Inventors Frequently Asked Questions

 

1. Why does the University patent technology?

Answer: Patents are applied for to protect valuable UNO inventions.

A patent is generally required for commercial utilization - Patented technology is a driver of economic development, an expected outcome from state and federally funded research. And, commercial utilization of the University's research is an important factor in evaluating the success of our research programs. Without patent protection, companies generally will not invest the dollars necessary to bring new products to the market.

It benefits the inventor and the public – Patented technology provides for the public good through commercialization of technology by the private sector. A portion of the licensing income is distributed to the UNO inventor(s) to provide incentives for creativity.

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2. Must I disclose my invention?

Answer: Yes, it is required as an employee of UNO.  If your research was funded in whole or in part by a federal, state or industrial grant/contract, you are required, for  possible invention, to file a Technology Disclosure under terms of the grant. The University in turn, is required to notify the sponsor. For federal grants, the University must report the invention to the sponsoring agency within 60 days and actively work to commercialize the technology to meet the requirement that federally funded inventions should be licensed for commercial development in the public interest.

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3. Why should I report my discoveries?

Answer: Because it is a requirement as an employee of UNO.  Also, it is a requirement in the federal, state and industrial grants/contracts  that might fund the work.  It can also lead to commercialization of your invention, provide public benefit and some financial rewards for you and UNO.

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4. When should I make my Technology Disclosure?

Answer: You should file the disclosure as soon as you realize your research has uncovered something new and useful – two of the key elements for patentability. While the experimental work need not be complete, a clear and complete written description is required. A working model is not required – drawings and a written description are sufficient.

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5. What information is needed for a Technology Disclosure?

Answer: The minimum requirement includes the names of the inventors, a working title, and a description of the invention. This information needs to be included in the Technology Disclosure Form. In addition, we ask for background information on the prior art, commercial potential, research sponsors, etc. This information allows OTMC to make a preliminary assessment of the patentability and commercial potential of the invention.

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6. What happens to my disclosure after it is submitted?

Answer: Once OTMC receives your disclosure, we will meet with you to discuss your invention in more detail to assess its patentability and commercial potential. For technologies with commercial promise, we often file a lower cost provisional patent application to allow sufficient time to find a commercial partner. Generally, we do not file a regular patent application without a commitment from a prospective licensee or have a good indication the technology is valuable enough. The cost of obtaining a patent can run from about $10,000 - $20,000+.

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7. Does UNO sell intellectual property rights?

Answer: No. Generally, IP rights are not sold or assigned to third parties. Instead, we typically negotiate an exclusive or nonexclusive license.  Financial terms may include:

  • An up-front fee (or equity)
  • A running royalty on sales
  • A minimum royalty or license maintenance fee
  • Recovery of patent costs
  • In addition, due diligence terms are included to assure the Licensee uses its best efforts to commercialize the technology

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8. How will OTMC market/license my invention?

Answer: Marketing is an important first step in the licensing process. Generally, companies known by and/or working with the inventor are the best candidates for licensing the technology. In addition, OTMC can do market research to identify potential licensees and may utilize consultants and other experts to assist in defining target market opportunities. In some cases, UNO colleges and  inventors will assist in providing a market assessment and a list of target companies.

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9. Does UNO license technology and IP to startup companies?

Answer: Yes. Often, UNO technology is in such an early stage of development that existing companies are unwilling to undertake the risk of development. In such cases, a startup company may be able to move the technology further down the "pipeline" so that it can be commercialized, licensed, and/or acquired by an existing company.

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10. Who at UNO conducts the licensing negotiations?

Answer: All license negotiations are handled by the staff of OTMC, who have experience  in negotiating such agreements

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11. Who signs the license agreement?

Answer: The President of UNO signs the license agreement on behalf of UNO.

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12. What is Royalty Income?

Answer: These are the fees paid to UNO by licensees of UNO technology.  These payments  generally include such payments as:

  • An up-front fee (or equity)
  • A running royalty on sales
  • A minimum royalty or license maintenance fee
  • Other possible payments depending on the agreement

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13. Is it permissible for UNO employees to buy stock in the companies whose main line of business is based on the technologies licensed from UNO?

