WHAT IS INTELLECTUAL PROPERTY?
Intellectual property is any invention, discovery, trade secret, technology, scientific or technological development, computer software, or other form of expression that is in a tangible form. Intellectual property can be protected by patent, trademark or copyright laws, or it can be protected by not disclosing the "know how" to others. Most of the information in this handbook will deal with inventions and their protection through the process of patenting.
WHAT IS A PATENT?
A patent is a property right granted by the United States and/or a foreign country that gives the holder the exclusive right to exclude others from manufacturing, using, selling or offering to sell the invention in the United States for a period of 20 years from the date of filing the patent application. As property, it may be sold or assigned, pledged, mortgaged, licensed, willed, or donated, and be the subject of contracts and other agreements. When an inventor is issued a patent, he/she has the opportunity to profit by the manufacture, sale and/or use of the invention in a protected market or by charging others for making, selling or using it.
WHAT IS A COPYRIGHT?
A copyright is a grant by the United States of exclusive rights over the writings of an author, and includes software. Copyright protects only the expression, not the idea. If the author of the material wants the right to legally protect their material, claims for copyright must be registered in the U.S. Copyright Office. Software copyright protection at UTHSC-Houston requires submission of an invention disclosure form and subsequent review by the Intellectual Property Committee. To obtain copyright registration for materials in a tangible form, contact the Office of Technology Management. An extensive amount of information regarding copyright, including fair use, may be found at:
http://www.utsystem.edu/OGC/IntellectualProperty/cprtindx.htm
WHAT IS A TRADEMARK?
A trademark differs from both patents and copyrights. It is a word, name or symbol adopted or used by an individual or corporation to distinguish its goods or services from the goods or services of another. When a trademark is registered in the Texas Secretary of State's Office or the U.S. Patent and Trademark Office, the trademark owner obtains certain rights and benefits. Rights to a trademark are established by adoption and actual use, not by authorship as in copyrights, or by inventorship as in patents. For information on how to obtain a trademark, contact the Office of Technology Management. Additional information on trademarks may be found at:
WHAT IS PATENTABLE?
Patents are granted for inventions of new and useful processes, machines, manufactured products, compositions-of-matter, or any new and useful improvement to an existing invention. The scope of patentable classes of inventions includes “apparel” through “recombinant DNA technology” and has been expanded to include life forms resulting from genetic engineering. When a patent application claiming a life form is filed in the U.S. Patent and Trademark Office, it is necessary that a sample of the material be made available to third parties if the patent issues. Some things that cannot be patented in the U.S. include: theories, ideas, plans of action, results, and discoveries of laws of nature or scientific principles.
Under the United States standards of patentability, all patent applications are examined for novelty, utility and non-obviousness. With the assistance of a patent attorney, it is the inventor's responsibility to establish these elements to the satisfaction of the Patent and Trademark Office before the patent is allowed to issue.
“NOVELTY” means that the patent is new; i.e. it has not been previously publicly used, sold, offered for sale or described in printed form.
“UTILITY” means that the invention has a use and is not just a subject for additional research.
“NON-OBVIOUS” means that the invention must not be obvious, at the time of invention, to a person having ordinary skill in the art to which the invention pertains.
An inventor should study his/her invention in relation to other available ways of doing the task or other available technology and decide whether the invention contains advantages that are not only novel and non-obvious, but also has some utility, which makes it marketable.
WHO OWNS INTELLECTUAL PROPERTY?
Intellectual property that is related to an individual's employment responsibility, or has resulted either from activities performed by an individual while employed by The University of Texas, or supported by state funds, or while using The University of Texas facilities, belongs to The University of Texas (Part II, Chapter XII, Section 2., Rules and Regulations of the Board of Regents of The University of Texas System). The Rules and Regulations govern all UTHSC-Houston employees, including candidates for master's and doctoral degrees as well as pre-doctoral and postdoctoral fellows.
Intellectual property resulting from research supported by a grant or contract with a Federal agency, with a profit or nonprofit entity, or by a private gift or grant to The University of Texas belongs to The University of Texas (Section 5.3). The University of Texas Intellectual Property Policy requires assignment of the intellectual property by the employee to the Board of Regents or other appropriate entity. This provision is necessary since the assignment legally designates the owner of the intellectual property and without properly executed assignment, the title to the property will be in question.
An inventor is a person who, alone or in combination with others, conceives a complete and operative manner of performing a process or making a machine, manufacture, or composition of matter, or improvement. More simply, an inventor is a person who contributes to the conception or the mental development of the complete procedure by which the invention is achieved, to the degree that it may be reduced to practice by one skilled in the art.
Colleagues, students, technicians or machinists, even though they gather all of the essential data or construct a practical embodiment of an invention, are not inventors unless they make a conceptual inventive contribution. Such a contribution may be relatively minor and it is not necessary for someone to have conceived the main idea or even a major part of it to be a coinventor.
If a determination of inventorship cannot be made on the basis of records, legal advice should be sought. A patent attorney can make a legal determination of inventorship after a review of the facts and possibly personal interviews prior to filing the patent application.
