FAQs
- What is technology transfer?
- What is intellectual property?
- How is intellectual property protected?
- Who owns the intellectual property created at
UNCW?
- When should intellectual property be disclosed
to the University?
- Why should intellectual property be disclosed
prior to public disclosure?
- Who is an inventor?
- How should an invention be disclosed?
- What is a patent?
- What is patentable?
- What is prior art?
- What is a provisional patent application?
- Who pays for the patent application?
- What can be disclosed to the public or to a
company before a patent application is filed?
- What is a license?
- How does the public benefit from university-industry
partnerships?
- How do universities use the royalties earned
from licensing?
- Who conducts license negotiations?
- What is a copyright?
- How do you file for copyright protection?
- Is software valuable?
- Should I file an invention disclosure if I have
created software?
- What is a Material Transfer Agreement?
- What is the Bayh-Dole Act?
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1.
What is technology transfer?
Technology transfer is a term
used to describe a formal transferring of new discoveries and innovations
resulting from scientific research conducted at universities to the commercial
sector. One way that universities transfer technology is through patenting
and licensing new innovations. The major steps in this process include:
1) the disclosure of innovations; 2) patenting the innovation concurrent
with publication of scientific research; and 3) licensing the rights to
innovations to industry for commercial development.
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2.
What is intellectual property?
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 institutions, computer software, "know-how," and
forms of expression that are affixed in tangible form (i.e., books, movies,
artistic works of art).
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3.
How is intellectual property protected?
Generally, by federal patent law, federal copyright law, federal
trademark law, state trademark law, state laws regarding trade secrets
and other laws related to businesses and contracts.
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4.
Who owns the intellectual property created at UNCW?
If the intellectual property was developed by an employee of
UNCW or invented at UNCW facilities under the supervision of UNCW personnel,
the intellectual property is owned by UNCW. Each inventor must assign
his or her rights in the intellectual property to UNCW. This includes
all faculty, staff, fellows, and graduate students who have an appointment
at UNCW.
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5.
When should intellectual property be disclosed to the University?
Intellectual property should be disclosed to the Office of Technology
Transfer early in the development process. Disclosure to the OTT should
be made before any public disclosure (oral or written) of the information
is made. In this way, an informed evaluation can be completed for the
potential invention and an appropriate protection and marketing strategy
developed.
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6.
Why should intellectual property be disclosed prior to public disclosure?
After you publish, present or otherwise publicly disclose your
invention, you have one year from the first disclosure date to file a
U.S. patent. After this anniversary has passed, you may lose all US patent
rights. No grace period exists for foreign patent applications. With very
few exceptions, all foreign patent rights will be irrevocably lost
once your invention is publicly disclosed.
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7.
Who is an inventor?
Inventorship is specifically defined under US 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.
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8.
How should an invention be disclosed?
Inventions are disclosed by submitting an invention disclosure
form (that can be found on the forms
page) to the OTT.
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9.
What is a patent?
A patent is a legal monopoly that prevents others from making,
using, or selling an invention covered by the patent. Patents are granted
by governments. Generally, patents may be enforced only in the jurisdiction
that has granted them.
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10.
What is patentable?
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 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. Remember that the average worker in many scientific fields may
be a Ph.D. researcher. In order to meet this requirement, inventors need
to be aware of issues related to prior art, barring events, and bar dates.
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 someone in OTT.
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11.
What is prior art?
Prior art is any relevant 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
US, 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.
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12.
What is a provisional patent application?
The provisional patent application is an application that can
be filed with the US 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 remain pending for one year. At
the end of the period, UNCW must elect to either drop the filing and allow
the information to become public, or convert the provisional application
to a regular patent application. In the case UNCW, the OTT will work with
the inventors to make this decision on behalf of UNCW.
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13.
Who pays for the patent application?
UNCW pays for all costs associated with the preparation, prosecution,
and maintenance of the patent. UNCW seeks reimbursement of patent costs
through licensing.
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14.
What can be disclosed to the public or to a company before a patent application
is filed?
In the absence of a signed and valid confidentiality agreement
(see below) or a filed patent application, it is generally 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 someone in OTT.
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15.
What is a license?
Generally speaking, a license is a legally binding written document
in which one party, having definable rights in a property, transfers or
grants all or some part of those rights to another entity for some type
of consideration.
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16.
How does the public benefit from university-industry partnerships?
University-industry partnerships
are helping to move new discoveries from the laboratory to the marketplace
faster and more efficiently than ever before-ensuring that products and
services reach the public more quickly and often. The partnership enables
a researcher-who made the initial discovery-to participate in the further
development of a product or process, which in turn, significantly reduces
the time to eventual commercialization.
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17.
How do universities use the royalties earned from licensing?
Royalties earned by academic
institutions are used to help advance scientific research and education
through reinvestment in the academic enterprise. The royalties are given,
in part, to university research departments to provide, among other things,
new opportunities for graduate students, buy research equipment, or fund
new research. They also are used to help sustain the technology transfer
process by paying for a portion of the legal fees associated with patenting
and licensing as well as technology management staff. And finally, as
the Bayh Dole Act requires, a portion of the revenues is shared with the
university inventor.
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18.
Who conducts license negotiations?
License negotiations are handled by the staff of the OTT.
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19.
What is a copyright?
A copyright is the grant of protection by the laws of the United
States to the authors of 'original works' including literary, dramatic,
musical, artistic, architectural and certain other intellectual works,
and is available for both published and unpublished works. 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.
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20.
How do you file for copyright protection?
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. For further information on copyright, please visit the Administrative
Regulation on Copyright Use and Ownership
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21.
Is Software valuable?
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.
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22.
Should I file an invention disclosure if I have created software?
Software should be disclosed to the Office of Technology Transfer
early in the development process. Disclosure to the OTT should be made
before any public disclosure (oral or written) of the information is made.
In this way, an informed evaluation can be completed for the potential
invention and an appropriate protection and marketing strategy developed.
To obtain a software disclosure form, please visit the Forms
page on the OTT website.
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23.
What is a Material Transfer Agreement?
A Material Transfer Agreement (MTA) is an agreement whereas one
party agrees to provide another party with there materials. MTAs should
always be considered when conducting any outside collaborations with industry
or other academic institutions. MTAs are typically used to protect materials
that may be proprietary and/or embody a trade secret.
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24.
What is the Bayh-Dole Act?
The Bayh-Dole Act, passed by Congress in 1980, created a uniform
patent policy among the US federal agencies that fund research in the
non-profit and small business sectors. The Act provides recipients of
federal research funds with the right to retain ownership of their patents
with the underlying tenet that federally funded inventions should be licensed
for commercial development in the public interest. This principle is reflected
in virtually all university policies whether or not the invention is federally
funded.
25. Where do I go for help with
trademarks, patents, licensing, and copyrights?
The Office of Technology Transfer has been designated as the department
to assist and process all University Intellectual Property requests. This
includes patenting of University technology, copyrighting of material
related to University inventions, and trademarks related to University
services and/or inventions.
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