All Terminology
Agreement - A legal contract covering circumstances or actions.
Assignment - A written agreement transferring ownership of Intellectual Property.
Authorship - The source or creator of an original work. The work can be literary, software or any other work. Original in this content means only that it was created by the author and not copied from another work. It does not imply uniqueness as with a patent. Authorship is a prerequisite for copyright protection.
Background Technology - Technology already in existence that is required for creation, use or most efficient use of your innovation. Also known as Underlying Technology.
Bayh-Dole Act - Federal Legislation enacted this act in 1980. It was made effective in 1981 and gives ownership rights of discoveries made using federal funds to universities and certain non-profit institutions. The legislation compels the university or institution to commercialize the innovations for the public good.
Claims - Written statements as part of a patent application that state in specific terms what the invention is and what it does. The claims statement defines the scope of the patent and what will be protected by it.
Commercialization - The process of licensing an innovation, whether a product or process, developed by a university or government laboratory to a private company for commercial development.
Commissioned Work - A work created by someone other than the employee of an entity at the entity's request or any work requested to be completed by an employee outside of his or her Scope of Employment. Falls under copyright protection.
Confidentiality Agreement - A legal document executed prior to sharing confidential information in order to protect Intellectual Property rights. Similar to a Non-Disclosure Agreement (NDA).
Conflict of Commitment - May occur if duties or responsibilities associated with an external relationship inhibit the ability to meet commitments to the university in regard to employment.
Conflict of Interest - May occur if a university employee, researcher, faculty member or other personnel has a relationship with an outside organization and is put in a situation that would allow undue, adverse or improper influence or impact on the research, technology transfer, licensing or other process related to innovation.
Consideration - Payments in any form. May be cash, assets, equity ownership or any other item of value.
Consortium Agreement - A legal contract specifying the terms, funding and other obligations and rights of each party in a Research Consortium.
Consulting Agreement - May also be called a contractor agreement. A contract between a non-employee (i.e. a consultant or contractor) and an entity for a specific purpose or objective that specifies the work to be accomplished and payment to be made for services rendered.
Contributor - Someone who plays a role in the creation of an invention. Can be any role from conceptualization to collaboration. Does not include someone who is simply involved in the reduction of an invention - all contributors must be listed in the patent application.
Copyright - Legal protection under U.S. laws for authors of “original works of authorship” including written literary works, music, artistic creations and other intellectual works such as computer programs.
Course of Normal Duties - Duties assigned to an employee by an employer. These may be duties under control or direction of the employer or may be an important factor in determining rights to ownership in an innovation by an employer. Also referred to as Scope of Employment.
Creator - Anyone who conceives or participates in the conception of Intellectual Property.
Declaration - Term very similar to Oath. It identifies the patent application with its applicant and must include 1) name 2) city and state of residence (if U.S.) or 2a) country of residence (if foreign), 3) country of citizenship for each applicant on the patent 4) official mailing address of each applicant on the patent. This document must include a statement of whether the subject of the patent was a sole or joint invention. It must be signed by all inventors but does not require verification by a witness.
Design Patent - A patent granted for a new, original or ornamental design for a manufactured item.
Development Expense - Costs associated with developing, protecting or improving the commercial viability of Intellectual Property. Includes expenses such as fees for patent applications, marketing, legal, etc.
Disclosure - Any portion of the patent application or patent process in which the inventor reveals details about the innovation. Disclosure can lead to a third party being able to replicate the inventor's concept. This may also refer to the technology transfer process step where the university inventor notifies its technology licensing office of the invention.
Divulgation - Non-Confidential written or verbal disclosure of specific and critical aspects of an invention or display or distribution of samples of the invention such that its make-up is discernable. Will result in the forfeiture of foreign patents.
Drawings - Drawings must be included in the patent application if they are necessary to understand the subject of the patent and must display every aspect of the invention being protected under the patent.
Equity - Stock, stock option or other ownership rights which may be granted to an inventor in addition to, or in lieu of, other compensation from a technology licensee.
Fair Use - Allows copyrighted materials to be used for certain purposes without violating the rights of the copyright holder. Protected activities include teaching, research, reporting in the news, critiques and commentary.
Field of Use - The area of technology or business where the licensed technology will be used, marketed or sold. Specified in a License Agreement.
Gift - Voluntary and permanent transfer of an asset, including Intellectual Property, with no expectation of compensation or other benefit from the recipient.
Grantable Petition - A request filed with the patent office to convert a provisional patent application to a non-provisional patent.
Improvement - Intellectual Property developed while utilizing existing Intellectual Property or Intellectual Property developed that relies on existing patented Intellectual Property.
Income Sharing - Proportion of income to be distributed to each party in a licensing or commercialization agreement.
Infringement - Unauthorized use of an innovation or work.
