What is intellectual property?
I have heard a lot about intellectual property – that’s patents, right?
Intellectual property (IP) refers to creations of the mind. These rights are exclusive rights to you, the inventor or creator, and are defined by patent, trademark, copyright, and trade secret statutes … so it’s much more than patents!
Examples of IP include literary and artistic works (protected by copyrights); designs (protected by design patents and/or trademarks); symbols, names and images used in commerce (protected by trademarks); and, inventions (protected by patents).
Examples of patentable inventions include:
- Machines (i.e. electronic devices, robotics, etc.)
- Composition of matter (i.e. materials, therapeutics, pharmaceuticals, etc.)
- Processes (i.e. algorithms, formulas, methods for creating compounds, etc.)
However, not everything that is discovered will be protectable.
Examples of technologies without patents/copyrights include:
- Laws of nature
- Natural phenomena
- Abstract ideas
What does it have to do with me?
IP potentially has value, both monetary and reputational. When working with industry, innovations and creations can be developed into products and services that are used around the world. Moreover, these innovations can drive additional resources and opportunities that support your work and research.
How do I know if I have something that could be of value?
During your work or research, you may come up with ideas that you think might lead to a new product or service or may have value to other people … beyond expanding scientific knowledge. Think in terms of technologies that are better, faster, cheaper, stronger, more environmentally friendly, etc. When in doubt, disclose the technology or call your technology transfer office for advice.
I don’t do the kind of research that leads to patents (or I don’t do research).
As mentioned above, there is more to IP than patents and the type of protection may not be important for commercialization. Questionnaires, research materials, novel processes, software, data, content, artwork, etc. … the list is very long. Perhaps you have developed new training materials for your field. Maybe you have a new medical treatment methodology or a unique collection of biological specimens or an innovative exercise technique, or a new protocol to diagnose addiction. All of these may be of interest to industry and other researchers outside of your organization.
Why should I care about this?
By commercializing your intellectual property, you can bring resources for your lab, department, and organization via licensing and sponsored research. Additionally, many universities also look at the number and quality of patents a professor has when evaluating them for tenure.
OK, I do have a couple of ideas/projects. So, what do I do with them?
If you are working at an institution, you will have to complete an invention disclosure form, also known as a “disclosure.” This is not to be confused with an “public disclosure” (more on that later). This form will ask you basic information about yourself, the invention/creation, who was involved, who paid for it, etc. This is the first step in the innovation commercialization process. If your institution has a technology transfer office (or equivalent), this form will be on their website or they can send it to you. If you don’t know where to start, click the Institutions link above to see if your institution is listed. The link will take you to the appropriate page. Alternatively, send us an email using the link on this website and we’ll do put you in contact with the responsible parties at your institution.
If I am at an institution, who owns the intellectual property I create?
More than likely, your institution has a formal intellectual property policy/process. This outlines who has rights to what IP. Typically, the institution owns inventions developed by faculty, staff, students, and fellows whose conception, creation, or development involved using the institution’s resources or were developed during the course of your employment. If your invention was created with a grant from an outside organization, like a government agency, the agency may also have rights in the invention.
It’s my idea, why can’t I keep it for myself and commercialize it?
When you become employed by an institution, you will be subject to its policies. Most research institutions have an intellectual property policy (see above). When you sign your employment agreement, you agree that you will disclose new innovations and help the institution to commercialize it should they choose to move forward with it.
Also, if your research is funded through an external grant (government or otherwise), by accepting that grant, you may be committed to disclosing and commercializing any inventions that you might discover to the funding entity.
What if I just want to keep doing my research and not disclose it?
As mentioned above, if your research is funded by the federal government or other entities, you may already be committed to disclose any inventions. Funding agencies want to make sure that if they fund a project and something is discovered, it will be put to use. This is not only a benefit to society, but also a return on their research investment. In the United States, compliance with innovation is covered by the Bayh-Dole Act. If a researcher continually refuses or fails to disclose inventions or participate in the commercialization process and the funding agency finds out, it may lead to the government restricting funding to that researcher (and potentially the institution as a whole).