Co-inventors share equally in the royalties from commercialization of their invention unless a written agreement to the contrary has been executed and provided to UTHSC-Houston.
IS RECORD KEEPING IMPORTANT?
U.S. patent practice places a premium on witnessed records when two or more parties claim the same invention. The date the idea occurred (the "conception") and the date it was put into practical form ("reduced to practice") are vital. Equally important in the "eyes" of the U.S. Patent and Trademark Office is the "diligence" shown by contending inventors. They must prove that they regularly pursued work on the invention, documenting their efforts on a day-by-day basis.
The importance of keeping detailed and accurate laboratory notebooks cannot be overemphasized. It is good practice to use bound notebooks for records, making entries on a daily basis. When an idea is conceived a record should promptly be made in the form of a sketch, drawing or written description.
Sign and date the entry at the time it is made and have it witnessed by someone who has read the material and is capable of understanding it, yet was not involved in its production.
As research is performed to develop the idea, record each step in the development of the invention in the same manner. Keep correspondence about the invention, sales slips of materials used while working on the invention, and any models or drawings.
PROCEDURES FOR PROTECTING INTELLECTUAL PROPERTY
Whenever intellectual property is created by an employee of The University of Texas it is a requirement that the employee disclose his/her intellectual property to the Intellectual Property Committee (IPC) of UTHSC-Houston (Section 5.21). The IPC, which operates in confidence, reviews the intellectual property in order to determine the University of Texas’ interest and rights in the creative effort. The scientific merit and commercial applicability are also considered in this review.
If the UTHSC-Houston IPC recommends that UTHSC-Houston pursue its interests in the intellectual property, appropriate steps are taken. If the IPC recommends that UTHSC-Houston not pursue its interests, and if that recommendation is approved by the UTHSC-Houston president, the Office of the Executive Vice Chancellor and the System Intellectual Property Office, then the intellectual property may be released to the inventor with or without certain stipulations.
DISCLOSURE OF INVENTIONS
Under world patent laws, the time an invention is reported to the institution and/or placed in the public domain, substantially affects the scope, quality, and strategy of world-wide patent protection. Publication of articles, abstracts, posters and/or oral presentation to industry or at a scientific meeting may result in loss of U.S. and foreign patent rights. The loss of foreign patent rights depends on the extent the information disclosed allows someone to reproduce the invention or discovery.
Disclosure of an invention or discovery by publication or presentation to the public or industry before submitting an invention disclosure to the institution is contrary to UT Intellectual Property Policy (Section 5.21). To minimize the possibility of barring patent applications in the U.S. and foreign countries, inventors are encouraged to consider the following guidelines for publication and/or presentation:
1. Avoid revealing details in writing or speaking that may allow a person to reproduce your results;
2. Avoid speculation of future discoveries in presentations and publications;
3. Publication or presentation of your discoveries in detail will cause you to forego patent protection in most foreign countries, but a U.S. patent application may still be filed within a year of such disclosure;
4. Ideally, a U.S. patent should be filed prior to any publication or public presentation.
SUBMISSION AND EVALUATION OF AN INVENTION DISCLOSURE
Report of an invention to the UTHSC-Houston should occur when an inventor believes he/she has a new discovery, creation, and/or invention (software is considered intellectual property). This is done by the submission of an "Invention Disclosure" to the IPC. The process is as follows:
1. Obtain an Invention Disclosure Form from:
The Office of Technology Management (OTM): 713.500.3369
or via the OTM website at:
http://www.uth.tmc.edu/otm/forms/invfrm.html
2. Complete and return the Invention Disclosure form to the Office of Technology Management for presentation at the next scheduled IPC meeting.
3. The IPC will evaluate the invention disclosure to determine UTHSC-Houston's interest in and rights to the invention.
4. The IPC will make a recommendation that may include the following:
(a) hold for more research data;
(b) request a preliminary patent search;
(c) pursue a research sponsor or licensee; or,
(d) release of some or all of the rights to the inventor.
5. An outside patent law firm conducts a patent search and prepares a patentability opinion that is sent to the inventor and the IPC.
6. Based on the results of the search and the patentability opinion, the IPC will recommend whether or not to file a patent application on behalf of UTHSC-Houston.
7. If the decision is made to file a patent application, it will be prepared by a patent attorney with the assistance of the inventor.
8. A decision NOT to file may result in the:
(a) hold of the invention disclosure, with UTHSC-Houston retaining rights; or
(b) return of some or all rights in the invention to the inventor.
A GENERALIZED FLOW CHART FOR AN INVENTION CONCEIVED AT UTHSC-HOUSTON
| Idea Conceived |
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Paperwork/Laboratory Notebook Pages are Dated, Signed, Witnessed or Notarized,
Including Collection of Receipts and Purchase Orders Showing Work in Progress |
|
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| Notes and Photographs Taken, Drawings Made |
|
|
UTHSC-Houston Invention Disclosure Form Completed
And Signed by Inventor(s), and Original is Sent to
The Office of Technology Management
|
|
|
Inventor Notified of Intellectual Property Committee (IPC) Meeting and
Encouraged to Attend Meeting to Make a
Short Presentation and Answer Questions
|
|
|
|
The IPC Makes a Recommendation to Protect the Technology
|
|
|
| Proceedings in the Patent and Trademark Office (PTO) |
Applications filed in the U.S. PTO are assigned to the examining group having charge of the areas of technology related to the invention.