Intellectual Property - An invented or created product or idea created by the human mind that is protected by law from unauthorized use by any who do not own rights to it.
Intellectual Property Infringement - Unauthorized use of Intellectual Property.
Interinstitutional Agreement - An agreement between multiple universities or institutions to conduct research or technology transfer activities. Typically established when conducting joint research projects.
Invention - A new method, device, process or object that has not previously been discovered or created and can be utilized for a specific purpose or an improvement to an existing invention. Not every invention is patentable.
Inventor - As defined by U.S. patent law, an individual that contributes in whole or in part to the conception of an invention or who has creative input. Participation in the reduction of an invention does not establish rights in an invention.
Joint Inventors - Patent law terminology applied when two or more people co-created an innovation.
Joint Ownership - Ownership rights shared by two or more persons or entities.
Know How - Information related to Intellectual Property, innovations, improvements, processes, formulas, information, trade secrets, etc.
License - Permission granted to utilize Intellectual Property.
License Agreement - A legal document specifying the terms of use of an invention and protecting ownership rights in an invention. This agreement will typically include a length of time or specify perpetuity and will include rights, prohibited uses, limitations and other legal terms.
Licensing - The mechanism to develop Intellectual Property and make it available for public use while generating revenue.
License Issue Fee - Consideration given as an initial lump payment to the licensor.
Licensee - The purchaser or acquirer of license rights to a piece of Intellectual Property.
Licensor - The granter of a license and/or the owner of the Intellectual Property being licensed.
Material Recipient - Any entity that takes delivery of Tangible Research Property in accordance with a Material Transfer Agreement.
Material Transfer Agreement - Also called an “MTA”, is used when an inventor wants to share either patented or unpatented innovations with an academic colleague who wishes to utilize it for research purposes.
National Institutes of Health - The primary Federal agency that conducts and supports medical research. A division of the U.S. Department of Health and Human Services.
New Venture - In the realm of Intellectual Property, a new venture is a company established to commercialize the technology or innovation that was created, often in conjunction with a research university's technology licensing office. May also be called a Start-Up.
Non-Disclosure Agreement - Commonly referred to as an “NDA”. Protects confidential information by requiring that the information revealed be kept in confidence. It limits use or distribution of the information revealed and establishes legal liability for unauthorized use or exposure of information revealed.
Non-Provisional Patent - Patent converting a Provisional Patent to a standard patent within the twelve (12) months a provisional patent is valid by filing a Grantable Petition requesting the conversion. The patent issued from the petition request will be valid for twenty (20) years from the date the provisional patent was filed which can effectively shorten the patent life span by up to twelve (12) months. It is generally preferable to file a new patent application referencing the provisional patent to maintain unlimited protection.
Oath - Term very similar to a declaration but also used to verify information. It identifies the patent application with its applicant and must include 1) name 2) city and state of residence (if U.S.) or 2a) country of residence (if foreign), 3) country of citizenship for each applicant on the patent 4) official mailing address of each applicant on the patent. This document must include a statement of whether the subject of the patent was a sole or joint invention. It must be signed by all inventors and verified by a witness.
Option Agreements - May be found within Research Agreements and establishes the right of the university to negotiate a license for Intellectual Property. These agreements are intended to allow a potential licensee to evaluate an invention or technology prior to signing a standard license agreement. Also called Option Clauses.
Owner - Person(s) or entity(s) who control the rights to something.
Patent - Granting of legally protected rights to an inventor of a specific innovation. Prohibits others from making, selling or using the invention without acquiring rights from its inventor or patent owner. Usually covers a period of twenty (20) years from the date of granting. Can consist of three types - Utility Patent, Design Patent or Plant Patent.
Patentable - To be able to obtain a patent for an innovation, it must be novel, non-obvious and usable for a specific purpose.
Patent and Trademark Office - The office operating under the authority of the U.S. Department of Commerce, which administers patents and trademarks. Also referred to as “PTO”.
Patent Attorney - An attorney specializing in patent and Intellectual Property law.
Patent Cooperation Treaty - An international agreement that helps simplify the patent filing procedure in most industrialized countries. Foreign patent applications should be filed in each country where the inventor wishes to pursue patent protection. Also known as the “PCT”
Patent Search - Investigation of existing patents to determine if a discovery meets the patentable criteria of new, novel and non-obvious.
Perpetuity - Legal term meaning forever.
Plant Patent - A patent granted for the invention and asexual reproduction of a distinct or new variety of plant.
Pre-Disclosure - Notification sent to a university Technology Licensing Office (“TLO”) to discuss an invention and the disclosure and transfer processes.
Principal Investigator - The person in charge of a project.
Prior Art - Public knowledge that precedes the date of invention that is either related to or in the specific field of the invention. This may include published articles, abstracts, previously filed patents, or materials presented in an academic or professional setting (such as a conference). Patent applicants must establish that their invention is uniquely different to a prior art or a non-obvious use of the prior art.
