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If you believe you may have intellectual property to disclose, contact a Technology Strategy Manager, who will provide guidance with respect to the disclosure, evaluation, and the protection process. If appropriate, submit the 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.
Contact a Technology Strategy Manager whenever you have questions about disclosing or protecting intellectual property, for example, when:
The University is sole owner of all IP:
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, software, sensors, 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.
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).
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. Using a well-defined process, the office decides which disclosures offer enough financial or public good potential to be supported by patent funding and administrative support.
United States and foreign patent laws decree patentability. In the U.S., an invention is patentable if it meets several conditions:
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 and foreign patent offices as applicable. If you are unsure whether you have a potentially patentable invention, call a Technology Strategy Manager.
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 a 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.
Click here to download the Intellectual Property Disclosure Form
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.
The evaluation process 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 U.S. 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.
The cost to file a U.S. 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.
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.
A Technology Marketing Manager will work to license the technology to a company that has the expertise, resources, and business networks to bring the technology to market.
Software is protected by copyright and sometimes can also be patented. There are many ways to distribute software for both academic and commercial use. For more information, contact a Technology Strategy Manager.
Royalty distribution is governed by Regents Policy, After recovering any out-of-pocket costs incurred during protection and licensing, and after subtracting a 15% administration fee to defray operational costs in the Office for Technology Commercialization, net proceeds from royalties are divided as follows:
Royalties are distributed according to the following procedure:
a. Distribution Agreement in Progress (IDA) – if the IDA process is not complete for all inventors and departments we cannot distribute any royalties
b. Recovery Only – in many situations, any royalties that come in from a licensee are subject to recovery prior to distribution. This will reduce the distribution amount
c. Hold – due to an issue with the license or agreement
|Checks Received Between these Dates||Paid Out During This Month|
|February 1 – July 31||September of each year|
|August 1 – January 31||March of each year|
Contact Accounting with questions regarding this procedure.
You can transfer materials, (e.g., chemical compounds, cultures, cell lines, plasmids, nucleotides, proteins, germplasm, transgenic animals or plants, pharmaceuticals, materials), 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. Click here for more information.
Sponsored Projects Administration can assist you with standard contracts.
The exclusion clarifies that the University owns intellectual property (IP) that results from research activity while the student owns IP that results from academic or educational activity.
A “student” is any undergraduate, graduate or professional student enrolled at the University of Minnesota.
A “student” may be a University employee; as a student taking a course for credit, University employment alone does not meet the criteria for University ownership, however, the University does own IP if it is created by a student as a part of his/her job duties as a University employee.
When IP is created during course work taken for credit, and when the only resources used were routinely made available to all students in the course.
When the student creates IP as a part of his/her job duties as a University employee.
When the student is conducting research supported by external (e.g. industry, state, federal) or internal funding, even if the student is not a University employee and even if that research is part of a University course.
When IP is created during course work based upon pre-existing University-owned IP or a University employee or outside individual is a co-inventor.
The University owns student-created IP when the student creates IP as a part of his/her job duties as a University employee or when the student is conducting research supported by external (e.g. industry, state, federal) or internal funding (even if the student is not a University employee). IP created under a UROP award which pays the student fits both of these criteria, therefore the University owns student-created IP under a UROP award.
When IP is created during course work where a third party has provided funding and/or specific projects for the course, and when there is a prospective agreement that students will be required to transfer ownership of IP to the third party (e.g. BMEN 4001/4002, EE 4951, ME 4054, ME 8221-8222, BMEN 8401-8402, ENTR 6041-6042).
When conducting research as an employee or non-employee (e.g. Undergraduate Research Opportunities Program, medical resident research project), students should ask their supervisor how to report created IP to the Office for Technology Commercialization.
When registering for a course (e.g. BMEN 4001/4002, EE 4951, ME 4054, ME 8221-8222, BMEN 8401-8402, ENTR 6041-6042), and before selecting a project, students should ask if they will be required to sign an IP assignment agreement, and should decide if that project is right for them, or if they would prefer to work on a project which allows them to retain their ownership rights. Students should understand that the assignment of intellectual property is a binding legal agreement and that they have the right to seek independent legal advice at their own expense prior to signing an ownership transfer agreement.
Students should contact the Office for Technology Commercialization if they are unsure if they need to report IP they have created.
Click on the links below for information, guides and profiles related to technology commercialization.
Please contact us at firstname.lastname@example.org if you have more questions.
Find your department's TSM on our contact page.