Frequently Asked Questions (FAQ)
University researchers are fluent in the specifics of cellular structure, the dynamics of DNA, nanotechnology or biogenetics. However, matters related to Intellectual Property and technology transfer may be unfamiliar territory for them. Even the most experienced university researcher will have questions about Intellectual Property issues.
Intellectual Property ownership, technology transfer and commercialization as well as the policies and laws attached to these topics are extremely complex. Do not hesitate to ask questions nor stop until you get the answers you need. However, the person who answers your question today may not be available when your future equities are affected. It's important that authorized personnel provide answers in written form.
Many of the most commonly asked questions are covered in our Frequently Asked Questions (FAQ) section below. Feel free to post additional questions to IP Advocate or to any of the many resources mentioned in the Who to Talk To section of this site. This will enable us not only to respond to you personally but also to add this information to our database in order to benefit other researchers.
This information should not take the place of legal advice but rather be a starting point to researching the answers you require.
Who owns Intellectual Property developed by a researcher at a university?
How long does it take for an invention to be commercialized?
How much will I get if my invention is licensed?
Is my invention patentable?
Is technology transfer a good thing?
How much does it cost to patent something?
Who pays the patent fees?
What do I do when I know I made a discovery or am about to?
What happens after I disclose an invention?
Will publishing my work negate patentability?
How does the source of funding for my research impact patent rights?
How important are dates in the patent application process?
What is a “Prior Art” search or Patent search and should I do one?
Are students bound by the same Intellectual Property ownership guidelines as professors and researchers?
Will I need to market my invention or find a company who wants to use it?
Will I be allowed to meet with the potential licensor or participate in negotiations?
What is a license agreement?
What is a start-up company and why would this be a viable option?
Who owns Intellectual Property developed by a researcher at a university?
Typically, if university facilities or supplies were utilized or if the discovery was made during university working time and with public funds, the university will have rights in the innovation. Consult your employment contract or research agreement for details on ownership of developed property.
How long does it take for an invention to be commercialized?
It will usually depend on the type of Intellectual Property. For medical treatments, pharmaceuticals and clinical trials, testing and FDA approval can take many years.
For IT technologies, development can be accomplished much more rapidly. Your technology licensing office will be able to provide guidance based on their experience.
How much will I get if my invention is licensed?
Consult your employment contract or university's Intellectual Property policy. Frequently, the technology licensing office receives a percentage of gross revenues to cover patent and licensing fees and the remainder will be divided by a set formula among the inventor(s) and the university. The inventor's department may get a portion of the licensing revenue as well. On occasion a dollar threshold is set and revenues above and below that amount are apportioned with discretion.
Is my invention patentable?
To secure a patent, the innovation must be novel, non-obvious and useful. However, your invention may meet these criteria and qualify for a patent and still be rejected by your technology licensing office if they do not feel it is marketable or that it will generate licensing interest.
Is technology transfer a good thing?
It certainly can be if done in a socially responsible manner. Innovations arising from university research have improved the health and quality of life for millions of people.
How much does it cost to patent something?
A conservative estimate would be from $10,000-$20,000 to obtain a patent from the USPTO. The cost of a foreign patent is even greater depending upon the number of patents and the actual country in which you are seeking patent protection.
Who pays the patent fees?
Your university should assume the entire financial burden for all patent applications and any other costs associated with marketing and licensing the innovation for commercialization.
What do I do when I know I made a discovery or am about to?
Employment contracts and research agreements usually require immediate notification of an innovation or pending innovation. If the discovery was made using your own materials and on your own time without utilizing university facilities, you may still be required to disclose the independent nature of the project in order to fully access your patent rights. Most universities have an invention disclosure form for this purpose.
What happens after I disclose an invention?
The Technology Licensing Office (or other similar university entity) should contact you to discuss the implications of your innovation, its potential patentability and next steps. Duke University, along with many other research institutions, publishes their technology transfer process on their TLO website.
Will publishing my work negate patentability?
If you choose to publish any information about your innovation, it is best to wait until you have applied for a patent. However, under current 2008 US law you can still be protected provided you file for a patent within one year of the publication.
How does the source of funding for my research impact patent rights?
If your research is funded through a sponsorship, the sponsoring party may be entitled to ownership rights. This should have been fully explained in the sponsorship contract. For research utilizing public funds, the university will have ownership rights in the discovery.
How important are dates in the patent application process?
Dates are critically important. Under current US patent law, the person who was the “first to invent”, not the first person to file for the patent, has claim to the patent for an invention. Keeping an auditable trail of your research timeline with witness verification can make the difference in securing the patent.
What is a “Prior Art” search or Patent search and should I do one?
Yes, you should do a “Prior Art” search. It is always important to know whether the innovation you are pursuing is, in fact, previously undiscovered. Because you know your field of research best, it may be advantageous for you to conduct the search for prior art or patent. If a patent already exists for your invention, you may still achieve patentability by differentiating it materially from the prior art. A patent search at the US Patent Office (www.uspto.gov) is the best way to accomplish this necessary task. To simplify the process, the USPTO has developed a 7-Step Strategy for conducting a patent search on their site.
Are students bound by the same Intellectual Property ownership guidelines as professors and researchers?
Yes, as a general rule, any innovations made by students would be treated in the same manner as results from faculty researchers. You can find specific information as it relates to your university listed in the student handbook.
Will I need to market my invention or find a company who wants to use it?
No. Your university's technology licensing office (or similar entity) will be charged with finding potential licensing ventures for your innovation.
Will I be allowed to meet with the potential licensor or participate in negotiations?
Some universities do not allow inventors to participate in the negotiation process, however this will vary by institution.
What is a license agreement?
This is the agreement between your university and a company desiring to use your invention, usually in a specific area for a specific purpose.
What is a start-up company and why would this be a viable option?
A start-up company is a business established with the intent of commercializing Intellectual Property. This is an alternative to licensing the innovation to an existing company.
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