Provisional Patent Application - A lower-cost first patent filing which does not require formal patent claims, oaths, declarations or information disclosure statements. This application allows the term “Patent Pending” to be used. It lasts only twelve (12) months from the filing date and may not be extended.
Publication - Disclosure in a format easily accessible or distributed to the general public.
Public Disclosure - Making an invention, or technology, public knowledge. Can be accomplished in many ways including publication, presentation, etc. Patent rights must be filed within twelve (12) months of public disclosure in order to preserve the inventor's rights.
Public Domain - Indicates lack of copyright or patent. Can be accessed and used by anyone.
Reach Through Rights - Ownership rights claimed by a research sponsor other than a university. Allows unreasonable control over innovations. Request of these rights conflicts with the research principles of the National Institutes of Health.
Research Data - Any information generated and documented while performing research.
Reasonable Discernability - Relative ease of recognition of something.
Reasonable Effort - Minimum legally required attempt. Subjective based on the issue.
Reduced to Practice - A concept that has been proven to work as intended.
Reduction - The process of constructing the invention or performing the process to demonstrate its intended or claimed use in the patent application.
Research Agreement - Defines the terms for sponsors to provide research support to a university.
Research Consortium - A collaborative effort by a group of institutions or corporations to investigate or research something of mutual interest.
Right of First Refusal - An agreement giving a specific entity the first right, usually under a specific time period, to negotiate a license for an invention.
Royalty - Monies generated from the licensing and commercialization of inventions and technologies. Intellectual Property agreements typically contain the formula for dispersal of a percentage of royalties among the inventor, university, technology transfer office or other designated parties.
Scholarly Work - Work crated by an institution's faculty member within their Scope of Employment and in the area of which they teach.
Scope of Employment - Duties assigned to an employee by an employer. These may be duties under control or direction of the employer. Also, may be an important factor in determining rights to ownership in an innovation by an employer. Also referred to as Course of Normal Duties.
Service Mark - A word, name, or symbol that represents a service company or a service provided by a company that differentiates it from the competition and establishes it as unique. The service mark may be legally registered for the exclusive use of that company.
Sponsored Research - Research funded by an external entity for a specific purpose.
Start-Up Company - In the realm of Intellectual Property, a start-up company may be established to commercialize the technology or innovation that was created, often in conjunction with a research university's technology licensing office. May also be called a New Venture.
Tangible Research Property - Results of research that are physical in nature rather than intellectual. A physical invention rather than an innovative concept.
Technology Licensing Office - A department, sub-department or additional entity of a university who facilitates licensing, transfer and commercialization of inventions discovered by researchers, faculty or students of the institution. Abbreviated as “TLO”.
Technology Transfer - Technology transfer is the sharing of skills, knowledge, technologies, methods of manufacturing, samples of manufacturing and facilities among industries, universities, governments and other institutions to make scientific and technological developments accessible to a wider range of people who can further develop and exploit the technology.
Technology Transfer Offices - an organization within a university or government body that identifies research initiatives that have the greatest commercial potential, and facilitates their commercialization. They provide strategies for these discoveries and help to guide the process to fully exploit its opportunity. They are also known as "Offices of Technology Transfer."
Technology Transfer Process - The predefined steps taken by the research university to assert and protect its patent rights and to monetize inventions where possible. Steps in the process may include pre-disclosure, disclosure, assessment, protection, marketing, licensing, commercialization and revenue distribution.
Trade Dress - A form of trademark protection. It is the appearance or appearance configuration of a product including its size, color, shape, graphics, packaging or sales methodology that can be protected under trademark law.
Trademark - A name, symbol, or other device identifying a product, officially registered and legally restricted to the use of the owner or manufacturer. A brand name.
Trademark Registration - Issued by the U.S. Patent and Trademark Office (“PTO”) and establishes rights for use of the mark. Trademarks are protected upon initial use even without registration with the PTO.
Trade Secret - Confidential information that is valued in a particular industry and is not commonly known. It is difficult to obtain and valuable to competitors.
Underlying Technology - Technology already in existence that is required for the creation, utilization or most efficient use of your innovation. Also known as Background Technology.
Utility Patent - A patent granted for a new and useful process, machine or manufactured item. Utility patents may be Provisional or Non-Provisional.
Venture Capital - Money invested in exchange for equity in a new business.
Work Made for Hire - Any work created by an employee when conducting their employment duties. Ownership of works made for hire resides with the employer. May also refer to a work by a consultant or contractor if their consulting or Contractor Agreement specifies ownership rights to the contracting entity.
World Intellectual Property Organization - An agency of the United Nations (UN) responsible for the protection of Intellectual Property worldwide. Referred to as “WIPO”.
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