Have an Idea for Oil and Gas? Here’s How to File a Patent
[The article is for information purposes only and is not intended to be relied upon as legal advice.]
Owing to its inherent complexities, the oil and gas industry is one of the most technologically advanced industries, and has a long-standing history of heavily investing in research and development. Similarly, universities undertake research efforts that often result in the creation of novel technology. Strong intellectual property protection for innovative technology is one way that companies and universities can remain competitive. The surest way to safeguard emerging technologies is by securing patent protection.
A Deloitte report in 2015 shows that the growth trajectory in oil and gas patents has stabilized in recent years, while efforts in key technologies such as earth drilling, geophysics, and metalworking are ahead compared to the total patent universe. Hydraulic fracturing related technologies have more than doubled over the past 10 years corresponding to the boom in shale development in the US. Exiting new technologies continue to emerge related to the fields of nanoparticles, monitoring and sensing, fluids treatment, and enhanced oil recovery, suggesting efforts within the industry to remain competitive through innovation.
What is a Patent?
A patent refers to a government-granted intellectual property right. A patent allows its owner the right to “exclude others” from making, using, selling, and importing an invention for a limited time, usually 20 years. In the US, the United States Patent and Trademark Office (USPTO) manages the patent applications and issues patents to those that meet the legal requirements.
The idea is this: the founders wanted to encourage innovation. So in the Constitution, they offered to give temporary monopolies to inventors for new and useful inventions in exchange for the public disclosure of those inventions. Congress later formed the laws defining the terms and procedures for these rights. To date, the US has granted over 10 million patents and counting.
What Can Be Patented?
The USPTO will only issue utility patents on new inventions. More precisely, utility patents may be granted to those who invent or discover a new and useful process, machine, article of manufacture, or composition of matter. If an invention falls into one of these four categories, it should be eligible for patent protection. However, patent examiners will reject applications as unpatentable if the invention is directed to abstract ideas, laws of nature, or other exceptions. For example, an inventor cannot patent gravity or a new living organism, even if the inventor has discovered them.
How Does an Inventor File a Patent?
Inventors can file a patent on their own (pro se) with the USPTO. However, most inventors choose to retain expert patent counsel. Not only can counsel help you navigate through the complexities of the patent application process, but experienced counsel can also help you secure the property rights for the full extent of your invention.
A patent attorney who knows your field can draft your application by describing your invention in its entirety. Here, the law is unforgiving. If it is not disclosed in your application, you will not be entitled to it. However, if your application does thoroughly encompass your invention, follow-on “child” patents based on the original patent might even be an option to maximize the value of your invention as it develops.
Inventors, or their representing counsel, can file non-provisional or provisional patent applications:
Non-provisional patent applications have survived the rigorous inspection by patent examiners and have been granted for the full term of usually 20 years, measured from the date of filing.
Provisional patents are 1-year place holders for inventors that might want to explore the marketability of their invention. Filing a provisional application entitles the inventor to the described invention as of the date filed.
Within the year, inventor can then choose to go ahead with the non-provisional or abandon the application. Companies, large and small, can surely benefit from the provisional application route to affordably secure their rights while they assess the real-world marketability of the invention.
Where Can a Patent Be Enforced?
Importantly, US patent grants are only effective within the US and its territories. Innovators who want to extend their protections to other countries may choose to file individually in the countries or regional patent offices where protection is sought. Luckily, the US joined a number of treaties that facilitate the process of filing patent applications for the same invention in member countries through a centralized system. Still, inventors should be aware that each country requires nuanced attention. A global industry like the oil and gas industry thus requires patent counsel that specializes in obtaining patents in foreign countries.
What is the Value for Companies/Universities of Patents?
Patents are assets. Unlike a barrel of oil, these assets are intangible. But much like a barrel of oil, this set of rights can be bought, sold, or traded. We know a patent gives the owner particular exclusive rights. The right to exclude others from using, selling, importing, and making the invention. A company who practices the invention will have a monopoly on the invention until the patent expires. If the invention covers the most efficient and cost-effective process solution for a given problem, that company will have the competitive advantage in the field.
At the same time, owners of patents could monetize the patent by allowing others to use the patent for a reasonable royalty. Research universities, often at the forefront of innovation, could be poised to gain from leasing their intellectual property.
Owners of patents can also enforce these rights. The law allows owners to sue in federal court for patent infringement those entities that are practicing the invention without their permission. The owners can ask the court to make the other party discontinue practicing the invention, or to pay reasonable royalties for the privilege.
Patent Filing Workflow/Typical Timeline
Depending on the complexity and the subject matter of the patent, a non-provisional (full term) patent can often take 18 to 24 months or longer from filing to issue even with diligent prosecution by counsel. The good news is that if the patent is granted, the patent rights will extend back to the effective filing date.
During these months, the patent goes through the examination process. The process is not, however, a sit-back-and-wait ordeal. If filing on your own, expect meetings with patent examiners, office actions (preliminary rejections) of the patent application, and time-sensitive deadlines to respond to the office actions.
Alternatively, if filing through counsel, you expect to meet with your attorney to discuss your invention, and provide relevant background information. From there, your attorney will draft the application, guide it through the examination process, and keep you informed of the status of the application along the way.
Considering Publishing the Research During the Patent Application Process?
Researchers, whether at major companies, at research universities, or in private garages are developing new patentable subject matter every day. However, many of those researchers release their invention out in the world without realizing the potential ramifications to their rights.
Remember that patent law seeks to encourage disclosure of innovative ideas for the betterment of society. If the ideas are already disclosed to the world, patent law no longer needs to incentivize the inventor to share the idea with the world.
In general, once inventions have been published, they are no longer patentable. Patent law does grant a narrow exception. An application can still be filed within a year of the date of the applicant’s publication (e.g., a dissertation, article, or presentation). An inventor in a hurry could also benefit here from the convenience of a provisional application to save the effective filing date. Each case is unique. You should consult with a patent attorney to make sure you do not inadvertently give up your rights. An experienced patent attorney can provide more specific advice regarding your situation.
Victor Torrealba a postdoctoral fellow at the Ali I. Al-Naimi Petroleum Engineering Research Center at King Abdullah University of Science and Technology in Saudi Arabia. His research is focused on chemical enhanced oil recovery (CEOR) and simulation of naturally fractured reservoirs. Torrealba is originally from Venezuela. After a stint at Simon Bolivar University studying chemical engineering, he transferred to Pennsylvania State University where he continued his education in petroleum engineering, earning BSc (Hons), MSc, and PhD degrees. During his PhD he interned twice at Chevron Energy Technology Company, where he worked on CEOR simulations.
Everardo Tapia recently joined Shook, Hardy & Bacon’s Intellectual Property practice group. He earned his law degree at Chicago-Kent College of Law along with a certification in intellectual property law. Before law school, he practiced as an oil and gas engineer in new and mature plays across the US.
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04 September 2019
16 September 2019
16 September 2019