OTT, in conjunction with inventors and patent practitioners, needs to decide whether a PCT, utility, or provisional will be filed. This will be determined based on timing considerations, budgetary concerns, possible loss of rights due to prior disclosures, and location(s) in which protection is sought. The Inventor should remain actively involved with OTT throughout the application process.
Once the appropriate IP protection has been decided upon, the application will be filed with either the USPTO (for local protection) or the receiving office for foreign filings (such as international PCT). The inventor is notified of the filing activity before it is sent to the respective offices for examination. As the application is being reviewed, the respective patent offices will reject certain claims in the form of office actions. It is the responsibility of the inventor, with aid from OTT and legal staff, to respond to these actions in a timely manner (SOP--Utility Patent Application from Submission to Issuance). If government funding contributed to the innovation, a notice of the IP protection filing must be sent to the government. If the government has not funded any research or development of the innovation, licensing considerations can commence.