You may have many questions about whether your scholarship or research has led to intellectual property that could be protected and licensed. We can help you answer the following questions:
FAQs
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 Innovation and Economic Development 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.
There are a number of reasons:
- 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 for ownership determination.
- The development and commercialization of your invention may provide significant public benefit and generate income for research and education.
- A licensee of your invention may wish to sponsor research in your laboratory.
- Inventors receive a portion of net income generated by their inventions.
“Public disclosure” is not limited to publications in books and technical journals. It is important for faculty to realize poster sessions, slides, lectures, seminars which are open to the public, letters and conversations may count as a bar to patentability.
Specifically:
- Any written or oral disclosure, even to one person, counts as a “public disclosure” in many countries – unless the recipient agrees that the information was conveyed in confidence. Disclosures to employees within your institution do not usually count.
- “Public disclosure” must be made in writing under U.S. law. This includes slides at meetings, poster sessions, private correspondence, advertisements, etc.
- Any "offer for sale" counts as a bar to patenting following the one year "grace period" in the U.S. Displaying your product at a trade show may count as such.
Inventions include discoveries and innovations in:
- Processes
- Products
- Tools or instruments
- Compositions of matter
- Living organisms
- Improvements to existing technology in the categories above
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.
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
- Marketing capabilities
The IP disclosure evaluation process may take a few weeks up to three months, depending on the nature and complexity of the invention and the industry. If the technology is patentable, the patent application and issuance process generally takes three years. Marketing and licensing efforts can run concurrently with the patent application process.
A license agreement is the agreement by which JMI and the potential licensee mutually agree on acceptable licensing terms regarding an invention. Inventions may be licensed based upon non-exclusive, exclusive, or limited-field licensing.
Why are universities a vital link in the chain from creation of knowledge to development of products?
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. 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.
