General Questions Technology Transfer and Commercialization Disclosing an Invention Protecting Intellectual Property Patenting and Licensing Glossary If you have additional questions regarding intellectual property, patenting, or commercialization, please contact the UAH OTC by email at email@example.com or by calling 256.824.6620. General Questions 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. 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 involve OTC early on as you embark on your research or 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 it to OTC 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 obtaining a patent. These are called public disclosures. If you expect to present or publish your research, be sure to submit an Intellectual Property Disclosure (IPD) form 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 before a public disclosure, foreign rights will be forfeited. If a U.S. patent is not filed within a year, U.S. rights will also be forfeited. Learn more about disclosure timing here. How can I get a summary of all of my innovations, disclosures, agreements, patent applications, etc.? The OTC keeps records of inventor activities. Please email us at firstname.lastname@example.org to obtain copies of this information. Technology Transfer and Commercialization What is technology transfer? Technology transfer refers to the process of sharing or transferring knowledge, expertise, and technologies from one organization, individual or country to another, with the goal of promoting innovation and development. This transfer can occur between government agencies, universities, research institutions, private companies, or individuals. The aim of technology transfer is to enable the recipient to acquire the necessary knowledge, skills, and resources to improve their technological capabilities, increase their competitiveness, and enhance their economic growth. Technology transfer can occur through licensing agreements, joint ventures, partnerships, or collaborations between organizations. University technology transfer describes the process of ensuring that promising technologies developed from university research are translated into successful commercial ventures that benefit society. To facilitate and accelerate this process, universities establish technology transfer/technology commercialization offices such as UAH OTC. How does the commercialization process work? The basic steps in the commercialization process are: Innovator Education Innovation Disclosure Triage Market Analysis Intellectual Property Protection Marketing Licensing Revenue Generation Learn more about the UAH Pathway to Translational Research here. What is the Bayh-Dole Act and what is its significance? Act of 1980," is a United States federal law that governs the ownership and licensing of inventions and technologies that are developed with the use of federal funding. Prior to the passage of the Bayh-Dole Act, the ownership of inventions and technologies developed through federal funding was retained by the government, which often led to bureaucratic delays and a lack of incentives for universities and small businesses to commercialize their discoveries. The Bayh-Dole Act changed this by allowing universities, small businesses, and non-profit institutions to retain ownership of their inventions and technologies that were developed with federal funding. The significance of the Bayh-Dole Act is that it has helped to spur innovation and commercialization of research by allowing universities and small businesses to control the intellectual property developed with federal funding. This has led to increased collaboration between academia and industry, as well as a greater emphasis on the commercialization of scientific discoveries and innovations. The Bayh-Dole Act has been credited with creating new industries, generating jobs, and increasing the economic competitiveness of the United States. It has also served as a model for other countries looking to promote technology transfer and innovation. What are the benefits of commercializing my idea at an academic institution? Commercializing your idea at an academic institution can offer several benefits, including access to funding, expertise, personal income growth, and intellectual property protection. Academic institutions also offer networking opportunities with entrepreneurs, investors, and industry leaders. Finally, commercializing your idea can allow you to make a positive impact on society by bringing new products or services to market that can improve people's lives, create jobs, and stimulate economic growth. Disclosing an Invention I just submitted an Intellectual Property Disclosure (IPD) form. What happens next? After an IPD submission, the submitter will receive an email acknowledging the submission has been received. Other people listed on the IPD, including any other inventors and the first inventor’s supervisor, will receive emails requesting review and acknowledgement of IPD submission. Additionally, if applicable, information about the funding source(s) from the Office of Sponsored Programs (OSP) will be requested and obtained. Then, OTC will process the IPD to ensure all necessary information is included on the IPD. The submitter will be contacted at this point if there is any missing/incomplete information. After successful processing of the IPD, the submitter will receive an email confirming the successful processing of the IPD and an internal IPD docket number. Then, OTC will schedule an initial meeting with the innovators to discuss next steps on the Pathway to Commercialization. When should I disclose an innovation? UAH innovators should disclose any innovation for which it may be worth pursuing intellectual property protection as soon as possible. The earlier, the better. A working prototype is not required for disclosure. Disclosure should occur before submission of a manuscript, presentation of research, or publication of work. In short, disclosure should occur before any pending public disclosure. Disclosure timing is critical to the commercialization process. UAH OTC can help innovators determine proper disclosure timing. Learn more about disclosure timing here. Why should I disclose my innovation? UAH researchers, faculty, and students have a duty to disclose new innovations; Innovation disclosure is a university policy. Any innovation developed during employment with UAH is assigned to The Board of Trustee for the University of Alabama System, as per Board Rule 509. Disclosure is also required by federal agencies. Furthermore, intellectual property disclosure is an important step in the pathway to commercialization so that OTC can seek intellectual property protection and develop a commercialization strategy. Who can/should be the one to submit the innovation disclosure form? To submit an Intellectual Property Disclosure (IPD) form, you must be a UAH faculty, employee, or student. The IPD form is accessed through UAH’s Single Sign-On (SSO). The submitter of the form does not have to be the PI. If you have trouble accessing or submitting the digital form or have questions, please contact our office at email@example.com If I made a discovery in the lab after receiving a federal grant for research, do I tell the agency first? OTC has the responsibility of informing any funding agency. Federal agency funding should be listed in the disclosure, and it is OTC’s responsibility to report to the federal funding agency. This is part of the requirements of the Bayh-Dole Act, which standardized the invention disclosure process so that federal agencies had one point of contact instead of dealing with multiple individual PI’s. When a federal agency hires an inventor, the university has the first right to take ownership of the invention. However, under Board Rule 509, all intellectual property created by employees of UAH, is immediately owned by the University upon creation. If I have made an improvement to an invention that has already been disclosed to OTC, do I need to