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For Researchers |
Frequently Asked QuestionsRPI Policy & Procedures
Intellectual Property FAQS
Patent FAQS
Commercialization FAQS
RPI Policy & ProceduresWhen should a disclosure form be submitted? A disclosure form should be submitted to OTC once a researcher can concisely define the invention and have reduction to practice to substantiate the invention (ideas, in and of themselves cannot be patented!) either through modeling or through experimentation. A disclosure form should always be done prior to public disclosure of work that could have potential commercial value and potentially be licensed. If there is any question, it is recommended that the form be submitted to OTC where it can be reviewed and where it can be determined whether or not publication will cause an issue with future protection. What is the purpose of a disclosure document? The purpose of a disclosure document is the acceptance as evidence of the date of conception of an invention. The disclosure document is not a patent application. Once the disclosure document is sent to OTC, we will perform due diligence on your invention and, when applicable, begin intellectual property protection. The Disclosure Document will be retained for two years, and then be destroyed unless it is referred to in a separate letter in a related patent application filed within those two years. Does submitting an Invention Disclosure to OTC secure protection? Submitting an invention disclosure to OTC does not directly result in any form of protection. OTC must prepare the proper application, for example either a provisional or non-provisional to the USPTO. Protection only applies as to the time of filing the application. What are my rights under the university IP policy? Inventors have the right to share in the financial rewards of successfully licensed intellectual property. Please see section 4.7 of the Intellectual Property Policy. If the university decides not to pursue protection of the intellectual property, then inventors have the right to petition to gain the rights to the intellectual property for themselves. What are my responsibilities under the university IP policy? All researchers are responsible to disclose all intellectual property that could constitute inventions or copyrightable works to the Office of Technology Commercialization. This is done through the completion of an Invention Disclosure Form. Why is intellectual property important to the university? The Rensselaer Plan specifically outlines the importance of intellectual property and technology commercialization in the quest for scientific and technological entrepreneurship. The university is committed to put in place resources to commercialize technology for the public good, including supporting start-up opportunities as appropriate. In addition, the Bayh-Dole Act encourages commercialization of intellectual property created under federal funding for the public good. What does the university do with its intellectual property? Since a university is a non-profit institution, the only way for it to commercialize intellectual property is through a licensing effort. The university agrees to license either all or part of the rights to a company (can be large, small, start-up, etc.) so that they can practice the intellectual property in the pursuit of commercializing product and making money. Licenses can be exclusive or non-exclusive. They can be for use throughout the world or restricted to certain geographic uses, and they can be for any conceivable use of the intellectual property or limited to a field of use. In return, the company will typically return some benefit back to the university, usually in the form of patent cost reimbursements, fees and royalties based on product sales incorporating the intellectual property, equity in the company or some combination of these benefits. Why is intellectual property important to the inventor? It directly benefits an inventor to create and protect intellectual property in three ways. First, the inventor (or inventors) benefit under the university's intellectual property policy by sharing in the financial rewards of licenses. Second, licensing efforts often either establish or strengthen ties to industrial firms, and these reinforced relationships can directly improve opportunities for additional sponsored research. Third, those inventors who want a sense of seeing their work to be used and relevant can do so through the creation, protection and licensing of intellectual property. What if Rensselaer does not want to pursue the intellectual property protection? If there is no government funding for the invention, then the rights to the invention return to the inventor. If federal government funding is involved, then if Rensselaer does not elect to pursue intellectual property protection, the federal government may elect title. If the government decides not to pursue the protection, then the inventor may do so. Intellectual Property FAQSWhat is intellectual property? According to Webster's Dictionary, intangible property is the result of creativity. Intellectual property creates rights, and it is these rights that are considered property - they have a legal status and can be owned, sold, rented, stolen or protected. It is the legal right to exclude others from using these rights. These rights can be represented in four basic forms - patent, trademark (or servicemark), copyright and trade secret. Why should I bother protecting my intellectual property? There are potential financial gains for both the inventor and Rensselaer for protected intellectual property that is licensed by an outside company. A company will be less likely to enter into negotiations if the property has no protection. How is intellectual property protected? Intellectual property is protected by three basic legal methods facilitated by the U.S. Patent and Trademark Office (USPTO): patents, trademarks and copyrights. A patent prohibits others from using, making, or selling the intellectual property for up to 20 years. A trademark is a logo or word or brand name used in commerce. A copyright covers expression of ideas and such things as books, music, art and software—anything considered to have authorship. The forth method is outside the USPTO for trade secrets. They are in fact secret - not disclosed to interested parties and kept in strictest confidence (usually by a company.) I need to share my work with my fellow colleagues. How does