Answer: No, especially for those employees whose departments were directly or indirectly involved in licensing the technology.  The inventor(s) or creators of intellectual property licensed to a company (e.g., a start-up) can be given shares in the company.

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14. What can be patented?

Answer: A patentable invention is a new, useful, and non-obvious:

  • Process
  • Machine
  • Composition of matter
  • Article of manufacture
  • Any new and useful improvement to the above

Software can be patented provided it demonstrates useful, tangible results which fall under the above categories. A patent cannot be obtained on a mere idea or suggestion.

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15. What is a Patent?

Answer: A patent is a grant of rights by a government. It gives the owner of an invention a limited monopoly – the right to exclude others from making, using or selling it for a period of time. In most countries including the US, this period is 20 years from the date of filing. Just because you obtain a patent doesn't necessarily mean that one can practice it. There may be other patents that dominate it and can thus block practicing it unless there are rights granted to use it.

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16. Who issues a patent in the United States?

Answer: U.S. Patents are issued by the United States Patent Office (USPTO) in Washington.

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17. Is there more than one type of Patent?

Answer: Yes, there are 3 types of patents: utility (most common), design and plant patents. Utility patents protect the functional aspects of an invention and are considered more valuable than design patents which only protect the ornamental appearance of an article, not its structural or functional features. Plant patents protect new varieties of plants.

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18. What is an Invention?

Answer: A new, novel, non obvious idea or concept that has been reduced to practice.

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19. What makes an invention patentable?

Answer: There are four criteria that must be met. The invention must be novel, useful, non-obvious and enabled.

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20. What is meant by novelty?

Answer: The invention must be new – no prior public disclosure, offer for sale, or public use. In the US the patent office allows a one-year grace period following public disclosure to file a patent application. However, in most other countries there is no grace period. If you publish or otherwise disclose the unprotected technology first foreign patent rights are generally lost.

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21. What is meant by public disclosure?

Answer: Any of the following constitute a public disclosure, providing it is enabling (provides enough information and detail that someone in the field could develop it): publication in a scientific journal (when actually published), published abstract with all key details, poster presentation, internet publication, dissertation available from University Microfilms, thesis or dissertation in UNO library, email or oral disclosure to people outside your institution, if not under a secrecy (or non-disclosure; confidentiality) agreement.

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22. Publishing. Can a researcher publish his/her findings? If yes, how does it affect patenting in the USA and foreign countries?

Answer: Researchers are generally free to publish or make public disclosures of their findings at any time, in any media of their choice, limited only by other previously entered contractual obligations. However, a public disclosure of publication destroys most non-U.S. patent rights immediately in the patent application has not already been filed. U.S. rights are lost if the patent application is not filed within twelve months of the publication or presentation. In most cases, filing a U.S. patent application before the first publication or presentation will temporarily preserve the right to file outside the U.S. It is best to consult with OTMC before any publication is submitted if there might be a valuable possible invention being disclosed in it.  OTMC can quickly file a provisional patent to protect the possible invention and yet not delay the publication submission.

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23. Who is an inventor?

Answer: The inventors are those who made a creative contribution to at least one of the issued claims in a patent– not a just someone who assisted the inventor, such as a lab technican or student who ran tests directed by the inventor.  Inventorship is defined under patent law. Sometimes inventorship can't be determined until the patent issues because the claims may change during prosecution (if for example certain claims get disallowed).

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24. Who owns inventions and other developed intellectual property (e.g., software, copyrighted materials) at UNO?

Answer: UNO as a condition of employment.  A US patent application isfiled in the name of the inventor(s) but assigned by the inventors to UNO.  See the UNO intellectual Property Policy for more details.

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25. What if one of the inventors is from another institution?

