Intellectual Property FAQ's
What is intellectual property?
How is intellectual property protected?
Who owns the intellectual property created at Cleveland State University?
What is the Bayh-Dole Act?
When should intellectual property be disclosed to the University?
What happens if my invention is publicly exposed?
What constitutes public disclosure?
What if a collaborator from another institution has contributed to my invention?
Who is an inventor?
What can be disclosed to the public or to a company before a patent application is filed?
What is a patent?
Does Filing a Patent in the U.S. Provide International Protection?
How Can I Obtain Patent Protection Outside the U.S.?
What is patentable?
What is prior art?
What is a barring event?
What is a provisional patent application?
What is a copyright?
How do you file for copyright protection?
Is Software valuable?
What is a Trademark?
What is a confidentiality agreement?
Who can sign a confidentiality agreement?
What is a Material Transfer Agreement?
Who can sign MTAs?
How are licensees found for new technologies?
How does the University's revenue sharing policy compare with other universities?
How much inventor involvement is there in the licensing of technology?
How long does it take to execute a license agreement?
What is technology transfer? top
Technology transfer is a term used to describe a formal transfer of rights to use and commercialize new discoveries and innovations resulting from scientific research to another party. Universities typically transfer technology through protecting (using patents and copyrights), then licensing new innovations. The major steps in this process include the disclosure of innovations, patenting the innovation concurrent with publication of scientific research and licensing the rights to innovations to industry for commercial development.
What are the benefits of university technology transfer efforts? top
There are several benefits associated with a successful technology transfer that researchers can expect. Developing university based innovations into commercial products and services creates jobs, increases government tax revenues, and provides additional revenue to the inventor and university through patent licensing fees.
Even if the innovation does not result in a successful product, adding a patent application to a resume may prove beneficial to the inventors’ career, particularly if his/her career is just starting. Moreover, it contributes to the spawning of new businesses, creating new industries and opening new markets. From new cancer treatments to faster modems, from environmentally friendly metal processing to beautiful flowering plants, technology transfer from academic institutions serves as recognition of the researcher’s contribution to the global innovation process and is a chance for researchers to touch the lives of many people all over the world.
Intellectual Property FAQ's
What is intellectual property? top
The term "intellectual property" generally relates to four distinct kinds of legal protection: patents, trademarks, copyrights, and trade secrets. Each kind of intellectual property is governed by its own body of federal and/or state law. The kinds of things that are protected by intellectual property law include scientific and engineering inventions (including new methods and apparatus), distinctive marks for identifying products or services, computer software, "know-how," and forms of expression that are affixed in tangible form (i.e., books, movies, artistic works of art, etc.).
How is intellectual property protected? top
Protecting intellectual property is crucial because it is easy for anyone to claim the idea as their own and in the absence of adequate protection, your idea can end up being used by others for significant financial advantage.
Generally, intellectual property is protected by federal patent law, federal copyright law, federal trademark law, state trademark law, and state laws regarding trade secrets.
Patents, copyrights, and trademarks last for decades, but they do eventually expire and require maintenance or renewal fees to maintain your legal rights.
Who owns the intellectual property created at Cleveland State University? top
If the intellectual property was developed by an employee of Cleveland State University the intellectual property is owned by Cleveland State University. Each inventor is obligated to assign his or her rights in the intellectual property to the University.
As stated in the Ohio Revised Code Section 3345.14, all rights to and interests in discoveries, inventions, or patents which result from research or investigation conducted in any university, or by employees of any university acting within the scope of their employment or with funding, equipment, or infrastructure provided by or through any state university, shall be the sole property of that university.
What is the Bayh-Dole Act? top
The Bayh-Dole Act of 1980 allows universities to have ownership rights to discoveries from federally funded research, provided certain obligations are met.
The Bayh-Dole Act, created a uniform patent policy among the US federal agencies that fund research in the non-profit and small business sectors. Prior to the Act, ownership of federal funded research remained with the federal government. The Act enabled small businesses and nonprofit organizations, including universities, to retain ownership of their intellectual property, despite being federally funded, and encouraged universities to participate in technology transfer activities.
