Frequently Asked Questions
What is intellectual property?
Intellectual property is intangible property such as ideas, expressions, formulas, or any other creation of the mind. Intellectual property, like tangible real or personal property, may be bought, sold, or leased. The major types of intellectual property include patents, copyrights, trademarks, and trade secrets.
What is a patent?
A patent is a right to exclude others from making, selling, or using the patented invention for a limited term (20 years after June 8, 1995). A patent is essentially a legally recognized monopoly that the government grants in exchange for a disclosure of how to make and use an invention There are three different types of patents: design patents, plant patents, and utility patents. Design patents protect non-functional, novel design for an article of manufacture. Plant patents protect new and distinct asexually reproducible plant varieties. Utility patents are the most common form of patent protection. Utility patents protect any new, useful process, machine, manufacture or composition of matter or any new or useful improvement thereof.
How is a patent obtained?
A patent is obtained by applying with the United States Patent and Trademark Office. The application is examined to determine whether the invention meets the requirements of usefulness, novelty and nonobviousness. The application must provide an enabling description of the invention so that one skilled in the relevant art could practice the invention. The "best mode" of practicing the invention must also be disclosed.
What is patentable?
U.S. patent law specifies that a patent can be obtained for any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof. To be patentable, inventions must satisfy three criteria: utility, novelty, and non-obviousness.
Utility requires that the invention have some beneficial use. If the invention is a machine, it must work. If the invention is a chemical, it must have a specific use. An invention has novelty if it is new. In other words, novelty is lost if the invention has been known or used by others in the U.S. or patented or published by others anywhere in the world before the date of the invention. A new use of an old invention can be novel.
Lastly, an invention must not be "obvious" to "one of ordinary skill in the art." Since these are subjective terms, there is frequent disagreement about the fulfillment of this requirement, particularly between the patent applicant (typically through a patent attorney) and the U.S. Patent and Trademark Office. This criterion must be assessed on a case-by-case basis and expert legal opinion is essential.
What is the difference between a patent and a copyright?
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 copyright protects the form of expression rather that the subject matter of the expression. A person could convey the same subject matter of the copyrighted work in a different form of expression without infringing the copyright. For example, copyrighted software protects the actual code, but a patented code would protect the function of the software, preventing others from developing their own similar code.
How much does it cost to obtain a patent?
A "ballpark" estimate of total cost to obtain a U.S. patent ranges from $10,000 to $20,000, and sometimes even higher. Costs to obtain foreign patents may be five to ten times higher, depending on the number of countries where applications are filed. Within the Texas Tech University System (TTUS), patenting costs are borne by the Office of Research, Commercialization & Federal Relations (RCFR).
Why patent an invention for the Texas Tech University System?
If intellectual property is handled properly, significant benefits are available to inventors and their research groups, the university, our national and local economies, and the public. This can be accomplished when each creator of intellectual property in the TTUS is aware of certain critical legal issues, procedures and policies.
Patents are an effective means of deriving economic value from research advancements and for enhancing support of research activity.
A number of System inventors and their research programs currently benefit financially from their patented and licensed technologies. Patents are often the best means of developing and disseminating a technology for the widest good. Unless a patent exists it is unlikely that industry will make investments in the process of developing and commercializing a product. Without patent protection many inventions will simply "sit on the shelf" benefiting no one. This is particularly true in technology areas that are highly regulated by governmental agencies such as the Food and Drug Administration (FDA), Environmental Protection Agency (EPA) and the United States Department of Agriculture (USDA), because market entry costs are high.
Experience over the last several years indicates that patents are typically essential as a basis for starting companies based on university inventions and discoveries. These companies create jobs as well as financial return to inventors and their research institutions. The process of obtaining a patent, marketing that patent and licensing it to industry provides a highly effective means of developing meaningful interaction between the System and industry, including the enhancement of research support opportunities and improved employment opportunities for graduate students.
The benefits of patenting inventions are so widely held that the Federal Government and most industrial sponsors of research now, in most cases, require that patents on inventions made with their funding be pursued whenever feasible. Where governmental or industrial funding is involved, there are usually reporting and patenting requirements that must be met. Failure to do so may jeopardize future funding, not just for the inventor, but for the entire System.
Universities have legal, policy and contractual requirements to pursue patent protection for inventions conceived using federal and corporate funds. The issues of national competitiveness and economic growth are more pragmatic reasons for pursuing patent protection. For inventors, there may be a financial reward to them personally and their research program if their invention achieves market success. Frequently, patents are licensed to a company in return for research support so the inventor can benefit even if the patents themselves ultimately do not lead to a commercial product. Finally, patents are perhaps the best means of managing the conflicts that are inherent in academic/industrial collaboration. They permit mitigation of the inventor's potential conflict of interest and help minimize TTUS's and the inventor's liability exposure. Patents are an ideal means of constructing effective collaboration with industry and allow ORCFR to ensure that industry will pursue development of TTUS's technology.
