• Ownership
• Invention Definition
• Patents
• Conditions for patentability
• Internal disclosures of inventions
• External reporting of inventions
• Copyright
• Trademarks
• Publicity
• News releases
• Requests for information

Inventions:
The University has first rights to acquire title to any invention conceived or first brought to practice that is related to the inventor's work assignment or invented while using University resources, subject to the rights of the sponsor. External sponsors may have some commercialization rights negotiated into the award agreement. If the University and the sponsor decide not to protect an invention, ownership rights are waived to the inventor. The Regents' policy on Commercialization of Intellectual Property Rights provides details on intellectual property developed at the University.
 
Data:
Data developed from conducting a sponsored project belongs to the University and, if negotiated beforehand, the sponsor. If the PI leaves the University, the University has the right to keep the project and/or the data (although the PI is usually allowed to transfer the project and data to the other institution).
 
Software:
Software is a form of intellectual property. Like inventions developed using University resources, it belongs to the University.

• a process, e.g., a process for extracting ore from rock,
• a machine, e.g., a machine which extracts the ore,
• an article of manufacture, e.g., a chemical kit which can be used to extract the ore,
• a composition of matter, e.g., a new compound made from the ore,
• new and useful improvements of the above,
• a distinct and new variety of plant, and
• a new, original, and ornamental design for an existing product.

• A U.S. patent application must be filed within one year after the date of the first printed publication that discloses the invention. "First printed publication" means the date that a written or printed description is accessible to others, even a small group. This definition applies to slides or posters used in oral presentations, written copies of speeches, abstracts, articles, and publications. It could also include information disclosed in a proposal.
   
  
• If patent applications are to be filed in both the United States and other countries, the U.S. application must be filed before any publication that discloses the invention; then the foreign applications can be filed up to one year after the U.S. filing date. If a patent is going to be filed only in a foreign country, the foreign patent application must be filed in their court before either oral or written descriptions are disclosed to anyone. Unlike U.S. patent law, there is no one-year period for filing.
   
  
• Only written or oral disclosures within the University to collaborating faculty, staff, or students are exempt from these laws. If, however, any of these disclosures are open or accessible to the public or outside invitees, the laws apply.

• New: an item cannot be patented if it was known or used by others (or patented or published in this or any other country) before the patent applicant invented the item. It cannot be patented if it was patented or described in a printed publication in this or any other country or in public use or on sale in this country more than one year prior to the application for a U.S. patent.
   
  
• Non-obvious: the item cannot be obvious to a person with ordinary skill in the area of technology related to the invention. For example, a change in size or color is not normally patentable.
   
  
• Useful: the item must have a useful purpose. Abstract ideas, laws of nature, physical phenomena cannot be patented.
   
  
• Operativeness: the item must be able to operate. A complete description or model of the item is required; the idea for the item cannot be patented.

Steps in the process
 
Disclosure and evaluation:
The first step is to complete a Disclosure Form, available on SPA's Web site.
 
OTC will review the Invention Disclosure Form and decide whether to file a patent application. If the University agrees to patent the discovery, the University will bear all related costs. If OTC decides not to file an application, the PI may pursue the claim privately.
 
Prosecution:
OTC will then use an outside law firm to prepare the necessary papers and submit them to the United States Patent and Trademark Office (USPTO).
 
USPTO often takes over 18 months to decide whether to grant a patent. During that time, a USPTO examiner will consider the application materials and search its databases for previous publications or uses ("prior art").
 
USPTO will then send out a Notice of Allowance or Notice of Allowability which grants the patent, or a rejection notice. If all or part of the patent is rejected, OTC and the inventor can decide to appeal the decision.
 
Note: there is a limited period of time to decide whether to file an appeal.
 
Marketing:
The marketing process begins at OTC as soon as the decision is made to patent the invention. Licensing staff contact companies that might be interested in licensing the rights to commercialize the invention. The inventor's cooperation is often essential to help explain the technology and assist in the transfer.
 
License:
Once the license is signed with a company, the company is required to commercialize it as soon as practical. The license generally runs for the life of the patent, 20 years. The company will provide OTC with progress and royalty reports.

Reporting to Nonfederal sponsors
These sponsors may not have specific reports or they may be negotiated at the time of award. Terms and conditions for reporting is available in the sponsor's guidelines, the Notice of Grant/Contract Award, or the contract.
 
