What is the first step if I think I have intellectual property to disclose to the University or a project sponsor? If you believe you may have intellectual property to disclose, contact your Technology Strategy Manager. The Technology Strategy Manager will provide guidance with respect to disclosure, evaluation and the protection process. If appropriate, you will submit an Intellectual Property Disclosure Form and begin the process. The Disclosure Form is a confidential document, and you should fully document your invention so that the options for commercialization can be evaluated and pursued.
When should I contact a Technology Strategy Manager?
Contact a Technology Strategy Manager whenever you have questions about disclosing or protecting intellectual property. For example, you should contact a Technology Strategy Manager when:
•You wonder if your idea or discovery is intellectual property that should be disclosed to the University or a project sponsor.
•You have an idea for a new product or service that fills an unmet or underserved market need with potential for substantial revenue.
•You have a working prototype of your idea.
•You are planning to or already did disseminate your research results in a grant proposal, publication, poster presentation, dissertation, or even a casual conversation.
•Your research has federal funding and may have resulted in intellectual property.
•There may be commercial interest in your discovery or if a company has contacted you to find more about your research.
•You want to send or receive research tools or materials to or from another institution.
•You want to start a company with your idea.
Who owns intellectual property discovered or created
at the University?
The Policy on Intellectual Property states the University is sole owner of all intellectual property created through the use of University resources or facilities, supported directly or indirectly by funds administered by the University, developed within the scope of employment by University employees or agreed in writing to be a specially commissioned work. Exceptions to this ownership right are regular academic work product, work created solely for the purpose of satisfying a course requirement, work covered by a contractual agreement and work resulting from outside consulting activities.
Why is it important for faculty to consider whether their research might result in intellectual property?
Identifying, protecting and commercializing intellectual property serves the public good by facilitating the beneficial use of University research results. Many times, additional development work is required to bring a new discovery to a stage where it can be used by the public. Medical devices, pharmaceuticals, new fruit and grain varieties, and machines all require additional development, testing, manufacturing, and distribution expertise that is not available at the University, and is provided by the companies that license University technology. In addition, reporting the creation of intellectual property is required by the Bayh-Dole Act and University policy.
What is the Bayh-Dole Act, and how does it apply to me?
The Bayh-Dole Act allows small businesses, non-profits and universities to own inventions that result from federally-funded research. In exchange, universities are required to report each disclosed invention to the funding agency. Since the Act was passed in 1980, the number of technologies patented, licensed and commercialized through university technology transfer offices has grown rapidly. The Act allows the University to use licensing revenues to support patenting and licensing, pursue additional research and education, and provide proceeds to inventors. Learn more at the Better World Project, sponsored by the Association of University Technology Managers (AUTM).
How does the University evaluate intellectual property to determine if it should be protected?
Patenting decisions are not based solely on technical merit. Only those technologies judged to offer reasonable commercial potential and return on investment will be selected for further processing. The Intellectual Property Commitment Committee decides which disclosures offer enough financial or public good potential to be supported by patent funding and administrative support. The Committee is composed of four to six University representatives and two to three private sector experts.
How do I know if my idea or discovery is a patentable invention?
United States and foreign patent laws decree patentability. In the U.S., an invention is patentable if it meets several conditions:
1. The invention is novel
2. The invention is useful
3. The invention is non-obvious
An idea or discovery cannot be patented if it was previously known, sold or used by others. The idea or discovery cannot be obvious to a person with ordinary skill in the area of technology related to the invention. Abstract ideas, laws of nature, or physical phenomena cannot be patented. In addition, a patent application must describe the invention in explicit and sufficient detail to allow someone to reproduce the invention without undue experimentation. Final patentability decisions are made by the US Patent and Technology Office. If you are unsure whether you have a potentially patentable invention, call your Technology Strategy Manager.
How does submitting an Intellectual Property Disclosure Form affect communication of my research results?