Answer: Many research projects involve collaborators from another university, company, research laboratory, etc. so it is not uncommon to have outside co-inventors. In such cases, each institution will have an unrestricted right to commercialize the technology without any accounting to the other–unless there is a written agreement specifying how the IP rights are to be handled.

When the co-inventor is from another University, the institution of the lead inventor will generally prepare a written inter-institutional agreement whereby it agrees to take the lead in patenting and commercializing the technology. Under the agreement, royalty income is shared between the institutions in an equitable manner and each institution distributes its share in accord with its own policies.

When the co-inventor is from a company, a license agreement may be negotiated defining the rights of the parties in commercializing the technology.

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26. If two people make the same invention, who gets the patent?

Answer: In most countries, priority goes to the first inventor to file a patent application. In the US up until March, 2013, priority goes to the first to invent, provided he/she continued to diligently work on the invention. After, March 2013, the US will move to the first inventor to file as in most countries today.  In either case, it can  often be hard to prove unless good records (Lab notebook) have been maintained.

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27. How do I search for patents?

Answer:

Patent searching varies in complexity, based on particular needs. If you are searching for an existing patent or a patent application, this can be done relatively easily on the USPTO web site. If, however, you are an inventor, looking to see if anyone has claims to a similar development as yours, patent searching can be a little harder.  For example:

  • One must make sure that the item has not been patented. This would require examining each patent in the subject area to determine if there is prior claim to the idea(s).  Can do a key word or words search.
  • One must search as far back in time as the invention has been technologically possible.
  • Anything that has been previously patented cannot be patented again, even though that patent may have expired. Once a patent expires, the invention becomes part of the public domain, meaning that anyone may be able to use or manufacture the invention listed within.

The USPTO web site, www.uspto.gov, has some helpful information on how to conduct patent search of various kinds.

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28. How do I get copies of patents?

Answer:

For US patents, you can obtain for no cost on the USPTO web site:www.uspto.gov.

Foreign Patents: Many patent offices post free patent databases. Major patent office databases include the EPO's esp@cnent, China's SIPO, Japan's IPDL, South Korea's KIPRIS, the U.K.'s Ipsum and Canada's Canadian Patent Database. Links to most other government sites are available through the British Library's Patents pages. Patents are generally filed in each country's home language. English searching and/or translations are available for some non-English speaking countries.

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29. What is a provisional patent application?

Answer: A provisional patent application is a United States patent application that may be filed without some of the formalities required of a regular patent application. A provisional patent application is not examined by the U. S. Patent and Trademark Office, and a patent cannot issue directly from a provisional application. Please note that a provisional application is abandoned as a matter of law one year after its filing date. A provisional application may be "continued" by filing a regular, non-provisional patent application satisfying all necessary formalities within one year of the provisional filing date.

The principal advantage of a provisional patent application is that its pendency, which cannot exceed one year, does not count as part of the twenty-year patent term. Although a provisional application need not satisfy all the formal requirements of a regular patent application, a provisional application should  should provide enough detail about the invention so it can be used to protect it properly.

The filing of a provisional patent application starts the one-year period during which a foreign patent application may be filed that claims the benefit of a United States filing date.

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30. What is the cost of obtaining a U. S. patent?

Answer: The cost of obtaining a patent varies widely. Factors include the attorney's time and hourly rate; the type of technology being patented; the number of claims and drawings included in the application; the number and nature of rejections from USPTO; filing fees, etc. It is not unusual for the cost to range between $10,000 and $20,000+.

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31. How are foreign patents obtained?

Answer: By filing in a foreign patent office. Example, for the European Union the European Patent Office. There can be absolutely no public disclosure of the technology before the foreign filing date.

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32. Who at UNO decides to apply for foreign patents?

Answer: Foreign patent rights are expensive and UNO often does not pursue them, unless a licensee is willing to pay for these costs. OTMC Director is responsible for the decision to foreign file.

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33. What is a "C-I-P?"

Answer: A continuation-in-part, or C-I-P, is a later-filed patent application adding new disclosure information to a pending application. A C-I-P is often filed on an improvement to an invention disclosed in an original application.

