Caltech only files foreign patents on an exceptional basis because of the very high costs and relatively low benefits of foreign patents. If Caltech files a U.S. patent but refuses to file foreign patents, the inventor (s) may request that the title of foreign patents be abandoned to inventors, but there are several issues that need to be considered in addition to all the U.S. patent issues mentioned above. First, foreign patents are extremely expensive and often cost well over $100,000. Second, there may be overlap with foreign patent rights and U.S. patent rights. For example, a product manufactured in the United States and sold in Europe will be subject to U.S. and European patents and, conversely, to a visa.
Third, two separate patent holders for the same technology result in an additional complication for licensing and commercializing the technology, since the licensee must negotiate with two separate parties. Due to high costs and complexity – and low profit – Caltech has therefore committed to renouncing foreign patents with caution. To initiate the procedure, it is first necessary to apply to Caltech for the patent to be abandoned. However, since this procedure involves the completion and signature of legal documents by Caltech and the inventor, it should be considered that, as soon as Caltech decides on a non-provisional patent application, the materials are forwarded to a patent attorney to design the patent application. This process may require the input and support of innovators and may even include meetings between patent attorneys and innovators. The innovator`s assistance in the development of the patent is essential to ensure that the patent application is complete and that the claims correctly describe the invention. All patent inventors have patent rights Before an inventor can file a patent on his technology, they must first obtain a waiver from Caltech and NASA. These are two interconnected but distinct processes; Caltech must first grant a waiver before NASA reviews the patent application. Designs can be issued to anyone who invents a new, original and ornamental design for a manufacturing item; and technical and commercial assessments are used to decide on patent protection. Caltech typically files a large number of interim patents based on identifiable commercial or reimbursable work opportunities. During the one-year protection period offered by the interim patent, innovators have additional time to develop their technology or to secure additional resources and allow OTT/Caltech to continue to study commercial potential or repayment capacity. Before the expiry of the provisional patent (one year after filing), it is decided to file (1) a non-provisional patent application, (2) to re-file the provisional patent application or (3) to allow NASA to choose the title of the invention.
This finding is made by a secondary evaluation involving the OTT office and the innovators.