protecting my intellectual property help this effort? Many areas of research require researchers to openly share their results with other researchers in order for the overall research area to progress, and the university recognizes this and does not want the intellectual property policies to stand in the way of performing quality research. For example in software, copyright protection is automatically available to the producer of the software code. If there is potential commercial value in licensing this code, then a registered copyright is a simple quick process to facilitate this licensing. Additionally, academic use licenses can be granted quickly as well to support collaborations. I have a paper that I want to send in for publication. Does that matter for purposes of protecting my intellectual property? Whenever public disclosure occurs, the inventor loses world-wide patent rights for that invention. Additionally, there is only a one-year window to obtain patent protection in the United States. Whenever possible, contact the Office of Technology Commercialization prior to publicly disclosing your invention. We may be able to protect your intellectual property and preserve world-wide rights. What happens if my invention is publicly exposed? In the United States, if the invention has been described in a printed publication anywhere, or has been in public use or on sale more than one year before the date on which an application for patent is filed, a patent cannot be obtained. In most other countries, once the invention has been described in a printed publication or has been in public use or on sale, a patent cannot be obtained. What constitutes public disclosure? There are some gray areas to this question, but public disclosure includes journal publications, website publications, and presentations at conferences. More generally when the intellectual property is made publically available and accessible to those skilled in the art to which the invention relates. What is the Bayh-Dole Act? The Bayh-Dole Act was enacted by the U.S. government in 1980 to give universities the rights to intellectual property that results from federally-funded research. In return, the universities are required to disseminate this intellectual property for the public good, usually through the creation of a technology transfer office. The university is required to maintain title (ownership) to the intellectual property and is also required to periodically report to the U.S. government on the status of development and commercialization efforts being taken. Does the invention have to be totally new to obtain a patent? The subject matter of the invention to be patented must be sufficiently different from what has been used or described before, so that it is non-obvious to a person having ordinary skill in the area of technology related to the invention. What are the different types of patent? There are five types of patents which include provisional application, utility patent, design patent, plant patent, and international patent. PATENT FAQSWhat constitutes an inventor? Inventorship is a legal term and is investigated during the process of disclosure and discovery of the invention and the preparation of a patent application. Inventorship is determined by an IP lawyer and not by anyone at Rensselaer. An inventor must be capable of defending that the inventor's contribution to the invention is captured in at least one of the claims of the patent application. What is "prior art" and how do I find it? Prior art refers to anything regarding the potential invention that has come before. Remember, for instance, that a patent has to be novel and non-obvious. Journal publications, foreign patents, issued U.S. patents and patent applications are all areas that can contain prior art. Since the inventor knows better than most what the invention entails, he or she should be familiar with much of the prior art regarding the invention space. Searches of the Internet, journal articles and patents (through the USPTO website) are helpful examples of places to perform a prior art search. What is a patent search? A patent search is a search conducted in the Patent and Trademark Office, to determine the existence of the prior art. What kind of patent searches are available? There are assignee searches, novelty searches, infringement searches, traditional searches (Public Search Room in the USPTO office), and on-line searches. Is an online computer search enough for the search process? On-line computer search is not enough for the search process because keywords used to do the on-line search may not produce all patents that are related to your invention. What is a patent? A patent confers the right to exclude others from utilizing the inventor's discovery without the inventor's consent. A patent is granted by the Government 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." What can be patented? An invention is patentable if it is novel, non-obvious, and useful. Novel, of course, means new. Non-obviousness is achieved if someone who is skilled in the art would not have thought of the idea easily. A new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement may be eligible for patent protection. Methods making use of concepts and ideas may be eligible for patent protection. On the other hand concepts and ideas per se are not patentable. The invention does not have to be totally new; even a small functional or decorative improvement may be patentable. What is a provisional application? In the United States, you can file a provisional patent application to cover your invention. A provisional patent establishes a priority date with the USPTO but does not begin the examination process. It gives the inventor a one-year window in which to file a non-provisional application in the U.S. and/or foreign countries. During this time the inventor can further develop the invention, determine marketability, acquire funding or capital, or seek licensing agreements. If a non-provisional patent is not filed within one year of the provisional application, then this application and priority are abandoned by law. Are provisional applications available for search? The public searching resources contain no information about pending provisional applications. What is a utility patent? A utility patent protects the functional aspects of an invention. It is granted to anyone who invents or discovers any new and useful process or method, machine, manufacture, or composition or matter, or