Intellectual Property Policy FAQs
1. What is technology transfer?
Technology Transfer is the term generally used for the process of transferring the rights to an
invention. These rights can include the right to use, make, sell, and offer to sell or to
otherwise commercialize the invention. The transfer of technology typically begins with
intellectual property protection, most commonly a patent or a copyright and results in a
license agreement to an outside entity in order to exchange for revenue.
2. Why is an IP policy necessary? (see IP policy handout)
An intellectual property policy is necessary because it assures the university, the faculty
inventors, and the third party from industry that the inventions that are being licensed are
unencumbered by potentially conflicting interests. Under the Bayh-Dole Act, the university
is entitled to be the assignee on the inventions that result from federally funded research and
are discovered while a faculty or staff member is in the course of their employment. Another
set of patent laws give the university rights to inventions that are not the result of federally
funded research, but still result from efforts during the course of employment. Inventors are
however still entitled to a share of the profits and royalties resulting from any commercial
deal regarding their invention. An IP policy lays the framework for all inventions discovered
at the university and the ownership and financial implications surrounding an invention’s
commercialization.
3. It sounds like this is the university trying to steal my work. Is this true?
No. According to current US patent law, employers have rights to the inventions made during
the course of an employee’s employment. This is where through the course of duties it could
reasonably be expected that such duties would lead to an invention; the invention belongs to
the employer. Here, if an invention results out of the course of the duties a faculty or staff
member was hired to do, the invention belongs to the university. An intellectual property
policy will reflect the current law in the US allowing both the university and the faculty or
staff to assert their legal rights to inventions resulting from such research. When it comes to
scholarly works that are protected by a copyright. The copyright protection attaches to the
work the moment the work is “affixed to a tangible medium.” This means once a book is
written or sheet music written. The intent of an IP policy is to provide for incentives that
foster creativity among faculty and to help assure that any IP produced will be exploited for
the benefit of the creators, the institution, and the public.
4. Why would I want to disclose my invention/precious works to the university? How is it
beneficial to me as a faculty member/student?
Disclosure of an invention to the university can be highly beneficial to both the faculty
member(s) and the university. When the rights to an invention are turned over to the
university, the university takes on the responsibility of acquiring intellectual property
protection and enforcing that protection. Additionally, the faculty member(s) is still entitled
to a share of the profits resulting from any commercialization efforts with their invention.
5. Do most colleges and universities have a tech transfer program/IP policy?
Yes. Most universities that conduct research and look to license that research for monetary
gain have an IP policy. Additionally, universities who wish to license out their IP have some
form of tech transfer program. These offices vary in size and function based on the
university’s budget and need.
6. Is there a common breakdown of IP ownership for universities (inventions, course
materials and books/creative works)
A common breakdown to the rights to IP ownership is as follows:
Rights to intellectual property, tangible research property, trademarks/dress and
copyrightable work, conceived or reduced to practice, in whole or in part by the university
faculty or staff, including visiting scholars and faculty, while employed by the university, or
otherwise receiving compensation, while using university funds, facilities, equipment, or
other resources administered by the university, are as follows:
1. University-owned Intellectual Property:
i. IP conceived or reduced to practice, in whole or in part by the university
faculty or staff, including visiting scholars and faculty, while employed by the
university, or otherwise receiving compensation and while using university
funds, facilities, equipment, or other resources; and
ii. Copyrightable works created as a “work-for-hire” or developed with the use
of university funds, facilities, equipment, or other resources administered by
the university
2. Ownership of Intellectual Property developed during the course or in pursuit of an
industry-sponsored research or other agreement will be evaluated based on the terms
of such written agreement.
3. Inventor(s)/author(s) will own Intellectual Property that is:
i. Not created as a “work-for-hire” by operation of copyright law and not created
pursuant to any written agreement transferring copyrights or the vestment of
copyright ownership in the university; or
ii. Not developed with the use of university funds, facilities, equipment, or other
resources administered by the university; or
iii. Not developed during the course of or pursuant to industry sponsored research
or another written agreement.
7. What are the differences between copyright, patents and trade secrets?
Copyright – generally is a work of authorship. This can be literary, artistic, musical or can
even be computer software. It lasts for the life of author, plus 70 years; “works for hire” are a
minimum of 95 years after publication or 120 years after creation.
Patent – a process, machine, manufacture, or composition of matter; plants (asexually
reproducing); designs – excluding: laws of nature, natural substances, business methods,
printed matter (forms), and mental steps. A patent lasts 20 years from the date of filing
Trade Secret - Formula, pattern, compilation, program, device, method, technique, process. It
is information that is not generally known or available to the public that has commercial
value. A trade secret has no limitation for the duration of its protection.
8. If I invent something, does it need to be patented?
No. There is never a need to patent a particular invention, however, patent protection allows
the owner of the patent to assert their rights to the invention, to prevent others from making
or using the invention, and to ensure that the owner is receiving the appropriate monetary
gain as a result of the labor invested.
