Information to Inventors Regarding the Patenting Process

Obtaining a patent is a long and expensive process that Ramot undertakes when a technology with commercial potential is submitted to it by the University. Ramot has established an internal patent committee in order to ensure proper assessment of inventions and the making of informed and well thought-out decisions, which have substantial financial consequences. The committee members include Ramot's CEO, the Business Development Manager, the Intellectual Property (IP) Manager, and the Business Development and the IP professional personnel. Ramot's patent committee meets regularly to discuss various intellectual property and business issues that relate to inventions as they reach decisions points, as outlines below. The committee calls on professional consultants when required.

It is important to note that Ramot's internal committee serves a different purpose than that of Tel Aviv University's Patent Committee, whose role is described in the Inventions and Patent Regulations of TAU.
When dealing with new inventions please note the following:

Invention Disclosure
You and your colleague inventors should file with Ramot a signed Invention Disclosure Form, before the invention is publicly disclosed and before it is brought for assessment by Ramot patent committee. This disclosure form is an extremely important document which provides both the technical and initial commercial aspects of the invention, and which allows educated evaluation, as well as the partition of rights among the inventors. The document also provides important information about publications and sources of research funds used. Ramot cannot proceed with the patent process without an Invention Disclosure Form executed by all inventors.

Ramot patent committee meets at the end of every month. Disclosures of new inventions should be submitted by the 20th of the month, in order to enable Ramot time for assessment. Disclosures submitted after the 20th of the month will be discussed in the meeting of the following month.

Scientific Search for Prior Art
Scientific search for prior art is best done by you and your co-inventors since you are most familiar with the field of the invention. Therefore, when submitting a new invention disclosure we ask to see the search strategy and the search results. We can assist in formulating this strategy.

Priority Application
Once Ramot patent committee decides to file a new patent application, we usually file a provisional application in the US, which costs few hundred US dollars. A provisional patent application has a number of advantages relating to the lifetime of the patent. It also assists in filing later a complete PCT application which includes more experimental data and other enabling information that was obtained within the priority year. Typically, the provisional application is based on the invention description provided by yourself and your co-inventors and it is only briefly reviewed by a patent professional (either within Ramot or external) before the filing. In few cases, a fully drafted provisional patent application is filed. In a good number of cases the filing is preceded by a brief patents search that is carried by the Ramot IP department. The most relevant documents found in the search are sent to and discussed with the inventors.

After Ramot has decided to file the Provisional application, you and your co-inventors will be asked to sign a Patent Agreement between TAU, Ramot and the inventors. In this agreement the relative share of each inventors' contribution to the invention will be specified according to the Invention Disclosure Form.

Description of the Invention
In order for the provisional patent application to be meaningful, the level of description must be sufficient to show that the inventor was in possession of the invention at the date of first filing. As a consequence, you need to provide us with a manuscript level description, which includes: (i) background, in which the publications that are relevant to the invention are described and discussed, especially their limitations as compared to the present invention; (ii) discussion, in which the advantages, as many as possible modifications and as many as possible applications of the new technology are discussed; (iii) materials and methods and experimental results; and (iv) figures, legend to figures.

Fully drafted PCT or US Application
Within 12 months from priority filing of the provisional application Ramot patent committee decides whether to continue with the invention or release it to you. The committee evaluates all pertaining technical advancement, and the prospects of commercializing the invention, based on any feedback obtained by Ramot's business development case manager from potential partners. In case the decision is positive, a fully drafted application is prepared by a professional patent attorney. This application is based on the provisional application as well as all new information and supporting data including any improvements, etc. that should be provided by you. We then file either an international application (PCT) or solely a regular US application (at a cost of about $10k-$15k).

National Phase Application
Within 18 months after the PCT filing, Ramot patent committee decides whether to proceed with the application, and in which territories and countries to seek protection. This phase is very expensive, tens of thousands of dollars and more. Typically at this stage Ramot should have a concrete commercial partner showing interest, which can bear the patent costs.

Patent Prosecution
Once the application is filed within a certain country or territory, patent prosecution begins. The patent examiner checks your patent claims against prior art (scientific articles and prior patent disclosures). Our patent attorney, with our help, may negotiate with the patent examiner revised claims so as to avoid and circumvent prior disclosure. This process may require your support since you are the technical expert on the subject matter. Note that all revision to the claims must be supported by an appropriate disclosure in the patent application as filed, and no new matter can be added, hence the requirement for the widest possible disclosure at the PCT stage.

Grant of Patent
Patent application is examined separately at each country or territory in which it was filed. Once the patent prosecution process is finished and the patent claims are finally allowed, we pay the required fees, and the Patent is granted and published.