings

Unless otherwise approved by Skysong Innovations, all new filings in the EP should be made through Withers & Rogers: