FAQ’s for ECU Inventors
Intellectual Property Questions
1. What is
a disclosure?
-A disclosure is the =
release
of information or research for the purposes of intellectual property
protection.
2. What is
a Report of Invention (ROI), and where can I find one?
-The ROI is a documen=
t used
by OTT to process the disclosure. A
copy of the ROI can be located on the OTT
website.
3. What is
intellectual property?
-Intellectual propert=
y is
tangible and intangible personal property such as concepts, ideas, and other
works that can be protected from unauthorized use through patents, copyrigh=
ts,
trademarks, and trade secrets.
4. How is
intellectual property protected?
-There are many ways,=
by
federal patent law, copyright law, trademark law, state trademark law, state
laws regarding trade secrets and other laws related to business and contrac=
ts.
5. When
should intellectual property be disclosed to ECU?
-Intellectual propert=
y should
be disclosed early in the development process. These disclosures should be made b=
efore
any public disclosures (oral or written) are released. An additional reference table can =
be
accessed by clicking here.
6. Why
should intellectual property be disclosed before a public disclosure?
-Once a public disclo=
sure has
been made, many opportunities for foreign patents have been lost. Also, from the date of the public
disclosure there is a one year timeline to file for a
7. Why is
protection of intellectual property important?
-Intellectual propert=
y is a
valuable asset, and once it is effectively protected it can return value and
advantages to its owner and the inventive group.
8. What is
inventorship?
-Inventorship is a le=
gal
concept for recognizing individuals who contribute to the conception of the
invention, and is defined by the patent.&n=
bsp;
Conception is defined as: the complete performance of the mental =
part
of the inventive act. All that
remains to be accomplished, in order to perfect the act or instrument, belo=
ngs
to the department of construction, not invention. It is therefore the formation, in =
the
mind of the inventor of a definite and permanent idea of the complete and
operative invention, as it is thereafter to be applied in practice that
constitutes an available conception, within the patent law.
9. Who
should be listed as contributors on the ROI?
-Those listed on the =
ROI
should include anyone who contributed to the project.
10. Who
owns an invention made on an employee’s own time and resources?
-In this situation, t= he inventor will usually own the invention.&n= bsp; Check with OTT, however, to help avoid potential misunderstandings.<= o:p>
11. If an
employee of ECU and an employee from an outside company or university invent
something jointly what happens to the invention?
-Typically, this inve=
ntion
will be jointly owned by ECU and the outside company or university. However, it is important to contac=
t OTT
to determine the standings for each case.
12. Why
does the Office of Technology Transfer (OTT) need my social security number=
?
-The social security =
number
of each inventor is required for the disbursement of any checks relating to=
the
income of the invention.
13. What
constitutes a conflict of interest and how can I avoid complications arising
from one?
- ECU Policies define a conflict of interest as any
situation in which faculty members may have the opportunity to influence the
University’s business decisions in ways that could lead to personal g=
ain
or give improper advantage to their associates. To avoid any associated complicati=
ons,
ECU faculty and EPA non-faculty shall disclose potential conflicts immediat=
ely
using the appropriate University forms and shall allow the University throu=
gh
appropriate administrative interventions to eliminate, avoid, or manage the=
potential
conflicts. Please refer to the
referenced ECU policies below.
ECU Policies:
http=
://www.ecu.edu/fsonline/FacultyManual2/AppendixI/AppI.htm
14. How
are inventions from federally sponsored research handled?
-Title of inventions
resulting from federally sponsored research belongs to ECU. When a patent on such an invention
belongs to ECU, the U.S. Government has a royalty-free license to use the
invention.
15. How
are inventions from state sponsored research handled?
-ECU owns state spons=
ored
research inventions outright.
16. How
are inventions from privately sponsored research handled?
-These details depend=
on the
particular research contract. In
general, ECU will retain the title to intellectual property and grant the
sponsor the first opportunity to license the technology under commercially
reasonable terms to be negotiated.
Patent Questions
17. What
are patents and provisional patent applications?
-A patent is a legal =
monopoly
that prevents other from making, using, or selling an invention covered by =
the
patent. Parents are granted by
governments, and may be enforced only in the jurisdiction that has granted
them. Provisional patents
applications are filed with the United States Patent and Trademark Office
(USPTO) that establishes the effective filing date of a patent
application. The provisional
application is not examined by the USPTO, and may remain pending for one
year. At the end of the perio=
d, ECU
must elect to drop the filing and allow the information to become public, or
convert the provisional application to a regular patent application. In these cases, the OTT will work =
with
the inventor(s) to make this decision on behalf of ECU.
18. Who
owns the patent?
- ECU has an interest in all inventions of Univers=
ity
personnel that are conceived or first actually reduced to practice as part =
of or
as a result of university research, activities within the scope of the
inventor’s employment by the university, and activities involving the=
use
of university time, facilities, staff, materials, information not available=
to
the public, or funds administered by the university. Per UNC policies, inventions or
discoveries made on the inventor’s own time belong to the inventor ex=
cept
in the case of conflict with any applicable agreement between the instituti=
on
and federal or state government or agency thereof.
ECU Policy:
http://www.researc=
h2.ecu.edu/ott/ecupatent.html
UNC System Policy:
http://intranet.northcarolina.edu/docs/legal/policymanual/500.2.pdf
19. Will
obtaining a patent stop others from doing academic research about the same
subject matter?
-No,
research on the subject matter for strictly academic purposes is not an act=
of
infringement. The patent laws=
exist
to protect patented invention in a commercialization context. Academic or other research institu=
tions
remain free to build upon patented advances.
20. Is a
patent necessary for commercial success?
-No,=
ECU
often licenses technologies that are not patented. Companies frequently license items=
for
internal research use to save the time and expense of creating research too=
ls for
themselves.
21. If ECU
determines that it is not interested in pursuing my invention, may I have it
back to pursue on my own?
-Yes, OTT may decide =
to have
any rights that the University may have in the technology should be released
back to the inventor. However, if there was government support for the
research, the government may have certain rights in the technology. It is t=
he
responsibility of the inventor to be sure that the government also assigns =
its
rights back to the inventor.
22. I have
a good idea, but haven’t done any lab work on it. Can we patent it?
-To =
be
eligible for patent protection, an invention must meet certain criteria
including the following:
· =
it must be =
more
than mere idea; it must relate to a process, machine, manufacture, composit=
ion
of matter, or new use of any of these.
· =
it must be =
novel;
the inventor must be the first person in the world to invent the invention.=
· =
it must be
non-obvious; the invention must not be obvious to a person of reasonable sk=
ill and
knowledge in the art to which the invention relates.
· =
it must be
useful; the invention must have some utility.
However, a provisional patent applicati=
on may
be filed on inventions that have not yet been reduced to practice.
24. Who
pays for the patent application?
-ECU pays for all cos=
ts
associated wit the preparation, prosecution, and maintenance of the
patent. ECU seeks reimburseme=
nt of
patent costs through licensing.
25. What
is the difference between licensing a patent and selling a patent?
-When a patent is lic=
ensed,
ECU still holds the title to the patent.&n=
bsp;
Only certain rights in the parent are granted to the licensee, under
specific terms and conditions. However,
when a patent is sold ECU no longer retains any title to the patent.
26. May an
ECU employee engage in a side business?
- Yes and no.&nbs=
p;
An ECU employee may engage in a side business if the following
conditions are met:
·
The faculty=
or
other professional staff member has completed the “Notice of Intent to
engage in External Professional Activity for Pay” form, and the reque=
st
has been granted by their Department head and also the next higher
administrator.
· There is no conflict of interest (See Conflict of Interest link below for explanation)<= o:p>
·
There is no
conflict of commitment (See Conflict of Interest link below for explanation=
)
·
No inapprop=
riate
use or exploitation of university resources may occur
·
The name of=
The
University of North Carolina or any of its constituent institutions are not
used for any other purpose other than professional identification
·
No claims,
explicitly or implicitly, of any university or institutional responsibility=
for
the conduct or the outcome of the external professional activities for pay =
are
made.
ECU Faculty Manual &#=
8211;
External Professional Activities of Faculty and Other Professional Staff:
http://www=
.ecu.edu/fsonline/FacultyManual2/Part6/65.htm
ECU Faculty Manual &#=
8211;
http=
://www.ecu.edu/fsonline/FacultyManual2/AppendixI/AppI.htm
27. Can an
employee engage in outside consulting?
- It is expected, but=
not
required, that faculty and other professional staff members will participat=
e in
external professional activities for pay, including consulting. This type of activity often leads =
to
significant societal benefits, including economic development through
technology transfer. However,=
the
same conditions must be met as are listed above in question 26 as a consult=
ing
service is usually considered a side business.
ECU Faculty Manual &#=
8211;
External Professional Activities of Faculty and Other Professional Staff:
http://www=
.ecu.edu/fsonline/FacultyManual2/Part6/65.htm
ECU Faculty Manual &#=
8211;
http=
://www.ecu.edu/fsonline/FacultyManual2/AppendixI/AppI.htm
28. Can
ECU help a non-ECU employee obtain a patent?
-No.=
29. What
is publication for patent purposes?
-For purposes of pate=
nt law,
a publication may be a published article in a journal, magazine, or newspap=
er;
a presentation at a conference; a thesis or dissertation; distribution of
preprints; a posting on the Internet; and a number of other events that ten=
d to
disclose knowledge to the public, or at least that portion of the public mo=
st
likely to appreciate its significance. While not technically a
"publication,” other events that have a similar effect include t=
he
sale of an embodiment of an invention, an offer to sell, and the public use=
of
an invention. There are certain narrow exceptions.
30. Is a
grant proposal considered a “publication,” or a discussion of an
idea with colleagues?
-Submission of grant
proposals to state or federal agencies, and discussions on a one-to-one bas=
is
with co-workers or peers may or may not be considered publications, dependi=
ng
on all the circumstances. Once a grant proposal has been approved, its abst=
ract
is generally published, typically online. At least the abstract will then be
considered a publication, from the date it become publicly available. The
remainder of the grant may or may not be considered a publication as well. =
Some
funding agencies permit portions of a grant application to be specifically
marked as "Confidential.”
31. Is a
dissertation or thesis considered a “publication?”
-In =
general,
yes, although it can be important to identify its effective publication dat=
e.
Traditionally, a dissertation or thesis was considered to be published once=
it
had been catalogued and shelved in a publicly accessible library. Dissertat=
ions
and theses are now typically submitted and published electronically, rather
than on paper. While unanswered questions remain concerning the legal effec=
ts
of the relatively recent advent of electronic publication, it is reasonable=
to
expect that the "publication date" of an electronic dissertation =
or
thesis should generally be the date that it is first made available to the
public online.
32. Can an
ECU employee conduct a patent search himself/herself?
-Yes=
. In
recent years, a number of databases have been made available to the public =
on
the Internet. Free databases may be found at the U.S. Patent and Trademark
site, www.uspto.gov,
and at the European Patent Office site, www.european-patent-off=
ice.org/index.en.php.
A commercial site that features a number of useful databases, some of which=
are
free and some of which require a subscription, is the Delphion site: www.delphion.com.
It can be both helpful and educational for a researcher to conduct a patent
search on a new invention. There is much technical information that is
published only in patents and patent applications, and that does not otherw=
ise
appear in the traditional academic literature to which university researche=
rs
may be more accustomed.
33. I gave
a talk last year on this; can I file a patent?
-Public disclosure of=
an
invention more than one year before a patent application is filed serves as=
an
absolute bar to a patent. Any public disclosure prior to filing a
34. My
graduate student was very helpful in executing the experiments for this inv=
ention;
will he/she be listed on the patent?
-Only inventors are l=
isted on
patents. An inventor is the person(s) who conceived the invention. So, if y=
our
graduate student did not contribute to the conception of the invention, he/=
she
is not an inventor. Who actually did the experiment is usually irrelevant in
determining inventorship for patent purposes. But, if the graduate student,=
in
executing the experiment substantially altered the invention or improved the
invention, that may enable him/her to be included as a co-inventor. Concept=
ion
is the "formation in the mind of the inventor, of a definite and perma=
nent
idea of the complete and operative invention, as it is thereafter to be app=
lied
in practice." Amgen v. Chugai Pharmaceuticals (D.Mass. 1989).
35. Can I
call the attorney and talk to her about this application?
-Questions about a pa=
tent
application that has been filed should first be directed to the OTT at (252)
328-9549. When a patent application is being prepared by an attorney, you m=
ay
be contacted by the attorney to help clarify issues and insure that the
application adequately protects the invention. During this preliminary phas=
e of
the patent application dialog between the attorney and the inventor is
encouraged, but administrative inquiries should be directed to the OTT.
Additionally, please remember that all telephone calls to the attorney do c=
ost
the University, and therefore the inventors, money.
36.
Without talking the time to learn U.S. and foreign patent laws, how =
do I
avoid jeopardizing my patent rights?
-Simple, if you think=
you
have an idea that may be patentable, contact the OTT as soon as possible and
stay in touch with them on a timely basis about potential public disclosure=
s of
your idea. OTT will work with you to give you the advice that you need so t=
hat
you can protect your inventions without interrupting your primary activitie=
s as
a research scientist.
37. What
is a confidentiality agreement?