Seeking intellectual property protection does not prevent scientific publication, and in most cases does not delay communication of research results. However, sharing your idea with anyone outside the University may compromise your intellectual property rights. To retain the potential for foreign patent protection, a patent application must be filed before any description of the invention is shared. Global patent laws can consider seminars, meetings, posters, abstracts, theses, journal articles, grant proposals, website content, blogs, email messages and oral presentations methods of publication. Contact your Technology Strategy Manager to review your communication schedule - ideally three months in advance of a presentation or publication - to allow time for evaluation and for drafting a patent application.
If the University decides to file a patent application, how are faculty involved?
Inventor involvement is very important to the entire patent and licensing process. Inventors typically provide technical evaluation of previous patents and publications in their field, supply information to the patent attorney and review draft applications and responses to patent office actions, and discuss technical aspects with interested companies. We strive to keep inventors well informed during the process; your input is considered in making decisions about protecting and licensing your invention. Final responsibility for all protection and licensing decisions rests with the University.
How long does the patent and licensing process take?
The evaluation process, including review by the Intellectual Property Commitment Committee, usually takes about three months, but may take longer. If you anticipate presenting or publishing your research, be sure to submit an Intellectual Property Disclosure Form well in advance to allow time for the evaluation process. Once a patent application is filed, it can take from one to three years for the patent to be issued or denied by the US Patent and Trademark Office. Studies show that it takes an average of eight years after an invention is disclosed to begin receiving significant royalties on sales.
How much does it cost to patent an invention, and what has been the University's return on the investment?
The cost to file a United States patent application ranges from approximately $5,000 to $12,000; prosecution and issuance cost several thousand dollars more, depending on the complexity of the invention. International patents can cost five to ten times this amount. In addition, both U.S. and foreign patent offices charge fees to maintain the patent over its life. In order to assure appropriate return on its investment, the University evaluates disclosures on anticipated ability to patent, license and market the invention before a patent decision is reached. In 2007, the University grossed over $63 million in licensing revenues.
Do I need to have a company in mind to license the invention before I disclose?
It is not necessary for the inventor to have a potential licensee in mind when submitting an Intellectual Property Disclosure Form. Often, the inventor is aware of companies in the field, and may have been contacted by one of them. Studies have shown that over 70% of all licenses are executed with commercial entities known by the inventor, so your contacts can be extremely useful. The licensing manager will work to license the technology to a company that has the expertise, resources, and business networks to bring the technology to market.
I've written a software program I believe has commercial value - is it patentable?
Software is protected by copyright and sometimes can also be patented. There are many ways to distribute software for both academic and commercial use. To receive payment for the software, it may be licensed through the Office for Technology Commercialization or sold directly through the Office of External Sales. To discuss the options, contact a Technology Strategy Manager.
How are royalties divided?
Through the Office for Technology Commercialization, the University pays to patent, copyright, and/or trademark inventions, and to license them to companies in return for royalty payments on resulting products. After recovering any out-of-pocket costs from the gross licensing proceeds, net proceeds from royalties are divided according to University policy among the inventors, their college, and the technology commercialization program.
33-1/3% to University
33-1/3% to creator or creators
8% to creator's college or school
25-1/3% to creator's department, division, or center to be spent in
support of the creator's research or other directly related University work
Can I transfer research tools and materials to or
from another institution?
You can transfer materials, (e.g., chemical compounds, cultures, cell lines, plasmids, nucleotides, proteins, germplasm, transgenic animals or plants, pharmaceuticals), or information (e.g., data, databases, or computer source code) under a Material Transfer Agreement for the purpose of further research, testing, or evaluation, but not for commercial development in the absence of a licensing agreement. Contact a Technology Strategy Manager to send materials to another institution. Contact the
Sponsored Projects Administration to receive materials from another institution.
Who can help me draft a research agreement with a company so that intellectual property rights are well defined?
e-mail the Office for Technology Commercialization.
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