any new and useful improvement. Does the inventor have the same rights over his or her invention under a "patent pending" status? When an invention is given a "patent pending" status it means that the invention is on file in the United States Patent and Trademark Office. Protection given by a patent and ability to defend a patent do not however start until the actual grant of the patent. How long does it take to obtain a patent? Generally patents are issued approximately 18 to 36 months after application. During this period a patent is pending. How many years will my patent last? Utility and plant patents are granted for a term which begins on the date of the grant and ends 20 years from the date the patent application was first filed. Design patents are granted for a term of 14 years from the date of the grant. Inventors can lose their rights when periodic maintenance fees are not paid or when the term expires. Can an invention be corrected once a patent is granted? Typographical errors may be corrected by filing a certificate of correction. When a patent is defective in certain aspects, the patentee may apply for a reissue patent. New matter cannot be added to the invention. A reissue patent is granted following the examination of the changes made to the invention. It replaces the original patent and is granted only for the remainder years left from the unexpired term. Does it cost anything to file a patent? Unfortunately, it is not free to file a patent. Between USPTO filing fees and associated attorneys' costs, filing a patent just in the United States can cost as much as $12,000. International patent filings are even more expensive, as they cover a larger number of countries and often involve foreign attorneys and translators. A PCT filing plus filings in major industrial nations have been known to cost over $100,000. Additionally, there are annual maintenance fees for all patents, pushing the cost over the lifetime of a patent even further. What is a notice of allowance? If a patent is found to be allowed after the examination of the application, then a notice of allowance is sent to the applicant or the applicant's attorney or agent of record. A fee of issuing the patent is due within three months from the date of the notice; if payment is not made in a timely manner, the application will considered to be abandoned. What is a maintenance fee? All utility patents issued are subject to the payment of maintenance fees which must be paid to maintain the patent in force. These fees are due at 3 1/2 , 7 1/2, and 11 1/2 years from the date the patent is granted. What happens when a patent expires? After a patent has expired anyone may make, use, offer for sale, or sell or import the invention without permission of the patentee, provided that matter covered by other unexpired patents is not used. What is an infringement of patent? Infringement of a patent consists of the unauthorized making, using, offering for sale, or selling any patented invention within the United States or U.S. Territories, or importing into the United States of any patented invention during the term of the patent. A patentee can sue the infringer and can ask for an injunction to prevent the continuation of infringement and for an award of damages. What should I do if I believe that my patent has been infringed upon? The university is the designated assignee and owner of the patent, so any potential infringement on those patent rights should be brought to the attention of the university through the Office of Technology Commercialization. What is a trademark? A trademark is a logo or word or brand name used in commerce. What is a copyright? A copyright covers expression of ideas and such things as books, music, art and software—anything considered to have authorship. What is an international patent? An international patent is any patent granted by a country outside the U.S. The rules, procedures and protections differ slightly from the U.S. Most of the industrialized world countries are part of the Paris Convention treaty, or PCT. Do the rights granted by a United States patent extend to foreign countries? The rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country. An inventor who wants patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices. What are some benefits of filing a PCT application? A PCT application is a good way to plan for foreign patents, without having to decide immediately on the specific countries in which to seek protection. There are many benefits that come along with the PCT application:
What is EPC (European Patent Convention)? EPC stands for European Patent Convention. This convention has given rise to what is called the European Patent Office. EPO offers a way to file a single patent application which can lead to patent coverage in all the European countries that belong to the EPC. (Note: Countries that are apart of EPO include Austria, Belgium, Switzerland, Germany, Denmark, Spain, France, United Kingdom, Greece, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, Netherlands, Portugal, and Sweden.) Commercialization FAQSWhat is a Confidentiality Agreement? A CDA is an agreement between the university and an outside entity (company, person) that is used to facilitate discussions of information that is wished to remain out of the public. For companies, sharing of their business needs and development problems can lead towards developing solutions with university personnel, but would also want such needs and problems to not be known to their competitors. For universities, maintaining confidentiality can preserve rights (domestic and foreign) to inventions. Who can sign a Confidentiality Agreement? Under Rensselaer policy, a professor is not authorized to legally sign for the university. Those who can sign confidentiality agreements for the university include the Executive Director of IP, Tech Transfer and New Ventures organization, the Director of Research Administration and Finance and the VP of Research What is a Non-Disclosure Agreement? While historically these were normally relating to employer-employee arrangements, today we interchange NDA with CDA. For all practical purposes, an NDA is a CDA. What is an Exclusive, Non-Exclusive, Option Agreement License? Option Agreements are used so that companies can be exposed to a technology and consider whether or not securing a license makes sense. They are limited in time in order for feasibility to be investigated, and an option does not grant commercial rights. An