A-to-Z Index

FOR INVENTORS

Frequently Asked Questions

I've been working on something interesting. When should I disclose an invention to JMU?

Why should I disclose an invention to JMU?

What constitutes an invention?

What is a patent?

To whom does the University assist with licensing and what role does the start-up company play in technology transfer?

Why are universities a vital link in the chain from creation of knowledge to development of products?

Why is it important to encourage university inventors to participate in the patenting process and how are they motivated?

 

I've been working on something interesting. When should I disclose an invention to JMU?

You should disclose an invention as soon as you believe you have a potentially patentable invention, often the earlier the better. If you disclose an invention to Technology Transfer after it has been published or publicly presented, it may no longer be possible to patent your invention outside the US . The opportunity to obtain patent rights in the US ends on the first year anniversary of the date of the first public disclosure describing the invention. The more restrictive international application deadlines should be followed. (top)

Why should I disclose an invention to JMU?

There are a number of reasons:

  1. First, and most fundamentally, you have an obligation to do so. JMU's employment policy obligates you to disclose your inventions, whether or not patentable, to OTT for evaluation.
  2. The development and commercialization of your invention may provide significant public benefit and generate income for research and education.
  3. A licensee of your invention may wish to sponsor research in your laboratory.
  4. Inventors receive a portion of net income generated by their inventions

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What constitutes an invention?

Inventions include discoveries and innovations in:

  • processes
  • products
  • tools or instruments
  • compositions of matter
  • living organisms
  • improvements to existing technology in the categories above

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What is a patent?

A patent is a grant from the federal government that allows the patent owner to prevent others from practicing an invention for a limited period of time - 20 years from the date of the patent application for U.S utility patents. In return for the granting of the patent, the law stipulates that the invention be made public. Therefore, others are able to practice the invention if given a license by the patent owner. A patent is recognition for the inventors and an incentive to commit resources to develop the invention to a commercial product with a protection against competition from imitators.

To be patentable, an invention must meet three criteria. It must be novel, useful and not obvious to someone of ordinary skill in the art. A patent has two parts:

  • specification - narrative description of the invention, including prior art which preceded it, and best mode of practicing the invention known by the inventor.
  • claims - the essential elements of the invention.

The specification briefly describes the field of the invention. A background section describes the work done in the past (prior art) and its shortcomings. All known prior art must be disclosed. That is why performing an IP space analysis improves your chances of obtaining a patent and critical for it to be a strong patent. Drawings are included to aid in understanding the invention. The disclosure of the invention describes in general terms the invention's advantages. The summary details the theory and full details of the way the invention can be implemented. Each implementation is called an embodiment and the best one is the preferred embodiment of the invention. The industrial applicability section describes the applications in which the invention will be used.

The claims circumscribe the legal bounds of the invention. They describe the essential elements of the invention, firstly as broadly as possible, and then more narrowly. Although it is generally easier to obtain a patent with narrow claims, if they are too narrow then others can possibly work around the patented invention.

Questions and answers below excerpted from: http://www.cogr.edu/docs/BayhDoleQA.htm

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To whom does the University assist with licensing and what role does the start-up company play in technology transfer?

Universities license technology to a broad spectrum of organizations and individuals, ranging from the large for-profit corporation to a small non-profit research institute. For example, a license may be given to a multi-national pharmaceutical company for a new application of a known drug because that company may hold the patent on the compound.

A non-exclusive license may be granted to a number of computer hardware and software firms to incrementally improve product lines. A royalty-free license may be granted to another non-profit research institute to enable a researcher to practice the invention for research purposes. Included in these examples must also be a license to a early stage firm whose founding purpose was to commercialize the technology.

While these kinds of licenses are probably the riskiest in terms of eventual commercialization and subsequent payoff, those licensee companies are sometimes the most effective at transferring the technology for the public good.

Universities search for the licensee most capable of commercializing the technology. Examples of criteria used in identifying the licensee are: financial and technological resources; "fit" within the company business plans; previous experience, and marketing capabilities. Desire of the licensee to commercialize the technology and the relationship of the inventor to the licensee are also important. Commercialization of technology is not dependent only on intellectual property rights such as patents, but also on the ideas and know-how of the inventor. Therefore, the ability of the inventor to relate to the licensee is often a key factor in a license transaction.

When an entrepreneurial inventor is involved, the licensee may be a early stage company formed around the technology. These entrepreneurial ventures may bring with them a myriad of potential conflict of interest issues which must be resolved before a license is consummated. Nevertheless, they often are the most desirable because they have several of the key licensing components: desire by the licensee to make the product/technology a success, and involvement by the inventor in assuring success. One other factor in licensing to early stage companies is that these companies make that technology their business, whereas in established companies the technology must compete for resources with other development projects.