9. Why doesn’t the school decide to protect all inventions?
Some inventions, while valuable to a particular field, are more expensive to protect and
enforce that protection than the financial return would be to the university. Patents are
expensive to prosecute and there is significant investment in the maintenance of a patent,
therefore, the university must make decisions about patentability based on what is in the best
interest of the all of the parties involved.
10. How do I know if my invention can be protected (patents and copyright)?
The US patent law has specific subject matter that can be invented. The law’s language is
that a person who “invents or discovers any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvement thereof, may obtain a patent,”
subject to the conditions and requirements of the law. In addition to the subject matter
requirements there also exists another set of laws that can potentially affect patentability.
These include whether the invention was on sale or offered for sale more than a year before
filing the patent and whether the invention was disclosed in a publication more than a year
prior to the filing of the application.
A copyright protects a work of authorship. This can be a literary, musical, dramatic, or
artistic work such as poetry, images, movies, songs, or computer software. A copyright does
not protect ideas, facts, systems or methods of operation.
11. I heard there was some kind of conflict between patenting and publishing. What is
this?
It is a requirement of most faculty that they publish their ongoing research, however, when it
comes to the patent system, if a publication exists a year or more prior to the filing of the
patent application, the invention will be barred by the patent law. Therefore, faculty must be
strategic regarding when they publish recent discoveries or research so as to not jeopardize a
potential patent.
12. I heard that the US is now “First to File.” What does this mean?
The America Invents Act of 2012 established a new patent system. Previously, a priority
filing date was given to the inventor who could show that they were the first to reduce the
invention to practice. Meaning that the inventor had a working concept and model, or
specifications that would teach someone skilled in the art to make the invention. The new
system is exactly as it sounds, the first inventor to file their application in the United States
Patent and Trademark Office will have the priority filing date, regardless of which inventor
invented first.
13. I invented something. Now what do I do?
Inventions: The first step is disclosure. Once the invention is disclosed to the university,
steps can be made to determine if the invention is a candidate for a patent, trademark,
copyright, or is better left as a trade secret. If there is monetizable value to the invention then
further steps can be made to protect the invention and commercialize it.
Scholarly works: Scholarly works are owned by their authors if the author is a professional,
faculty member, a non-faculty researcher, or a student. Their scholarly works do not have to
be disclosed to or reviewed by the institution. Scholarly works are usually protected by
copyright rather than patent. Copyright protects works of authorship from the moment of
their fixation in a tangible medium of expression, that is, instantly and automatically.
The main concerns with scholarly works owned by professionals, faculty, non-faculty
researchers, and students are to allocate and recover resources that may be contributed to the
creation of such works. If a project involves the use of significant institution resources, the
creator and the institution should agree before the project begins on use of facilities,
allocation of rights to use the work, and recovery of expenses and/or sharing of benefits from
commercialization of the work.
14.
I am a faculty or staff member in the liberal arts, what sort of intellectual property
protection applies to me?
Generally, outside of the scientific disciplines the types of intellectual property protection
that applies to liberal arts faculty are copyrights and trademarks.
Copyrightable works:
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Literary works;
Musical works, including any accompanying works (lyrics);
Dramatic works, including any accompanying music;
Pantomimes and choreographic works;
Pictorial, graphic, and sculptural works;
Motion pictures and other audiovisual works;
Sound recordings; and
Architectural works
A copyright does not extend to any idea, procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the form in which it is described, explained,
illustrated, or embodied in such work.
15.
I have a copyrightable work, who owns it?
In order to determine who owns copyrightable work, there are generally four questions one
should ask. If any of the answers to the questions below is yes, then the employer (the
institution) owns the work.
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16.
whether the work is within the scope of an employee's job description
whether it is performed at least in part for the employer
whether it is performed mostly at work, using work facilities or equipment, or
whether it was performed for someone as a contractual work for hire (signed contract
stating that the work is work for hire)
What about my course materials?
Generally, course materials do not fall within one of the categories of work that the
institution owns; therefore, the author owns the syllabus. As a general rule, the course
belongs to the faculty member, so in addition to the syllabus, the lecture notes, class
handouts, lab manuals, and digital presentations are the intellectual property of the
instructor (author) who created them. The only way that the institution would own them is
if the materials fall within one of the specified categories. These generally include:
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Works commissioned for institution use by the institution
Works that are created by employees if the production of the materials is a
specific responsibility of the position for which the employee is hired
Sponsored works – those resulting from grants, but not if the work is only
supplementary to the purpose of the grant
Works substantially created with institution resources
What role does copyright notice and registration play in protecting my work?
If a faculty member holds the copyright to a work, it is advantageous to indicate so by
placing the copyright notice on the work. This includes the copyright symbol ©, the name
of the author, and the year it was written. Although it is not necessary to secure copyright
protection, it may deter others from attempting to copy it. If in fact there is copying, the
copyright must be registered at the US Copyright Office before bringing a lawsuit.