Glossary

Applicant: An inventor or joint inventors who apply for a patent of their own invention, or the person who applies for a patent in place of the inventor.

Board: The Board of Trustees of the University of Alabama.

Co-inventor: An inventor who is named with at least one other inventor in a patent application, in which each inventor contributes an idea to the conception of the invention that gives rise to at least one claim in the patent.

Commercialization: The process of preparing intellectual property (IP) for exploitation in the marketplace. Steps in the process include IP disclosure to the UAH Office of Technology Commercialization (OTC), assessment for patentability, patent prosecution, marketing, and licensing.

Conception: The time at which an inventor first thinks of an idea. A written document such as a well-maintained lab notebook is required to establish proof of a date of conception.

Confidentiality Agreement: A document in which a party agrees not to disclose proprietary information to which it has been granted access.

Copyright: A "grant to an author of a copyrightable work or other copyright proprietor, of the exclusive right to publish, reproduce, distribute, sell, perform, or display the work." [Source: Manual of Patent Examining Procedure (MPEP)]

Copyrightable Work: According to the MPEP, a copyrightable work is "any original work of authorship in tangible form, including written works, such as books, journal articles, study guides, manuals, syllabi, lecture notes, programmed instructional materials, proposals, musical and dramatic compositions; pantomimes and choreographic works; pictorial, graphic and sculptural works, such as fine, graphic and applied art, photographs, prints, art reproductions, maps, globes, charts, technical drawings, diagrams, and models; films, filmstrips, and other audiovisual works; sound recordings; and computer programs. U.S. copyright protection for works created on or after January 1, 1978, begins at creation and lasts until fifty years after the author's death. If the creator of the work is an employee or in cases where the work has been specially commissioned as instruction, as a test, or answer material for a test, copyright protection lasts for 75 years from the date of first publication or 100 years from the date of creation of the work, whichever date expires first. Copyright protection covers both published and unpublished works. That a work is out of print does not affect its copyright. Copyright begins at the moment the work is created according to the Copyright Act of 1976. Registration with the Copyright Office in Washington D.C. is recommended for certain rights and advantages." [Source: MPEP]

Due Diligence: According to the U.S. Patent and Trademark Office (USPTO), "the term 'due diligence' is defined in 35 U.S.C. 156(d)(3) as 'that degree of attention, continuous directed effort, and timeliness as may reasonably be expected from, and are ordinarily exercised by, a person during a regulatory review period.'" [Source: USPTO]

Disclosure, Public: The process by which an inventor "gives as consideration a complete revelation (describes it) or disclosure of the invention for which protection is sought in return for a patent." [Source: USPTO] Note: Public disclosure is not the same as disclosure to OTC; see next entry: Disclosure to OTC.

Disclosure to OTC: The confidential process by which an inventor notifies the UAH Office of Technology Commercialization/Office of Counsel (OTC/OC) to report conception of IP. The filing of an Invention Disclosure Form (IDF) is a crucial step in protecting IP. Note: Disclosure to OTC/OC is not the same as public disclosure; see previous entry: Disclosure, public.

Innovation: An invention or discovery; intellectual property.

Intellectual Property (IP): "Creative works or ideas embodied in a form that can be shared or can enable others to recreate, emulate, or manufacture them. There are four ways to protect intellectual property: patents, trademarks, copyrights, or trade secrets." [Source: MPEP]

Invention: According to the MPEP, an invention is "any art or process (way of doing or making things), machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant, which is or may be patentable under the patent laws of the United States." [Source: MPEP] Note: The terms "invention" and "discovery" are used interchangeably in some UAH policies; OTC can provide clarification if needed.

Invention Disclosure Form (IDF): The form inventors must complete in order to disclose their new technology to OTC/OC. Download the Invention Disclosure Form (IDF).

Inventor: Anyone who contributes to the conception of an invention an idea that gives rise to at least one claim in the patent.

License: An agreement in which a fee is paid by a commercial entity for the use of patented material over a specific period of time. A license does not transfer ownership.

MPEP: Manual of Patent Examining Procedure.

Material Transfer Agreement (MTA): An agreement which contains terms under which University researchers may share materials with outside researchers. MTAs are used to help protect intellectual property rights.

Non-disclosure Agreement (NDA): Also known as a confidential disclosure agreement or CDA, is an agreement between a discloser and a recipient that proprietary information will not be disseminated.

Office of Counsel (OC): UAH Office of Counsel, the entity which prepares disclosure instruments, releases, assignments, royalty sharing agreements, licensing agreements, and other documents required in the processing of IP. The OC assists with legal matters arising from the University's patent program.

OTC: UAH Office of Technology Commercialization.

PA: UAH Patent Administrator, who also serves as chair of the University's Patents and Copyrights Committee.

Patent and Copyrights Committee (PatCom): The University Committee which provides faculty oversight of intellectual property management by the University and OTC.

Patent: According to the USPTO, a patent is "a property right granted by the Government of the United States of America to an inventor 'to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States' for a limited time in exchange for public disclosure of the invention when the patent is granted." [Source: USPTO]

A patent is considered the personal property of the owner. The patent may be licensed by its owner to other entities, allowing them to make, use, and/or sell the invention. The patent owner is not necessarily the same party as the inventor.

Prior Art: The realm of technical knowledge and experience existing in the field(s) pertaining to the invention to be patented; all previously conceived ideas. Prior art includes scientific applications, journals, presentations, and other patent applications that have been published.

Prosecution: The process of filing a patent application with the USPTO. This process may involve several iterations of actions by USPTO and subsequent responses by the primary inventor.

Provisional Patent Application: A form of patent application which may be filed to provide temporary protection of intellectual property before its planned initial public disclosure. The term of protection of a provisional patent is one year.

Public Disclosure: The disclosure of an invention through public means such as abstracts, doctoral theses, presentations, Internet or other publications, poster sessions, offer for sale, or casual conversation. If public disclosure occurs before IP protection is obtained, patentability is compromised.

Reduction to Practice: The act of making an invention perform as it was designed to perform; making an invention work.

Trademark Search: "After a trademark application is filed, the USPTO will conduct a search of USPTO records for conflicting marks as part of the official examination process. The official search is not done for the applicant but rather to determine whether the mark applied for can be registered. The USPTO advises applicants and/or their representatives to search the records before filing the application." [Source: MPEP]

Trademark: According to USPTO, a trademark is used to "protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce." [Source: USPTO]

USPTO: United States Patent and Trademark Office.

University: The University of Alabama in Huntsville.

University Employee: Any full-time or part-time faculty or staff member of the University, or any other person with whom the University has an employment relationship.

University Resources: Funds, personnel, equipment, and facilities administered by the University or under its authority or control.