Reporting to Federal sponsors
The Bayh-Dole Act and regulations implementing it specify what reports must be submitted to Federal sponsors. The Interagency invention reporting system, Edison, provides a checklist of major reporting requirements based on 37 CFR 401.14. These requirements are described below:

 
• Most of these requirements specify deadlines for filing reports. The University's policy provides information about these deadlines. These reports include: Invention Disclosure, Election of Title, Filing of Patent Application, Result of Patent Application, Foreign Filings, and Decision to Discontinue Patent Prosecution.
   
• There is a requirement, the "Utilitzation Report," to provide upon request progress reports on licensing efforts and use of the invention. The policy provides information about these reports.
   
• The "Flowdown of Requirements" specify subcontractor rights and obligations. SPA includes the appropriate language when drafting subcontract agreements.
   
• There is a requirement for "Acknowledgement of Government Support." OTC includes this acknowledgement statement in its patent application.
   
• The government requires that manufacture of the invention show a "Preference for U.S. Industry." OTC fulfills this requirement when it seeks to license the invention.
   
• If the goverment wants to license the invention to a particular applicant, it retains "March-In Rights." OTC includes the appropriate language when drafting licensing agreements.
   
• There are "Special University Provisions" that address royalty rights, "Utilization of License Revenue," preference for small business firms, and assigning rights to inventions. These provisions are generally addressed in the Regents' Intellectual Property Policy.

• Production of many education materials is guided by the Regents policy on Copyright.
   
  
• For works created after January 1, 1978, copyright protection extends for the life of the author plus an additional 70 years. In the case of joint work, the term lasts for 70 years after the last surviving author's death. Contact OTC for copyright terms for works not in these categories.
   
  
• For a small fee, it is possible to register a copyright with the Library of Congress. In order to collect monetary damages for infringement, the work must have been registered. Contact OTC for details.
   
  
• Since laws regarding who can use or reproduce copyrighted works can change, contact OTC or the General Counsel's Office for current information.
   
  
• As a matter of University policy regarding intellectual property, the University does not accept awards which limit the right of a faculty member to freely disseminate the results of the research, subject to any prepublication notices required. However, sponsors may demand the right to copyright the project's final report or final product. This language is normally acceptable as long as the University is permitted royalty-free use of the materials and the free disclosure of the contents and as long as PIs can use the data in scholarly publications. For further information, refer to the Regents policy on Openness in Research.
   
  
• A notice of copyright is free and does not require advance permission from anyone. However, OTC recommends that they be contacted to determine whether a trademark or patent could be issued.

Publicity

Acknowledgement of Federal Funding
Federal regulations state that "(w)hen issuing statements, press releases, requests for proposals, bid solicitations, and other documents describing projects or programs funded in whole or in part with Federal money, all grantees receiving Federal funds included in this Act, including but not limited to State and local governments and recipients of Federal research grants, shall clearly state:
1. the percentage of the total costs of the program or project which will be financed with Federal money;
2. the dollar amount of Federal funds for the project or program; and
3. percentage and dollar amount of the total costs of the project or program that will be financed by non-governmental sources."

News Releases
Contact the Information Services Office at (612) 624-5750, or University Relations at (612) 624-6868 for assistance with news releases.
 
Although the sponsor may have the right to review releases prior to their release, in accordance with the Regents Openness in Research policy, the sponsor cannot withhold the announcement.
 
The sponsor may request advance notice for announcement of research findings to news media.
 
Publication
The Regents policy on Openness in Research guarantees the right of faculty members to publish the results of their research.
 
The sponsor usually requires that publications acknowledge its support of the research.
 
Copyright authority over the final report materials may be vested with the sponsor, but the PI retains the right to make use of those materials in subsequent scientific publications.
 
Sponsors may require the right to review intended publications to review intended publications to protect proprietary interests (information owned by the sponsor and furnished to the University in the course of the research), for possible patentable ideas or devices, or for general scientific comment. Where the right of review is accepted, it is normally only for review, comment, and the offering of advice. Where matters of proprietary interests and/or patents are involved, the sponsor's review of materials must be closely coordinated with Office for Technology Commercialization.