submit a new Intellectual Property Disclosure (IPD) form? Yes, the new information should be submitted to OTC with a new IPD form. The improvement to an invention could require a separate patent application or help support the patent prosecution of a previous patent application. What counts as public disclosure? Can I speak with researchers at other universities or with industry members? In the context of US patent law, a public disclosure refers to any communication or publication of an invention that makes the information available to the public. This can include any type of disclosure, such as a written description, a presentation, a product demonstration, or even a sale of the invention. It would also include online and print abstracts of federally funded proposals, abstracts submitted to conferences, presentations at conferences/symposiums, graduate theses, dissertation presentations, and doctoral papers, and any other online posting such as discussion board or lab website. Under US patent law, a public disclosure can have significant implications for the ability to obtain a patent. In general, a public disclosure of an invention prior to filing a patent application can be detrimental, as it may invalidate the novelty and non-obviousness requirements of patentability. Avoid discussing enabling details about your discovery with anyone apart from your research team without a Confidential Disclosure Agreement (CDA). Public disclosure is based on the public’s ability to access it and that it was made available. If you are planning a public disclosure or if you have any questions or concerns about whether an activity may constitute a public disclosure, please contact OTC to ensure necessary steps are taken to protect the patentability of your invention. Who is considered an inventor and should be listed on my innovation disclosure? An inventor is anyone who’s contribution to the invention gives rise at least one claim in the patent or who is considered an author on the copyright. On the intellectual property disclosure (IPD) form, include anyone (UAH and non-UAH affiliated) that has contributed to the invention’s creation. The IPD should be filled out as fully and completely as possible. When OTC processes the IPD, further details on the innovation disclosure may need clarification or agreement by the inventor(s). If I don’t think my innovation/discovery is patentable, should I still complete an Intellectual Property Disclosure (IPD) form? Yes, the disclosure form can be used for all copyrightable matters, as well as patentable inventions. 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 at firstname.lastname@example.org or by calling 256.824.6712. Protecting Intellectual Property Who owns intellectual property created at UAH? Although the originator of a protectable idea is the inventor, all rights to IP created by UAH employees, or individuals who use UAH resources to assist in developing the IP, are owned by the University. Income from successful commercialization is distributed according to the UAH Patent Policy. What happens if I move to another university or research institution? Any innovation or intellectual property developed at UAH will still be owned by UAH. Innovators will continue to receive royalty payments according to University 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. The first step is to keep good lab notes. Learn more about procedures for keeping well-maintained lab notebooks here. Where does one file patents in the United States? Patent applications in the United States can be filed with the United States Patent and Trademark Office (USPTO). The USPTO is a federal agency responsible for granting patents and registering trademarks. Learn more about intellectual property protection mechanisms here. Where does one register copyrights in the United States? In the United States, copyrights are registered with the United States Copyright Office, which is a part of the Library of Congress. Learn more about intellectual property protection mechanisms here. What are the University intellectual property policies, and where can I get a copy? The UAH Copyright Policy, UAH Patent Policy, and UAH IP Revenue Distribution Policy can be found and downloaded here. Patenting and Licensing What is the criteria for a subject matter to be patented? In general, for a subject matter to be eligible for a patent, it must meet several criteria, including: Utility: The invention must have a useful purpose and provide a practical benefit to society. Novelty: The invention must be new and not previously disclosed or made available to the public. Non-obviousness: The invention must not be obvious to a person having ordinary skill in the relevant field. Enablement: The patent application must provide enough information to enable a person having ordinary skill in the relevant field to make and use the invention. Written description: The patent application must include a written description of the invention, including enough detail to show that the inventor has possession of the claimed invention. Additionally, certain subject matter may be ineligible for patent protection, including laws of nature, natural phenomena, and abstract ideas. In general, the subject matter must be a tangible, concrete invention that is not simply an idea or a theory. It is important to note that the criteria for patentability can be complex and may vary depending on the jurisdiction and the type of invention. How long does it take to receive a patent? The University’s IP evaluation process can usually take several days to months, 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. What is the approximate cost to file a patent? The cost to file a United States patent application ranges from approximately $9,000 to $12,000. 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.. Why are patents important? Patents are an important tool for protecting intellectual property, encouraging innovation, monetizing inventions, and gaining a competitive advantage. They play a crucial role in promoting progress and economic growth by incentivizing inventors to invest in research and development and bring new products and services to market. What is an Intellectual Property (IP) license? An IP license is a legal agreement between the owner of the IP and another party, allowing that party to use, manufacture, sell, or otherwise exploit the IP. In exchange for the license, the licensee typically pays the IP owner a royalty or licensing fee. IP licenses can take many forms, ranging from exclusive licenses (where the licensee has exclusive rights to the IP) to non-exclusive licenses (where the licensee shares rights with other licensees). The terms of the license are typically negotiated between the parties and may include restrictions on the licensee's use of the IP, such as geographic or time limitations. A patent license can be an effective way for the IP owner to monetize their patents by allowing others to use their IP in exchange for compensation. It can also be a way to bring new products and services to market by allowing others to use the IP in their own products or services. For licensees, an IP license can provide access to valuable technology and competitive edge that might otherwise be difficult or expensive to develop independently. IP license is a valuable tool for both patent owners and licensees, allowing them to benefit from the invention and promote innovation and progress. 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 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. 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. Anyone who contributes to the conception of an invention an idea that gives rise to at least one claim in the patent. Inventor License Anyone who contributes to the conception of an invention an idea that gives rise to at least one claim in the patent. 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. 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. 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.