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When should I disclose an invention?
You should complete an Invention and Technology Disclosure whenever you feel you have discovered something unique with possible commercial value. Ideally, this should be done well before presenting the discovery through publications, poster sessions, conferences, or other communications. Once the invention is publicly disclosed (i.e. published or presented in some written form to non-Upstate listeners), we have one year to file a patent application in the U.S. if we choose to do so. Be sure to inform us of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal, dissertation/masters thesis, publication, or other public presentation of the invention.
How will we know who the inventors should be? Does inventorship "order" matter?
Authorship of a scientific publication and inventorship have different criteria and are not equivalent. Inventorship is a matter of law, depending on what is specifically claimed in the patent as written. A patent that fails to name the correct inventors may be ruled invalid under certain circumstances. The law does not recognize individuals as inventors who merely follow someone else's instructions or simply provide lab space, funding and/or equipment. Because patent claims may change while the patent application is undergoing review by the patent office, inventorship may change as well.
For the purpose of your invention disclosure form, name any individual who has made a creative contribution to the invention. When necessary, we will initiate a formal inventorship determination using outside patent counsel. The order inventors are listed bears no relationship to their contribution to the invention.
Who owns what I create?
Ownership depends upon the employment status of the creators of the invention and their use of University facilities. Considerations include:
- What was the employment status of the creator at the time the intellectual property was made?
- Were University resources used in creating the intellectual property?
- What are the terms of any agreement related to the creation of the intellectual property?
As a general rule, the University owns inventions conceived or reduced to practice in whole or in part by members of the faculty or staff (including student employees) of the University in the course of their University responsibilities or with more than incidental use of University resources. In some cases, the terms of a Sponsored Research Agreement or Materials Transfer Agreement may impact ownership. When in doubt, please call for advice.
Does the government have rights in the invention?
If the invention was created in the process of research funded by the government, the government retains certain rights in the invention.
I have a great idea but I came up with it in the shower. Do I have to disclose it?
Under Upstate policy, the University owns inventions conceived or reduced to practice in whole or in part by members of the faculty or staff (including student employees) of the University in the course of their University responsibilities. "University responsibilities" often include ideas conceived off-campus, if they are related to your work done at the University. When in doubt, please call for advice.
What is intellectual property?
Intellectual property, also known as "intangible property", is different from "tangible property" such as land, a building, a computer, etc. Intellectual property may be protected under the patent, trademark, trade secret and/or copyright laws.
How much does it cost to file and obtain a patent? Who pays the patent costs?
It typically costs $25,000 to $35,000 to file and prosecute a U.S. patent application. This includes the filing fees paid to the USPTO and the more significant patent attorney costs. If the technology is unlicensed, Upstate pays the patent costs. These expenses are reimbursed by the licensee if the technology is exclusively licensed.
What happens if you don't file a patent?
There are certain types of technologies, such as software and biological materials, that do not require patenting in order to be successfully licensed. For other inventions, if Upstate Innovation & Partnerships decides not to pursue patent protection and/or chooses not to actively market the invention, the inventor can sometimes pursue development of the invention while the University maintains ownership. In such cases, the inventor typically pays all the patent costs. Your Upstate Innovation & Partnerships licensing specialists can discuss alternatives based on the specific circumstances of a particular invention.
How is Technology transferred through Upstate Innovation & Partnerships? How long does it take?
Technology is typically transferred through a license agreement in which the University (commonly known as the "licensor") grants its rights in the defined technology to a third party (commonly known as the "licensee") for a period of years, sometimes for a particular field of use, and sometimes limited to certain regions of the world. The process of protecting the technology and finding the right licensing partner may take months-or even years-to complete, if ever. The amount of time will depend on the development stage of the technology, the market for the technology, competing technologies, and the amount of work and money needed to bring a new concept to the marketplace. Because university technologies are often too early stage for industry to invest in, we are not able to find licensees for all technologies.
What is a license?
A license is a permission granted by the owner of intellectual property that allows another party to act under all or some of the owner's rights, usually under a written license agreement.
How is a company chosen to be a licensee?
A licensee is chosen based on its ability to commercialize the technology for the benefit of the general public. Sometimes an established business with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a start-up company is a better option. Typically, a university does not have multiple potential licensees bidding on an invention.
What are typical license terms?
Different inventions require different licensing strategies. For example, a basic new scientific tool likely to be widely used is typically licensed on a non-exclusive basis. In contrast, an invention which requires significant investment of resources by a company is typically licensed on an exclusive basis. The exclusive license provides an incentive to the licensee to commit risk capital investments required for product development. Also, license terms for a start-up company are typically different than those for large companies. Upstate license agreements usually stipulate that the licensee should diligently seek to bring the intellectual property into commercial use for the public good and provide a reasonable return to the university.
What is the role of the Inventor in the licensing process?
The inventor(s) play a role at many stages of the licensing process. For example, Upstate Innovation & Partnerships relies on them to: disclose new technologies; work with attorneys to help prepare patent applications and respond to the patent office; review marketing materials and suggest companies as possible commercialization partners (studies have shown that over 70% of all licenses are executed with commercial entities know by the inventor, so your contacts can be extremely useful); help respond to technical questions and host visits from interested companies; keep Upstate Innovation & Partnerships informed of upcoming publications and interactions with companies related to your invention.
What is the role of I&P?
Upstate OTT is responsible for managing the intellectual property assets of the University for the public good. Specifically, Upstate Innovation & Partnerships, with input from the inventors:
- evaluates promising technologies generated by Upstate faculty, staff, and students
- determines intellectual property strategy and manages patent prosecution (including payment of patenting costs for unlicensed technologies)
- markets the invention to industry with the hope of finding one or more companies interested in developing products based on the technology
- determines licensing strategy
- negotiates license agreements with interested companies (i.e. licensees)
- maintains long-term relationships with the companies developing products based on the licensed technology
- collects and distributes royalties from licensing the invention
If I want to consult with a licensee, what do I do?
If an inventor is planning to remain at Upstate while consulting with a company, the inventor should familiarize themselves with the policies of Upstate and their school relevant to consulting activities. The inventor is expected to ensure that the terms of the consulting arrangement are consistent with University polices, including those related to IP ownership and employment responsibilities
Please notify your Upstate Innovation & Partnerships office and your appropriate department official(s) if you have or are contemplating a consulting agreement with a potential licensee, as this will require an ad hoc Conflict of Interest review.
If I want to start a company with my invention, what do I do?
Inform I&P so they can take that into consideration when planning patenting, marketing, and licensing strategy. Although Upstate does not give preferential treatment to its inventors and their start-ups, Innovation & Partnerships and the University recognize the importance of the inventor's role in helping to transfer technology and in evaluating the ability of a company to develop licensed products.
Additional topics on this website related to start-up licensing are:
How can I find out the status of my invention?
Contact I&Pdirectly if you have any questions or concerns regarding your technology. We make every effort to ensure that inventors are kept up to date on the status of their technology.