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34. What is a continuation?

Answer: A continuation is a later-filed application adding no new disclosure. It is entitled to the benefit of the original filing date. It must have claims that are fully supported by the parent application's disclosure.

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35. How can new claims and/or data be included in a patent already applied for?

Answer: New matter cannot be added to the disclosure. New claims can be added if fully supported by the original disclosure. New data can sometimes be submitted to show the original disclosure. New data can sometimes be submitted to show that "paper" or "hypothetical" examples in fact work as predicted, but never to supplement an omission in the original disclosure.

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36. What is a copyright?

Answer: A copyright is a federal protection granting authors exclusive rights over their literary works, graphs, pictures, sculptures, architectural works, computer programs, sound recordings, dramatic works, videos, films and other creative works. Copyright is the exclusive right to reproduce copies of the work, to prepare derivative works based on the copyrighted work, to distribute copies of copyrighted works, to perform the copyrighted work publicly, and to display the copyrighted work publicly. A copyright protects the expression of ideas; therefore, the creative work must be in some tangible form of expression such as a writing, recording or picture. The "idea" expressed in a copyrighted work is not protected.

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37. What protection does copyright offer?

Answer: Copyright protects the fixed tangible expression of an idea – not the idea itself. This means that no one can use your software code or book without permission, but they can independently develop their own code or write a book about the same topic that might accomplish the same objective.
The copyright holder has the right to:

  • Reproduce or copy the work
  • Create derivative works
  • Distribute the work
  • Perform the work in public
  • Display the work in public
  • Digital transmission performance
  • Refer to the US Copyright Office foradditional details

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38. Who owns a copyright at UNO?

Answer: Generally speaking the author own the copyright for books, articles, lectures, and other literary/scholarly  works unless done under a grant/contract or with significant use of UNO resources. UNO owns other copyrights including for software.

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39. What can be copyrighted?

Answer: Books, music, paintings, works of art, computer software, dramatic works, motion pictures, sound recordings, maps, and other original works of authorship may be copyrighted. However, ideas per se may not be copyrighted.

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40. What is the life of a copyright?

Answer: Copyrights are in effect for the life of the last surviving author, plus 70 years. If the work is produced as a result of the author's employment, the term is 95 years from the first publication, or 120 years after the creation of the work, whichever is shorter.

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41. How does one protect copyrights?

Answer: A copyright exists at the moment an idea is created and recorded as a tangible form of expression. Copyright status is automatically established by the creation of a work. It is recommended that copyright notices be conspicuously placed on a work (example: Copyright 2012, University of New Orleans. All rights reserved; or © University of New Orleans, 2012. All rights reserved.) However, registration with the Copyright Office is required to file an infringement action.

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42. Should copyrights be registered and if so, where?

Answer: It is not mandatory to register copyrights, although registering copyrights within certain time frames has certain advantages. Copyrights are registered with the Library of Congress, Washington, D.C.

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43. What is a trademark?

Answer: A trademark is a name, design, symbol, or other indicia that distinguishes goods or services from one source from goods or services of another source.

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44. What do the symbols ® and TM mean? When should they be used?

Answer: The symbol ® refers to a registered trademark, a trademark that has been registered by the United States Patent and Trademark Office. The symbol TM refers to a trademark; there is no implication that the mark has been registered with the United States Patent and Trademark Office. It is good practice to respect the trademarks of others by including the appropriate symbol when referring to a product in publications, including papers in peer-reviewed journals. When doing so, it is usually best to use the symbol and nomenclature in the same manner as the manufacturer itself does.

Please contact OTMC to discuss proposed uses of trademarks owned by UNO itself.

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45. Who is the author of software?

Answer: Generally, software created under research grants/contracts or in the course of University employment is considered to be a "work for hire" under US Copyright law so the University is considered as the author of the software. In other circumstances, the "author" of software is the original creator(s) of the code and the author(s) owns the copyright to the software. Refer to the UNO Intellectual Property Policy for details, under the OTMC page Policies.