When should intellectual property be disclosed to the University? top
Intellectual property should be disclosed to the TTO as early in the development process as feasible. At a minimum, disclosure to the TTO should occur after a proof of principle of the invention is obtained but before any public disclosure (oral or written) of the technology. In this way, an informed evaluation can be completed for the potential invention and an appropriate protection and marketing strategy developed. This is especially important considering that as of March 16, 2013, U.S. patent law now provides that those individuals who are the "first to file" a patent application are entitled to patent protection whereas the previous law provided for patent protection to those who were the first to invent the discovery.
What happens if my invention is publicly exposed? top
Under the American Invents Act (AIA), any evidence showing that an invention was in public use, on sale, or otherwise available to the public can be used as prior art, even if that evidence relates to events that took place outside the U.S. The AIA also abolishes the 1-year statutory bar under 35 U.S.C 102(b), making prior disclosure of an invention, with few exceptions, eligible as prior art.
What constitutes public disclosure? top
There are some gray areas to this question, but public disclosure includes journal publications, website publications, and presentations at conferences. More generally, a public disclosure occurs when the intellectual property is made publicly available and accessible to "those of ordinary skill in the art to which the invention relates".
What if a collaborator from another institution has contributed to my invention? top
Cleveland State University has inter-institutional agreements with many universities, research institutions and other organizations, and may negotiate such an agreement with your collaborator or institution. This type of agreement determines which institution would take the lead in the patenting and licensing of the invention, as well as how any royalty income would be shared. Each inventor should separately disclose the invention to his or her home institution.
Who is an inventor? top
Inventorship is specifically defined under US patent law. An inventor is a person who makes an original, significant intellectual contribution leading to the conception of the invention. This concept is significantly different from authorship on an academic publication.
What can be disclosed to the public or to a company before a patent application is filed? top
In the absence of a signed and valid confidentiality agreement or a filed patent application, it is not a good idea to make any kind of public disclosure of your potential invention if you believe that the disclosure contains any patentable aspects. What constitutes a public disclosure depends greatly upon the circumstances under which the information is being disclosed and the nature of the disclosure. Accordingly, it is strongly advisable for you to discuss a pending disclosure (including a publication submission, a presentation of a poster, paper or abstract at a meeting, or meeting with a company) prior to the disclosure with the TTO.
What is a patent? top
A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office (USPTO). Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States.
The right conferred by the patent grant is, "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States. Once a patent is issued, the patentee must enforce the patent without the aid of the USPTO.
There are three types of patents:
- Utility Patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
- Design Patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture, and
- Plant Patents may be granted to anyone who invents or discovers a distinct and new variety of an asexually reproducing plant in an uncultivated state.
Does Filing a Patent in the U.S. Provide International Protection? top
No, patents may be enforced only in the jurisdiction that has granted them. So, for example, a U.S. patent only provides protection within the United States.
How Can I Obtain Patent Protection Outside the U.S.? top
The Patent Cooperation Treaty (PCT) is an international agreement for filing patent applications having effect in up to 117 countries. Under the PCT, an inventor can file a single international patent application in one language with one patent office in order to simultaneously seek protection for an invention in up to 117 countries throughout the world.
Although the PCT system does not provide for the grant of an international patent, the system:
- simplifies the process of filing patent applications
- delays the expenses associated with applying for patent protection in other countries
- and allows the inventor more time to assess the commercial viability of his/her invention
What is patentable? top
For the standard type of patent, called a utility patent, an invention must be either an apparatus, a composition of matter, a process, or an article of manufacture (i.e. an artificial, man-made thing rather than an unprocessed, natural object or material). An improved version of previous technology may also be patentable, as well as a new use for an existing technology. To be patentable, the invention or discovery must possess:
- Utility: The patent statute specifies that an invention must be useful, i.e., it has a real-world application.
- Novelty: The patent must be new, i.e., the exact same thing must not have existed or been done before.
- Non-Obviousness: Even if novel, the invention must also be different enough from past technology that the average worker in the field would not have come up with the new invention from what was already known. If the invention does not meet this test, it may be rejected as obvious.
There are other legal requirements for patentability that relate to the kind and amount of description, language and supporting data that must be present in the patent application itself. If you have questions about these other requirements, please contact the TTO.
What is prior art? top
Prior art is a term used in U.S. patent law and is defined as any prior disclosure, either by publication, patent, or event prior to invention that may be considered by the Patent Office in evaluating patentability of the invention. If a patent application is filed in the U.S., anything that has been published, used in public, offered for sale or sold by anyone before the inventor(s) made the invention, or more than one year before the application is filed, becomes a part of the prior art for that application.
