As a designer turned researcher, I am always tempted to create original art, games, toys or children’s books as tools that facilitate learning and support research. While I haven’t created anything ‘revolutionary’ or ‘disruptive’ – I wondered about who owns the Intellectual Property of anything we create, and if it’s negotiable or transferable.
The obvious answer in our case is – PSU owns it by default. It’s inbuilt in our contracts as GAs.
However, the Penn State Research Department offers services to evaluate any invention or original work, and provide a strategy to best protect the invention (patent or copyright).
My assumption says if it’s not worth billions, it won’t be a hard fight over IPs and Royalties etc. and ownership can be transferred to the creator – especially if it were an individual/independent project not involving a team with multiple stakeholders. For group research projects in collaboration with multiple student/faculty, the University clearly owns the IP.
Goals of IP management process
- transfer technologies from the University to companies with the interest, ability and resources to commercialize them such that the public can benefit from Penn State inventions
- capture a fair portion of the value of the invention for the benefit of the inventors, the College in which the invention was developed and the University
IP process in a nutshell
- Submit an invention disclosure to the Penn State Office of Technology Management (OTM)
- Receive a two-part invention disclosure number – first part is the year in which the invention is disclosed, second part of the is a sequential number of all invention disclosures.
- Get assigned a Technology Licensing Officer (TLO) to manage the invention -as the principal point of contact between the disclosers and the OTM.
- Persons submitting an invention disclosure are called disclosers until inventorship is officially determined by a patent attorney.
TLO Review process
- Clearly identify the invention
- What is the state of development/reduction to practice of the invention? Is further development necessary? If yes, are the resources (personnel, funding, facilities and equipment) available?
- Is the invention marketable?
- What is a rough estimate of the size of the market?
- Is the invention patentable? Is the invention new, non-obvious and useful? Is there prior art? Is the invention an improvement of an existing invention?
- If the invention is patentable, is the patent enforceable? Will it be difficult to determine if others are infringing the patent?
- Have there been any enabling public disclosures (publications, presentations, thesis/thesis defense or non-confidential discussions outside the University) of the invention? If yes, when. If no, are there plans to publicly disclose the invention? Any enabling public disclosure has an immediate and irreversible effect on patenting.
Protection Strategy
After review and assessment of invention, TLO will formulate an appropriate strategy to protect the invention, (patent/ copyright protection). A typical patent protection strategy is outlined below.
- File a provisional patent application either:
- 1) immediately prior to the first enabling public disclosure or
- 2) immediately if there is concern about competing technologies under development.
- When to file a Provisional patent?
- provisional patent application provides one year of protection in both the U.S. and internationally. This allows time for additional research, development, sample preparation, prototype development and assessment of the invention.
- How to decide whether or not to convert the provisional patent application to a “full” U.S. patent application and/or a Patent Cooperation Treaty (PCT) patent application?
- typical U.S. patent costs $20,000 or more
- International patent protection is highly dependent upon the countries involved, but typically begins at $50,000.
- If the invention is licensed (or optioned) to a company prior to or during the one year of protection provided by the provisional patent application, then the provisional will be converted to a “full” U.S. patent application and/or Patent Cooperation Treaty (PCT) patent application and the licensee (optionee) typically pays all patent expenses.
- If the decision is made not to convert the provisional patent application, then:
- the provisional is abandoned and no further action is required
- depending upon the date of enabling public disclosures of the invention (if any), another provisional patent application could be filed
- the inventors could petition the University to release the invention to them. The inventors should discuss the above options with their TLO.
- If the decision is made to convert the provisional patent application to a “full” U.S. patent application and/or PCT patent application
- inventors must cooperate fully and be available to offer their input to the patent attorney preparing the patent application
- inventors’ insights and inputs in response to patent office inquiries and office actions will be required throughout the patent prosecution process.
- When appropriate TLO may recommend a marketing strategy including any combination of the following:
- Pursuing leads and contacts developed by inventors. 75% of university license agreements result from contacts provided by the inventors.
- Focused/directed informational mailings.
- Posting inventions available for licensing on OTM and commercial websites.
- Leads developed from databases and the Internet.
- Publicity from publications, presentations at conferences and newspaper and trade journal articles.
After a company or companies with interest in the invention are identified
Discussions begin and it is likely that a series of agreements will be negotiated and executed :
- Confidential Disclosure Agreements allow the parties to share proprietary information under confidentiality.
- Material Transfer Agreements allow one party to share materials, samples or prototypes with another party for evaluation purposes and to determine if there is interest in licensing. This sharing of materials occurs while maintaining control of the invention, ownership and rights.
- In an Option Agreement the owner of an invention grants certain limited rights to another party for a defined period of time for the purpose of evaluating and/or further developing the invention.
- License Agreements transfer well-defined rights from one party to another party for the purpose of commercializing an invention in return for some form of compensation, usually financial benefit.
- Key elements of License Agreements include:
- Identification of rights being licensed.
- Definition of the Field of Use.
- Type of license – exclusive, non-exclusive or semi-exclusive.
- Fees – up-front fee, milestone payments.
- Royalties – running royalty, minimum annual royalty.
- Equity.
- Due diligence – licensee’s obligations to make progress toward commercialization of the invention.
- Reimbursement of all patent expenses associated with the invention.
- After the execution of license agreements
- OTM continues to communicate with licensees.
- To follow up on the payment of fees, royalties and equity.
- To monitor due diligence requirements.
- To seek licensee’s input regarding patenting decisions and payment of patent expenses.
- OTM continues to communicate with licensees.
- Other pointers
- Checking with team/adviser before considering IP management
- Avoid conflict of interest
Questions for GA Group
- Share your experiences designing original work, how the IPs were handled
- In an online learning environment, where students may not be using University resources, or may be part-time students – who owns the IPs to their inventions?
- Do we need to provide IP policies upfront for design-based courses? Eg. Product Design, Engineering, Art/Illustration courses etc which involve production or original artefacts that may be worth marketing to a larger community?
- Does work done over summer without classes or GAship and using personal equipment also subject to IP of the University?
- Other thoughts?
Source : https://www.research.psu.edu/otm