-A confidentiality ag=
reement
is an agreement whereby one party agrees to hold the proprietary technical
and/or business information of the other party in confidence. Confidentiali=
ty
Agreements (CDA) or Non-disclosure Agreements (NDA) are a standard tool of =
the
trade, and many companies are amenable to having access to a technology und=
er
the terms of this type of agreement.
38. Who
can sign a confidentiality agreement?
-Only authorized indi=
viduals
can sign a CDA on behalf of ECU. PRINCIPAL INVESTIGATORS ARE NOT
AUTHORIZED TO SIGN THIS AGREEMENT ON BEHALF OF ECU. If a company wi=
shes
to obtain confidential information from ECU, the investigator should contact
the OTT.
License Questions
39. What
is a license?
-Generally speaking, a
license is a legally binding written document in which one party, having
definable right in a property, transfers or grants some part of those right=
s to
another entity for some type of consideration.
40. Does
ECU sell intellectual property rights to third parties?
-Typically not, right=
s are
granted to third parties on either an exclusive or non-exclusive basis to
manufacture, have manufactured, and/or sell or use the technology to create
products or processes. Licens=
es are
granted such that the intellectual property must be returned to the Univers=
ity
if the third party fails to fully develop and commercialize the rights
granted. A sale of technology
generally means there is no provision for return.
41. Who
conducts license negotiations?
-All=
license
negotiations are handled by the OTT.
42. My
technology has been exclusively licensed to a company; does that mean that =
it
may not be licensed to any other company?
-Technology that has =
been
exclusively licensed to a company for a particular use may not be
licensed to any other company for that same use. There are occasions when a
technology has utility in more than one field, such that it has multiple
possible uses. In that situation, it may be licensed exclusively to one com=
pany
to be used for purpose X, and licensed to another company to be used for
purpose Y. The field of use outlined in the license agreement determines
whether or not an exclusively licensed technology may be licensed to another
company.
43. I have
a great relationship with the sales representative at XYZ Corp.; may I
negotiate a license agreement for my technology with him?
-The University is so=
le owner
of all intellectual property that is developed at the University with
University resources and only the University may its rights in its technolo=
gy
to commercial entities or otherwise. As such, all license agreements are to=
be
negotiated and executed by OTT staff. But, we are always eager to work with=
our
inventors to utilize their knowledge and contacts in order to better market
their technologies. If you have a great relationship with a sales
representative from XYZ Corp. and you think that your technology would
complement their product line or goals, then definitely share that informat=
ion
with the OTT.
44. How
will you contact companies regarding my technology?
-After meeting with y=
ou to
discuss the technology in detail, the OTT will prepare a brief, one page
non-confidential summary that will give a basic description of your technol=
ogy,
with a focus on its unique advantages.&nbs=
p;
OTT will then use that summary to stimulate interest in your
technology. OTT uses a number=
of
tools, including online information retrieval services, to locate and ident=
ify
companies that present good candidates for licensing your invention. However, you may be our best sourc=
e of
information regarding a licensee.
Your relationships with scientific colleagues in the corporate world=
are
often a key catalyst in the effort to find a licensee.
Copyright Questions
45. What
is a copyright?
-A c=
opyright
is the grant of protection by the laws of the
46. What
is the life of a copyright?
-Cop=
yrights
are in effect for the life of the last surviving author, plus 70 years. If the work is produced as a resul=
t of
the author’s employment, the term is 95 years from the first publicat=
ion,
for 120 years after the creation of the work, whichever is shorter.
47. How do
you file for copyright protection?
-Cop=
yright
protection automatically exists from the moment of creation, and a work is
created when it is fixed in a tangible form. Therefore, no publication or
registration or other action by the Copyright Office is required to secure a
copyright, although certain advantages are retained for registered copyrigh=
ts,
such as the right to seek damages for copyright infringement.
48. What
is a Material Transfer Agreement (MTA)?
-Material Transfer Agreements (MTA) establish terms of confidentiality for tangible material, such as biological materials. An MTA should be used if tangible material is to be made available for use or review to an academic colleague= or to a potential corporate collaborator.
49. What
is the Bayh-Dole Act?
-The Bayh-Dole Act, p=
assed by
Congress in 1980, created a uniform patent policy among the
50. What
happens to the invention if an inventor retires from ECU, transfers to anot=
her
university, or dies?
-If an inventor retir=
es from
ECU or transfers to another university, the inventor is still entitled to t=
he
inventor’s personal share of license revenue disbursement. If an inventor dies, the inventor&=
#8217;s
share of the license revenue is disbursed to the inventor’s heirs.
<= o:p>