An examination of the application consists of a study of the application for compliance with the legal requirements and a search through U.S. patents, prior foreign patents and available literature, to determine if the invention is novel.
A decision of patentability is reached by the U.S. PTO examiner based on the study and the results of the search. The applicant is notified in writing of the examiner's decision by an "Office Action" that is mailed to the attorney or agent.The reasons for any objection or requirement are stated in the Office Action, and it is not uncommon for some or all of the claims to be rejected in the first Office Action by the U.S. PTO examiner.
The applicant must then request reconsideration in writing and respond to every ground of objection or requirement within the required time for response. The response to the first Office Action will be considered and the applicant will be notified if claims are accepted or rejected.Other objections or requirements by the U.S. PTO examiner may be made in a second Office Action.
The second Office Action will usually be final. If there is a final rejection of all claims, the applicant's response is limited to a limited number of options that may include an appeal.If the application is found to be allowable, a notice of allowance will be sent, and the patent will issue soon thereafter.
CONFIDENTIALITY AND DISCLOSURE
All patent applications are maintained in strict confidence until the patent issues. This includes the patent application serial number and filing date. These and other dates may be important if any question arises as to who is the first inventor.This information should not be carelessly revealed. It is also vitally important not to discuss or disclose any information concerning intellectual property to industry or any outside party without first obtaining a Confidential Disclosure Agreement (CDA).
The CDA needs to be signed by the recipient of the confidential material and UTHSC-Houston before any information material is disclosed. The CDA may be obtained from the Office of Technology Management or at http://legal.hsc.uth.tmc.edu/cda.html. CDA's must be signed by an authorized UTHSC-Houston official.
After the patent issues, it is safe to reveal to others everything that is actually described or illustrated in the patent.These details are no longer secret, since they are published in the printed copies of the patent. Caution should be taken, however, in providing information that may be the subject of later inventions or improvements related to the patent.
INDUSTRY / FEDERAL FUNDING
If research is supported by an outside grant or contract (industry or federally sponsored research, clinical studies, etc.) and/or used materials received from industry or other institutions, the contractual agreement probably contains provisions for disclosure of both patentable and unpatentable inventions and discoveries.These provisions are often referenced under "Intellectual Property, Research Results, or Reporting Requirements."These provisions define the inventor’s patent obligations, and those of UTHSC-Houston, to the research sponsor.
It is important to read and understand the patent provisions of any research agreement.In the negotiation of these contracts any differences between the contract provisions and The University of Texas policy regarding intellectual property will have to be resolved by the Office of Legal Affairs or the Office of Technology Management.
U.S. law provides that UTHSC-Houston has the option to take title to inventions made under most federally funded research.If an invention was made under a government supported research agreement, the government typically grants title to UTHSC-Houston, while retaining a royalty free license for its use, as well as requiring a periodic progress report on UTHSC-Houston's commercialization efforts. Generally, UTHSC-Houston retains its rights to all patentable or unpatentable inventions in all grants and contracts in which research is funded.
ROYALTY / EQUITY: WHAT IS ROYALTY?
A royalty is a payment made to the legal owner (i.e. The University of Texas) of the patent for each article or process sold under the patent.A royalty is typically specified in a license agreement, where the owner conveys to a company or individual the right to operate under the patent in exchange for royalty payments based on a negotiated percentage of sales or other distribution of the patented item or use of a patented process.There are no direct financial benefits flowing from the mere ownership of a patent unless it is licensed to a third party or in situations involving the direct manufacture and sale of a product or process.
Within a university setting, the financial benefits typically accrue only in those cases where the patent is licensed by the university (licensor) to an individual or corporation (licensee) for use in a manufacturing/marketing effort.Typically, in a research situation the university retains rights to the invention and grants a company an option to license the technology arising from the funded research. When the technology is part of the formation of a new company, consideration for the license may include an equity interest (company ownership) by the university as well as royalty.The Office of Technology Management, negotiates license agreements, and all contractual documents representing UTHSC-Houston’s intellectual property interests are coordinated through this office.
UTHSC-HOUSTON ROYALTY DIVISION
Pursuant to The University of Texas Intellectual Property Policy (Section 5.23), and after certain costs of licensing and patenting are recaptured (i.e. outside patenting costs), the UTHSC-Houston divides any remaining royalty income as follows:
50% Inventor
30% UTHSC-Houston Patent Fund
5% School of Inventor
5% Department of Inventor
5% Lab of Inventor
5% Office of Technology Management
OTM CONTACT INFORMATION
Bruce D. Butler, Ph.D.
Director, Office of Technology Management
713.500.3369 (phone)
713.500.0759 (fax)
Bruce.D.Butler@uth.tmc.edu