What is a barring event? top
As of March 16, 2013, any publication, use, public disclosure, offer for sale or sale of an invention anywhere in the world prior to the effective filing date of the patent application is known as a barring event.
What is a provisional patent application? top
A provisional patent application is an application that can be filed with the U.S. 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 only remain effective for one year. At the end of the one year period, the TTO must elect to either drop the filing and allow the information to become public or convert the provisional application to a regular non-provisional patent application. During the provisional one year period, the intellectual property can be publicly disclosed, marketed, and the term "patent pending" can and should be used to put the public on notice.
What is a copyright? top
Copyright is a form of protection provided to the authors of "original works of authorship" including, literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The Act applies to original works of authorship, fixed in any tangible medium of expression. The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the Library of Congress.
An owner has the exclusive right to authorize others to reproduce the work; create derivative works; distribute copies of the work; perform the copyrighted work publicly, display the work publicly, and if it is a sound recording, perform the work publicly. Software may be copyrighted, but may also, in certain circumstances, be protected by a patent. As a general rule, for works created after January 1 , 1978, copyright protection lasts for the life of the author plus an additional 70 years.
How do you file for copyright protection? top
Copyright 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 copyrights, such as the right to seek damages for copyright infringement.
Is software valuable? top
Yes, like any invention, software is an asset that has value to the University and to its author(s). Often even the simplest software function has commercial value simply because of the time invested in writing the code, not to mention the expertise needed to develop the function.
What is a Trademark? top
A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.
Trademarks, which can be used in state, interstate, or foreign commerce may be registered with the State or with the United States Patent and Trademark Office.
What is a confidentiality agreement? top
A confidentiality agreement is an agreement whereby one party agrees to hold the proprietary, technical and/or business information of the other party in confidence. Confidentiality Agreements (CDAs) or Non-disclosure Agreements (NDAs) are standard tools of the trade. They are enforceable contracts that allow for a more detailed and in depth discussion between the University and outside companies.
Who can sign a confidentiality agreement? top
The Vice President for Research is authorized to sign NDA’s on behalf of the University. Principal Investigators are not authorized to sign these agreements and can be held personally liable if they do. If a company wishes to obtain confidential information from Cleveland State, the investigator should contact the TTO.
What is a Material Transfer Agreement? top
A Material Transfer Agreement (MTA) is an agreement where one party agrees to provide another party with its materials. MTAs should always be considered when conducting any outside collaboration with industry or other academic institutions. MTAs are typically used to provide another party with its tangible research materials (i.e., biological materials, chemical compounds, software, etc.).
Who can sign MTAs? top
The Vice President for Research signs all MTA’s on behalf of Cleveland State University. Principal Investigators (PI’s) are not authorized to bind the University and should contact the TTO should they need to have an MTA reviewed and signed.
How are licensees found for new technologies? top
Licensees can be identified in many ways. First, the inventors often are aware of the commercial companies who would be interested in the technology. Industry-specific marketing efforts including trade show participation, affiliations and market research carried out by the TTO can also serve to identify potential licensees. Additionally, issued patents listed by the USPTO can provide names of companies who currently have patents similar in nature, and often times these can prove to be potential licensees as well.
How does the University's revenue sharing policy compare with other universities? top
Cleveland State University's royalty distribution scheme is very similar to most other universities and provides for a tiered structure based on specific royalty percentage tied to certain amount of profits made. The tiered structure is designed to provide clear guidance on what the inventor and the University can expect in return for the investment in the technology.
How much inventor involvement is there in the licensing of technology? top
The TTO strongly encourages the active participation of inventors. The more involved and interested the inventor(s) are in the licensing of a technology the higher the chances are that successful licenses will be secured. Generally, the inventor(s) are the best source of information on what companies would be interested in licensing the technology. Just as important, it is crucial for the inventor(s) to be an active member of discussions with potential licensees, since it is the inventor(s) who knows the technology best.
How long does it take to execute a license agreement? top
Every license is unique in that it brings together University intellectual property to solve a company's specific problem(s). Once the intellectual property is identified by the company, terms of a license need to be negotiated to a mutually acceptable answer. Execution can take as little as a few weeks to over a year, depending on the complexity and the response times of all involved.