Research Related Regulations, Policies & Procedures
10.1 Patents, Copyrights, and the Technology & Venture Commercialization (TVC)
The Technology & Venture Commercialization (TVC) handles all patenting, copyrighting, licensing and other intellectual property (IP) protection for the faculty and staff at the University. Any intellectual property developed by University employees related to their employment belongs to the University, including, but not limited to, all inventions, know how and laboratory notebooks. The exception is some copyrightable publications. It is therefore important to work closely with TVC on any intellectual property issues.
TVC also reviews patent, copyright and data clauses in research agreements as well as non-disclosure agreements.
The development and protection of intellectual property is a highly detailed and specialized field. The following is a short description of some fundamental concepts of patent and copyright law.
University researchers thrive on free interchange of ideas and discoveries with scientific peers throughout the world. Why, in such an environment, would the University seek to protect the discoveries of its researchers, since such protection may act as a restriction on the use of the discovery that is protected? There are several important reasons, among others:
- Historical experience has shown that ideas, which are not protected, which are instead "dedicated to the public," tend not to be developed commercially. This is because few commercial businesses will invest the millions of dollars frequently required to develop a university-originated idea into a commercial product unless there is a sufficiently long period in which that investment can be recovered from a "protected" market;
- Commercial development of practical ideas has become more essential to the economic wellbeing of the nation and the state; the economic dominance once enjoyed by American companies continues to be eroded by nations more adept at commercializing new ideas(in many cases, new ideas which originated in America but were not protected; and
- Keen competition for federal research grants has increased the importance of industrial research funding, which usually requires the technology to be patent protected. University researchers play an extremely crucial role in the technology commercialization process, since much of the most state-of-the-art research in the country is done at university laboratories. However, if researchers act without regard to the patent implications of their activities, the value of this cutting-edge technology can be lost, and America's opportunity to commercialize such technology can be severely compromised.
A broad definition of an invention is "anything that's new." A patentable invention, however, is "the discovery or creation of a new material, a new process, a new use for an existing material, or any improvement of any of these." Any of these categories can be the subject of a patent. Typical examples might be:
New Material: A new material can be a device or manufactured product, such as the light bulb or gasoline engine; or it can be a new composition of matter, such as a chemical compound (e.g., aspirin) or a genetically engineered substance (e.g., a monoclonal antibody).
New Process: A new process is a sequence or methodology with usable results. The process of making something is independent of the product that is made; thus, even though a product is known (e.g., aspirin), the inventor of a novel process for making aspirin may also be entitled to a patent.
New Use: A new use is the application of a known material to a previously unknown use. For example, aspirin is known to relieve pain; but if someone were to establish that it also increases lifting thrust when added to rocket fuel, then a patent on that new use would be possible.
Improvements: Improvements on either materials or processes are also patentable. For example, if the current process for making aspirin produces 1 million tablets per hour, an inventor could get a patent on improving that process (say by increasing the temperature and pressure at a particular step) so that 2 million tablets per hour could be produced. As another example, if irradiating an aspirin tablet with laser light increases its pain-killing ability, then laser-irradiated aspirin would be an improved form of aspirin, and this improved form could also be patentable.
Whenever you are questioning whether an invention is patentable or not, it is best to treat the invention as potentially patentable and to contact the Technology Commercialization Office for an authoritative determination.
Under patent law, two important steps must occur before there is said to be an invention;
- There must be a conception of the invention;
- There must be a reduction to practice.
In other words, just an idea alone is insufficient to constitute a patentable invention; there must also be a demonstration that the concept actually works. This demonstration is called a "reduction to practice". Reduction to practice does not necessarily require a working model or system. It merely requires that the concept can be shown to work, which can be done through detailed drawings, formulas, and the like. When it is clear from the patent application that the invention will work as described, this is called "constructive reduction to practice", and a patent can be issued, even though there is not yet any actual physical reduction to practice.
It is very important to realize that co-authors are not necessarily co-inventors. Authorship is frequently based on overall contribution to the work (and occasionally on political or courtesy considerations). Inventor-ship under U.S. patent law is strictly based on identifiable contributions to the patentable elements of an invention; thus, even someone who participated in the research project on an active basis might not be a co-inventor for patent purposes. Inventor-ship is also very important legally naming the wrong inventors (either adding someone who was not truly an inventor or omitting someone who was) is grounds for invalidation of a patent. Because of the importance of naming the correct inventors on a patent application, the University usually refers these matters to a patent attorney. When submitting an invention disclosure to the TVC, all contributors should be indicated and each must sign the disclosure. When the patent is actually filed, however, the named inventors on the patent may be different from those originally indicated on the invention disclosure.
Copyright law is also an important and valuable means of protecting intellectual property. It is one of the easiest forms of intellectual property protection to obtain because it is enabled as soon as a work is created. Copyright law provides protection of an original expression as soon as it is rendered in tangible form regardless whether the form is digital or analog. Other than fixing an original work in a tangible form, nothing else is necessary to establish this form of intellectual property protection. Copyright is the primary form of protection for many different types of works including text, drawings, musical works, architectural plans, motion pictures, software, multimedia works, and internet-distributed content. A more detailed discussion of this area is outside the scope of this handbook.
In contrast to the University policy on patentable inventions, the University's copyright policy specifies that the faculty owns certain types of works, such as scholarly articles. The University does claims ownership of anything developed using substantial University resources. Copyrighted works must also be disclosed to the TVC using the Invention Disclosure Form discussed above.
The University recognizes that it has a responsibility to a commercial partner not to disseminate proprietary information that is owned by the sponsor. A nondisclosure clause in the contract or a separate non-disclosure agreement between the University and the sponsor is one common method of protecting this property. The University is subject to the "Utah Government Records Access and Management Act" (GRAMA). As such, all sponsor proprietary or confidential data should be in written form, and appropriately and clearly marked confidential before the University can accept and protect it.
See also Confidential Disclosure Agreement in Agreement Templates.
A University of Utah non-disclosure agreement may only be signed by an authorized signatory of the University. These agreements will only be signed when it is in the best interest of the University, such as a potential sponsored project, license agreement, or other agreements.
Individuals may sign non-disclosure agreements when they are acting outside their capacity as employees of the University, such as a consultant. Under these conditions there is no implied relationship between these external consulting agreements and the University.
A responsible individual will be designated and will accept responsibility for the confidential information under the non-disclosure agreement. The responsible individual will acknowledge, by signature, that they understand the requirements of the non-disclosure agreement and that they are ultimately accountable for the proper control of confidential information. Proper control means:
- Obtaining, reading, and understanding the contents of the non-disclosure agreement
- Documenting that others who have access to the confidential information
- have the right to access
- understand that the information is confidential and
- are knowledgeable about the contents of the non-disclosure agreement
- Keeping a record of those who have had access to the information
- Appropriately marking information as proprietary or confidential as required by the agreement
- Insuring that the information is properly stored and secured as designated by the agreement
- Insuring that the information is returned or destroyed as designated in the agreement.
- Properly identifying potentially patentable information resulting under an agreement and working with the TVC to appropriately protect such information
University employees with access to the agreement have a responsibility to adhere to the content of the signed non-disclosure agreement.