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46. Do I need to disclose software I have developed?

Answer: Yes. Software should be disclosed to the OTMC before it is distributed outside the University so we can determine under what circumstances it can be distributed and determine if it should be commercialized. For example, if the software was developed under a grant or contract, there may be certain restrictions or requirements limiting distribution. Also, we may be required to notify the sponsor prior to distribution. In addition, it may be desirable to patent certain elements of the software and distribution could negatively affect our ability to obtain any patents.

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47. How do I disclose software?

Answer: Use the Technology Disclosure Form in which you will describe the software and provide an indication as to how you wish to release or commercialize the software. In most cases, we will provide information on the type of copyright notice to affix to the software prior to its release.

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48. How do I copyright software?

Answer: Copyright is automatic and is granted through the process of writing the code (i.e. "when it is fixed in tangible form"). In some cases, it is desirable to register the material with the US Copyright Office-this provides a written record of the material which can be useful in prosecuting infringers. The registration requires completion of a two page form and the first 25 pages and last 25 pages of the code in question.

The OTMC might register any software that is being considered for license.

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49. Can software be patented?

Answer: Yes. Since copyright does not protect facts, ideas, systems, or methods of operation; a patent can be very useful in protecting algorithms and business methods provided they have commercial value and can not be easily circumvented. However, patent law has become more restrictive on what can be patented in recent years.

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50. Can software be released under an open source license?

Answer: Yes. If there are no obligations to research sponsors, co0-owners or other third parties, and all the authors/creators and OTMC agree, the software can generally be released under an open source license.

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51. What are the types of software licenses?

Answer: Software can be licensed for commercial use, for non-commercial or academic use and may be released simultaneously under several different types of licenses. In some cases, an evaluation copy of the software can be provided on a trial basis with a key code that disables the software at the end of the evaluation period.

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52. How are inventions from Federally sponsored research handled?

Answer: Title to inventions resulting from Federally sponsored research belongs to UNO. When a patent on such an invention is issued to UNO, the U.S. Government has a royalty-free license to use the invention for it uses. Any such inventions or invention disclosures must be reported to the federal government through their iEdison reporting system/database.

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53. How are inventions from State sponsored research handled?

Answer: UNO owns such inventions outright.

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54. How are inventions from privately sponsored research handled?

Answer: The details depend on the particular research contract. In general, UNO will retain title to intellectual property rights (e.g. inventions) but may grant the sponsor the first opportunity to license the technology under commercially reasonable terms to be negotiated.

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55. How should a situation be handled when the potential private sponsor maintains that since it is paying for research, all intellectual property should belong to it?

Answer: The private sponsor generally is paying for a specified deliverables (e.g., a report on the research; possible a piece ofsoftware; testing results).  These may belong to them or have a shared ownership with UNO depending on the contract terms.  No private/industry research contract with UNO or any other university for that matter, specifies an invention as an expected outcome or deliverable.  Thus any invention developed solely by UNO researches belong to UNO.  However, UNO generally offers to the private/industry sponsor of the research in the resarch contact access to any invention(s)  by giving them an option to license the invention(s) for their use. If you feel uncomfortable addressing this, get OTMC involved to discuss it with the company or other entity.

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56. Does UNO have a standard format for research agreements?

Answer: Yes. The Office of Contractual Review has a "Collaborative Research Agreement" template and a "Contract Services Agreement" template to streamline the negotiation process and decrease the time and effort required to reach an agreement among the parties involved. Contact the Office of Sponsored Programs.

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57. Are funds received as research grants that are part of a license considered distributable royalty?

Answer: No.

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58. What is a License?

Answer: A license is written agreement which defines the intellectual property and conveys the right to make, use, and sell product and processes using the intellectual property.  OTMC develops and negotiates such agreements on behalf of UNO.

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59. Does UNO ever take equity as part of the license?

Answer: Yes. UNO may take equity in a company as part of the consideration for the license–usually in lieu of up-front licensing fees. Typically, equity deals are associated with licensing to start-up companies that need cash for operations.