University of Minnesota
Office for Technology Commercialization
http://www.research.umn.edu/techcomm
612-624-0550

Office for Technology Commercialization homeOTC

For Inventors

Frequently Asked Questions (FAQs)

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Reporting Technologies to the University

What is the first step if I think I have an invention to disclose to the University or a project sponsor?

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.

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, 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 or is sponsored by industry, 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 University is sole owner of all IP:

  • Created by University employees in the course of their employment;
  •  Created by individuals, including employees, students, post-doctoral or other fellows, using substantial University resources.

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, 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.

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).

Evaluating and Protecting (Patenting) Technologies

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. 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.

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 and foreign patent offices as applicable. If you are unsure whether you have a potentially patentable invention, call a 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 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

If the University decides to file a patent application, how are researchers 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 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.

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 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. 

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.

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. 

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. For more information, contact a Technology Strategy Manager.

Licensing Technologies and Interacting with Companies and Other Institutions

How are royalties divided?

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:

Royalty Division

  • Inventors;
  • The department, division, or center that supported the creation of the technology, to be spent in support of the inventor’s research or directly related University work;
  • The collegiate unit that supported the creation of the technology; and
  • The Office of the Vice President for Research, to be spent in support of the University’s technology commercialization activities and to fund University research and scholarly activity.

How are royalties distributed?

Royalties are distributed according to the following procedure:

  1. The royalty revenue will be attributed to each technology as it is received and deposited
  2. Royalties will be distributed, at minimum, twice a year to determine the royalties that will be paid out. Some royalty payments can be held up due to the following reasons:

    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

  1. Royalties that are ready for distribution will be paid out/transferred twice a year. See table below for timing:
    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
  2. All Inventors will need to be set up as a royalty vendor in PeopleSoft prior to distribution payments being made. A form will be sent directly to inventors for completion when needed.
  1. Department/College distributions will be made via a Journal document in PeopleSoft. All distributions will be deposited into a “holding” program 20715. Departments/colleges will be responsible for moving the dollars to their appropriate research/operations account.

Contact Accounting with questions regarding this procedure.

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, 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.

Who can help me draft a research agreement with a company so that intellectual property rights are well defined?

Sponsored Projects Administration can assist you with standard contracts.

Student Intellectual Property Ownerships

What is the intent of the “Student-Created Technology” exclusion to the Regents Policy Commercialization of Intellectual Property Rights?

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.

How is “student” defined?

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 does the student own student-created IP?

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 does the University own student-created IP?

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.

Who owns IP created under a UROP award when the student is paid for working on a research project?

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 may a third party require students to assign student-created IP?

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).

  • Students must be informed of the requirement to transfer ownership at the beginning of the course, before projects are selected by students. Students must agree to such transfer in writing as a condition of working on the project.
  • Whenever possible, students will be given an option to select a project which allows the student to retain their ownership rights.
  • Grades or evaluation of performance in the course will not be affected by a student’s decision to participate or not to participate in projects requiring transfer of the student’s ownership rights.

What steps should students take to be sure they are in compliance with policy?

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.

More Information

Factsheets

Click on the links below for information, guides and profiles related to technology commercialization.

Who to contact about your IP

Step-by-step guide to tech transfer

Reporting inventions

IP and tech transfer

IP protection

America Invents Act and patent law

Confidentiality agreements

Sharing research materials

Industry-sponsored research

Marketing and licensing university technology

Contact us!

Please contact us at umotc@umn.edu if you have more questions.

Find your department's TSM on our contact page.