In certain programs, federal agencies require applicants to present a technology transfer plan as part of their funding proposal. In these cases, universities seek potential licensees while the research is in progress. Gaining company participation at that early stage increases the likelihood that the company will grasp the commercial potential of the research and will help move inventions to the marketplace.

Universities increasingly try to foster ties with industry. This can be a win-win situation: industry extends the scope of its R&D, and university investigators extend their limited research dollars and gain access to the expertise of industrial scientists. Bringing industry interests into university projects also contributes to placement of university graduates in industrial settings where their education and training is effectively used. (top)

Why are universities a vital link in the chain from creation of knowledge to development of products?

The valuable results of research which provide advances in technology are usually the result of the curiosity of a researcher who is asking "Why is this so?" or "Where could that lead?" What makes universities unique is the fact that they provide a rich diversity bringing together multiple disciplines, with a broader focus than product-specific industries. Most importantly, universities train and nurture the next generation of scientists and engineers which will carry with them to industry the ability to link creative knowledge with product development. The university provides the environment - library, laboratory, resources, equally curious colleagues and students - to nurture the pursuit of knowledge.

However, this knowledge often needs further work even to begin to determine its usefulness as a contribution to a product or service. Industry is reluctant to support research which is not directed toward immediate financial return. The university provides a proving ground on which to take next steps toward commercialization.

The majority of university research is sponsored by government agencies and is not targeted to specific commercial markets or end products -- it is, by definition, basic research. However, since it is the nature of research to identify and test new ideas, its results often lead to the expansion of scientific knowledge as well as to the development of new technologies and products which benefit the public. (top)

Why is it important to encourage university inventors to participate in the patenting process and how are they motivated?

Universities make a considerable investment each time they decide to patent an invention. Their resources include the faculty inventor's time and energy, and the outlay of dollars required by the patent application process. Commitment and support from the faculty is essential for successful technology transfer activities by their institution. Beyond the actual patenting stage, however, the path from an invention to final product or service in the marketplace is usually long and expensive. During this stage, the scientific knowledge of the inventor needs to feed into the process, to assure smooth and continued progress.

In addition to royalty income, faculty recognition by peers is important. In some schools the preparation of material to obtain a patent and the successful completion is given weight in the tenure and promotion process. This investment in time and money will not be made without incentives. In fact, the Bayh-Dole Act deliberately grants those incentives, to the inventor and the universities. Beyond the gratification of bringing technology to public use, the institution needs to recover its investment. The inventor hopes to generate research funding in the short term and possibly receive license fees to use for future research support. It is important to recognize that without such incentives, many inventions may not get carried through the necessary steps and a commercial opportunity will be wasted. This wasting of ideas is a drain on the economy, irrespective of whether it was public or private funding which led to the initial invention.

Many faculty researchers were not exposed to the idea of intellectual property, patents, copyrights, trademarks, etc., during their early academic careers. They may have misconceptions and apprehension about the patenting process. One common misconception is that the public benefits only when research is rapidly published and provided equally to all interested parties. Another is that patents should be obtained only by industrial researchers.

Many universities provide outreach programs to potential university inventors to dispel these misconceptions and to allow inventors and their laboratories to benefit from their ideas. Encouraging faculty to participate in the process of patenting may increase their understanding of the benefits of protecting the valuable technology. Involving inventors in the process of marketing the technology is helpful in broadening their outside interests. In this manner, the inventor gains an insight into new potential sources of research funding as well as the benefits of commercialization.

Not all faculty will agree that their involvement in commercialization activities is appropriate. Some contend that commercialization taints the university and detracts from its mission. They believe that technology transfer should be accomplished through more traditional methods, such as the education and training of students and the broadest dissemination of knowledge through publications.

Change is inevitable and change will be affected by success of the commercialization efforts. Yet, participation in such activities should always remain an option, and should remain consistent and focused on the mission of academia. (top)

WHAT WE DO


our MISSION... To promote innovation, enhance research by connecting inventors and industry, and foster economic development through protecting and commercializing intellectual property.

our VISION... To create a new and unique model for university technology transfer by analyzing our intellectual property potential in the marketplace, partnering with corporations, and assessing entrepreneurial management teams, start-up companies will be given a stronger opportunity for success.

we SERVE...Faculty, staff, and students producing innovative ideas and intellectual property with commercial potential and Corporations seeking to work collaboratively on JMU research projects to develop their products and business.