How are inventors rewarded?
Where TTUS has an ownership interest in the intellectual property pursuant to this policy, the following provisions will govern the distribution of royalties and other income after TTUS has recouped all direct costs associated with the processing of the patent or copyright application and marketing and licensing the technology:
Net royalties are to be paid according to the above schedule as the net royalties are earned; that is, the individual will receive 50 percent of the first $100,000, and 30 percent of all net royalties over $100,000. Funds received by the department and college will be placed in unrestricted accounts under their control. Such funds will not be used to substitute for funds budgeted for expenditure in the routine annual operating budget that is approved by the Board of Regents. The TTUS Intellectual Property provisions are located in the TTU Operating Policy - (Newly adopted policy will be posted soon.)
|$100,001- $500,000||$50,000 plus 40% of amount over $100,000||30%||15%||15%|
|$500,000 -up||$210,000 plus $30% of amount over $500,000||30%||Assessed by Board of Regents|
What is the first step in starting the patenting process?
Submitting a disclosure of your invention to RCFR is the first formal step in obtaining proper intellectual property protection within the TTU System. Inventors are strongly encouraged to submit invention disclosures early in their invention development process to avoid any potential problems. Inventions conceived or first reduced to practice by faculty or staff in furtherance of university research should be promptly disclosed in writing to RCFR.
Priority in the United States is given to the first to invent. As a result, it is important to document the relevant dates of the invention. In the event of a dispute between inventors, documentary evidence will help establish the first to invent. Thus, invention disclosures and well-maintained laboratory notebooks should be utilized. In most foreign countries, the first to file for patent protection gets priority, and the invention disclosure is usually the first step in this process within the TTUS.
How do publications affect patentability?
Inventors must be aware of certain statutory bars to patenting that are activated by publishing a description of the invention. 35 U.S.C. 102(b) describes bars to patentability. Publication can occur in a variety of forms: an article, thesis, electronic message, brochure, or powerpoint presentation at a conference can all constitute publications. Once a publication occurs, U.S. patent protection is barred if a patent application is not filed upon the expiration of one year following publication. For foreign patents, publication may constitute an automatic bar to patentability.
System policy strongly discourages and in certain circumstances prohibits agreements that withhold or unduly delay publication of research results. However, RCFR and the inventor, if he or she chooses, can cooperate through appropriate timing of disclosure, patent filing and publication to preserve commercial value and still meet any sponsor obligations without hindering dissemination of research results.
How is my technology commercialized?
A primary goal of RCFR's licensing activity is to assure that System technology will be brought to the marketplace to benefit the public. Thus, all RCFR licensees are required to diligently develop System's technology. System technology cannot be placed "on the shelf." RCFR grants two types of licenses, exclusive and non-exclusive. Exclusive licenses typically require an up-front, non-refundable license fee, running royalties (typically based on a percentage of sales) and minimum annual royalty payments. Terms of the license are negotiated by RCFR and the licensee and include a variety of factors. Non-exclusive licenses allow for licensing to multiple parties and can be less demanding on the licensee.
Commercialization may also occur in the form of entrepreneurship. A company formed in order to commercialize TTUS technology usually means the inventor or a third party secures permission in the form of a license to use the technology. A company is developed with the help of the TTUS, economic development organizations, and venture capital.
What happens when someone infringes my patent?
Using the invention described in a claim of a valid patent without license or consent of the owner of the patent rights. If infringing activity is discovered, the TTUS, through the Attorney General's office, may sue for damages arising from infringing activity. The decision to sue is a business decision often evaluating the strength of the patent and the infringer's activities to determine the likelihood of winning and the value of any judgment.
How do sponsored research agreements affect intellectual property rights?
Sponsorship of research in the System almost always comes with some "strings attached" to any intellectual property that may result. Exceptions are gifts and unrestricted grants. Inventors should be aware of the intellectual property clauses of their research contracts and of the sources of their funding that produced the invention.
Any research contract between the System and a corporate sponsor has an intellectual property clause that stipulates the rights, if any, the sponsor will have in any resulting inventions. The rights licensed to a sponsor can range from none to rights so significant that it essentially precludes commercial use by anyone besides the sponsor. Inventors should consult with RCFR staff as well as the staff of the Office of Research Services to assess these situations on a case-by-case basis.
In the past, rights to some System inventions have been given, inadvertently, to several entities due to mixed funding of projects and overlapping intellectual property rights. This can lead to very expensive litigation, loss of research funding and the payment of substantial damages. It is essential that inventors describe the exact nature of the sponsorship of their inventions to RCFR at the time of filing the invention disclosure. Funds from several sources with conflicting or overlapping objectives or "deliverables" (definable, tangible research results, i.e., intellectual property, data, specimens, etc.) should not be commingled.