Frequently Asked Questions About Technology Commercialization

The following sections explain various aspects of technology commercialization at the University of Alabama in Huntsville. To go directly to a particular section, please click on its heading.

If you have additional questions regarding intellectual property, patenting, or commercialization, please contact the UAH Office of Technology Commercialization by email or by calling 256-824-6620.

Protecting and Evaluating Intellectual Property

How does UAH evaluate whether intellectual property should be protected?

Patenting decisions are not based solely on technical potential. Intellectual property judged as offering reasonable commercial potential will be considered for further processing. In order to recoup appropriate return on its investment, the University evaluates disclosures on anticipated ability to patent, license, and market IP before making a patent decision.

 
What is the Bayh-Dole Act and what is its significance?

The Bayh-Dole Act of 1980 allows small businesses, non-profits and universities to own inventions resulting from federally-funded research. In exchange, universities are required to report each disclosed invention to the funding agency. The Act allows the University to use licensing revenues to support patenting and licensing, pursue additional research and education, and provide proceeds to inventors.

 
What is the current UAH Patent Policy and where can I get a copy?

The recently revised UAHuntsville Patent Policy can be downloaded from the OTC website.

 
Who owns intellectual property created at UAH?

Although the originator of a protectable idea is the inventor, all rights to IP created by UAHuntsville inventors with the use of University facilities, with funds administered by the University, or that fall within the inventor’s scope of employment at UAHuntsville, are owned by the University. Income from successful commercialization is distributed according to the UAHuntsville Patent Policy.

 
How can I best document the process of my IP to protect its patentability?

One of the best ways to protect the patentability of your IP is by thoroughly documenting the discoveries, experiments, etc. related to the development of your invention. Procedures for keeping well-maintained lab notebooks can be found here.

 
When should I contact OTC, and why is this important?

It is never too early to call OTC for advice on disclosure. As an inventor, it is to your advantage to disclose your ideas as soon as you have a clear concept of your invention or discovery. Conception of the invention means that you should be able to clearly explain how the invention will work. Completed experiments are helpful but not necessary.

To protect the patentability of your invention, you should disclose IP before you publish any information about the invention, even if referencing only a part of the entire invention. Posters, seminar presentations, abstracts, Internet publications of funded grants, or articles in local publications can disclose enough of an invention to prevent you from gaining a patent.

If you expect to present or publish your research, be sure to submit an Intellectual Property Disclosure Form (IDF) LINK well in advance to allow time for the evaluation process. It is possible that a provisional patent application can be filed to protect your invention for one year. If a patent application is not filed immediately, foreign rights will be forfeited. If a U.S. patent is not filed within a year, U.S. rights will also be forfeited.

 
Whom should I contact if I think I have intellectual property to disclose to UAH?
 

If you think you might have intellectual property (IP) to disclose to the University, please contact the Office of Technology Commercialization (OTC) as soon as possible by email or by calling 256-824-6712.

 
What can be patented?

By statute, inventions or material to be patented must be:

  • Novel;
  • Useful (including operational capability); and
  • Non-obvious.

Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented; thus it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.

A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

There are three types of patents:

  1. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
  2. Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
  3. Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.

A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon 42 U.S.C. 2181 (a). [source: U.S. Patent and Trademark Office]

 
What is a patent?

“A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available. The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.” [source: U.S. Patent and Trademark Office]

 

Patenting and Licensing

What is licensing?

Licensing is an agreement in which a fee is paid by a commercial entity for the use of patented material over a specific period of time. Licensing does not transfer ownership.

 
How long does it take to receive a patent?

The University’s IP evaluation process usually takes several months, but may take longer depending on the complexity of the invention. Once a patent application is filed, it can take from one to three years (or in some cases, more) for the patent to be issued or denied by the USPTO. The entire process, from disclosure to significant returns on commercial sales, can sometimes take up to a decade.

 
What is the approximate cost to file a patent?

The cost to file a United States patent application ranges from approximately $5,000 to $15,000. Prosecution and issuance fees cost several thousand dollars more, depending upon the complexity of the invention. International patents are significantly more expensive. Additionally, both U.S. and foreign patent offices charge fees to maintain the patent over its life.

 

Technology Commercialization

If I have questions, whom should I contact?
 

If you have questions regarding IP, patenting, or commercialization, please contact OTC by email or by calling 256-824-6712.