OK, I’ll disclose it, but first I have to present this poster and/or get a paper out.
If you present your patentable idea publicly, you could lose the right to protect it!!!
After you publish, present, or otherwise publicly disclose the invention, you have one (1) year from the first disclosure date to file a United States patent application. If you fail to file a United States patent application on or before the one-year public disclosure anniversary, all United States patent rights in the invention may be lost. Moreover, no grace period exists for foreign patent applications. With very few exceptions, all foreign patent rights in the invention will be irrevocably lost if it is publicly disclosed before filing a patent application.
What constitutes a public disclosure?
Any non-confidential disclosure, which includes many routine academic activities:
- Published papers
- Presentations
- Open thesis defenses
- Seminars Web posts
- Campus talks
- Grand rounds
- Posters
- Catalogued theses
- Conference abstracts
- Funded grant applications
- Non-confidential collaborations
- And others
This rule does not apply to copyrightable material or trademarks.
Commercialization
What is the institution going to do with my idea?
What is commercialization?
It’s about transforming your idea/invention into a commercial opportunity. Universities and research institutions are fertile ground for inventions that change the way we live and improve the quality of life. Google, vitamin D-fortified milk, life-saving vaccinations, cancer treatments — they are just a few of the thousands of inventions developed at universities and research institutions. But having an idea — even a revolutionary one — isn’t enough. Universities and research institutions need help growing and advancing those discoveries into tangible to products or services — and that is what technology transfer does.
Technology transfer is a term used to describe a formal transfer of rights to use and commercialize new discoveries and innovations resulting from scientific research to another party. In layman’s terms — universities typically transfer technology to industry for commercial development through the disclosure of innovations, protecting the innovation concurrent with publication of scientific research, and licensing the rights to innovations. The definition has now expanded as today’s technology transfer professionals are responsible for a wider array of duties including corporate engagement, internal development of inventions, new company formation, and overall economic development.
When industries license technologies from universities, it creates collaborative partnerships that move new discoveries from the laboratory to the marketplace. These continued partnerships enable researchers to further developments and significantly reduce the time to actual commercialization — ultimately bringing products and services to market through this partnership.
What happens to my innovation during commercialization? What do I get out of it?
This is a very general description, as your institution’s process may vary, but once you disclose your invention, the institution will evaluate the disclosure to see if the idea is protectible and has potential commercial value in the marketplace. If the institution decides there is positive commercial reason to invest in the protection of the technology, they will work with an attorney to file a patent or other appropriate protection. Once the idea is protected, the next step is marketing.
Working with you, your institution will develop marketing material that describes the innovation, the problem it solves, its stage of development, and the commercial opportunity associated with it. Then the institution will reach out to potential partners that might be capable and interested in developing the innovation as a commercial product or service.
If the company is interested, it will license the technology from the institution. In return the institution could receive royalties and other payments. These will be distributed based on your institutions IP policy (see above).
The other item that may result from this process is research funding for your lab … not only around the specific technology you disclosed, but also in areas that you and a corporate partner may share a common interest.
Please note, an institution’s choice to move forward on a technology does not validate or invalidate your science or the research. It is truly a decision that is driven by a market opportunity … think of it as another version of grant writing. Moreover, the university is willing to invest in personnel and services to support you in this process.
What are examples of commercialization?
There are a number of options to transfer inventions/creations to interested parties outside your institution, such as companies, publishers, distributors, other universities, and research organizations. The institution will discuss with you the various avenues of commercialization and the factors to consider when selecting an appropriate commercialization mechanism.
License to an Existing Entity
- The majority of inventions are licensed to existing companies, which can be small, medium, or large.
- If your invention is created under a sponsored research agreement, the institution will work with the appropriate university representative to review any obligations to the sponsor.
License to a Start-up
- Sometimes commercialization of the invention is best suited via the creation of a start-up company (a new company created to commercialize a specific technology). Inventors may participate in these start-up companies in a variety of ways.