option can be either exclusive, where for a given limited timeframe no other options will be granted to evaluate a piece of intellectual property, or can be nonexclusive where other options may also be granted from the university. The outcome of a license is a go/no-go decision by the company to license the technology. How much inventor involvement is there in the licensing of technology? OTC encourages the participation of inventors. The more involved and interested the inventor(s) are in the licensing of a technology the higher the chances are that successful licenses will be secured. Normally the inventor(s) are the first best source of information on what companies would be interested in licensing the technology. Where are potential licensees found? Licensees can be identified in many ways. First, the inventors often are aware of the commercial companies who would be interested in the work. Industry-specific marketing efforts including trade show participation, affiliations and market research carried out by the OTC also serve to identify potential licensees. Additionally, issued patents listed by the USPTO can provide names of companies who currently have patents similar in nature, and often times these can prove to be potential licensees as well. How long does it take to execute a license agreement? Every license is unique in that it brings together university intellectual property to solve a company's specific problem(s). Once the intellectual property is identified by the company, terms of a license need to be negotiated to a mutually acceptable answer. Execution can take as little as a few weeks to over a year, depending on the complexity and the response times of all involved. What happens after a license has been executed? Once a license is executed, the exact next steps are a strong function of the specifics of the license. Many times some kind of upfront payment is made by the company which would be distributed according the university's intellectual property policy. The company will normally have annual commercialization progress reports to the university to include product plans, realized revenues from sales, sublicensing activities, etc. If there is a need for further expertise from the inventors in the company's commercialization, then there exists an opportunity for the inventors to consult directly with the company. How are inventors contribution percentage assigned? Inventor contribution percentages refer to the formula by which the 35% adjusted royalty income is split among the inventors, the standard disposition is equal sharing. However, it is up to the inventors to propose and agree on a different formula and communicate that agreement to OTC. It is recommended that this be accomplished no later than the filing of the non-provisional patent application for patent-related intellectual property. How does Rensselaer distribute royalties? Rensselaer distributes the proceeds of licensing according to Section 4.7 of the Intellectual Property Policy. After direct expenses on the licensed IP are recovered (such as patent prosecution costs or maintenance costs or specific marketing costs directly attributable to the licensed IP), the adjusted royalty income is distributed by the following formula: 35% to inventor(s), 15% to the center/department where the work was done, and 50% to the university. The university's Office of Technology Commercialization is responsible for the distribution of the adjusted royalty income. What financial terms are included in a license agreement? It normally depends on the nature of the license. Every license deal is unique in that it addresses a specific technology that will be used by a company that will value and use the technology for their purposes. Normally exclusive licenses return a higher value for the purposes of licensing than nonexclusive licenses, but the benefits are then monopolized by the one company. There are basic considerations made by the licensor (university) to the licensee (company) : reimbursement of patent expenses, licensing fees, equity, and royalties based on product sales incorporating the licensed technology. How do companies use university-licensed intellectual property? Companies secure the rights to intellectual property through a license agreement that allows the company to produce products of offer services that would otherwise infringe on the rights granted by the intellectual property if no license agreement existed. For example, these rights may be the use of a process, a material, a brand name or software code. There must be an economic incentive for the company to in-license the intellectual property. What kinds of economic incentives exist for a company to motivate them to in-license? Any intellectual property that can improve efficiencies in a process (more output), reduce the number of steps in a process (cost savings) or improve product performance and/or quality (increased end-user value) can form the basis for a licensing opportunity. Can companies take my intellectual property and use them to their advantage? If the university can demonstrate proper disclosure and protection of your intellectual property and if the company is using the intellectual property, then there may exist an infringement of use. Does Rensselaer take equity as part of a licensing deal? When it makes sense for both the new venture and for the university, equity can be made part of a licensing deal. Often times start-up companies have little cash flows initially, so consideration made in the form of equity can be one way to facilitate the licensing deal with the company. Does Rensselaer have technologies available for a new startup company? Yes. In fact the OTC has a list of technologies that have the potential to start a company with. They are listed at www.rpitechnology.com/XXXXX. Once a license to a start-up is done, how does Rensselaer stay involved in the company? Rensselaer is involved usually in two ways. First is through the Office of Technology Commercialization (OTC) in administering the license (deliverables, payments, milestones, etc.) Secondly the Incubator Program, fosters and provides services to those start-up companies willing to become members of the incubator program at Rensselaer. With membership comes access to expertise in legal, financial, managerial and funding areas, as well as access to facilities and company success programs. See www.incubator.com for additional details. |
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