Stuart Sidle, Associate Provost
Yes, the University administration encourages researchers to consider the commercial applications of their research and to disclose potential inventions and new software. The potential benefits to the community, state, nation, researchers and University are undeniably valuable.
The commercial or practical aspects of an invention may benefit the public through
better health, improved lifestyle and education, strengthened local and regional economies
and enhancement of U.S. competitiveness in the global economy. Financial returns from
commercialization of technology may provide the University with additional research
funding support and the inventor with additional income. NIH and other funding agencies
Disclosing your invention is an important part of protecting the rights to your discovery. One of the most important benefits may be the commercialization of your technology through efforts in patent and licensing of the discovery. Other benefits include new contacts with industry or sponsored research in your laboratory.
Inventors are those who conceived the invention and/or directly contributed intellectually to its reduction to practice. An "inventor" is defined by law generally as one who first invents patentable subject matter. A person must have contributed to the conception of the invention to be an "inventor." "Conception" is the formation in the mind of the inventor of a definite idea of the complete invention as it is to be practiced. Co-authors on publications may or may not be considered to be co-inventors. It is very important to define inventorship of an invention accurately; otherwise, the patent is invalid.
It is advised that inventions disclosed have a novel idea and some data to demonstrate its proof of concept.
Public disclosure includes but is not limited to Journal Articles, Publication on the Web, Conference Abstracts, Oral Presentation or Poster Presentations. Foreign patent rights are lost immediately upon public disclosure. If a technology might be of commercial value and should be protected and marketed, it is necessary to disclose the technology to the Office of Technology Transfer (OTT) for review and possible filing of a patent application well in advance of any "public" disclosure of the invention (abstracts, papers and dissertations may be considered public disclosure). It is also encouraged that grant proposals be labeled "confidential" upon submission to avert any potential "disclosure" questions. Disclosure of the invention to OTT should be far enough in advance of public disclosure to permit an adequate review and development of a thorough patent application (60 days or more is desirable).
The invention will be promptly reviewed to determine its patentability and commercial merit. The OTT will consult with the inventor(s) as appropriate to fully understand the potential applications as well as the stage of development and specific advantages over other, similar products in the market. The OTT will provide feedback to the faculty on a timely basis specifying the actions to be taken in order to give the opportunity the best chance at a successful transition to a commercial program. It is important for the OTT to know as soon as possible if a publication or other form of public disclosure is imminent so that appropriate action can be taken to protect the intellectual property rights.
Although the University of New Haven is the owner of inventions and software developed in the University of New Haven facilities by University's faculty and staff, certain rights, upon request, may be assigned or licensed to the inventor.
OTT works with highly qualified outside patent attorneys to write, file and prosecute patents.
If the invention is to be protected and promoted by the University of New Haven, the University will administer patent activity and pay for initial patent costs (normally $8K to $15K). When an invention is released to the inventor, the inventor is responsible for all costs associated with patenting.
The University will not claim ownership of such documented inventions; however, any developments or improvements of such inventions that are made while at the University must be disclosed to OTT.
A Material Transfer Agreement (MTA) is a legal document that protects the University as well as tangible research materials that are created by University investigators and are useful to others for research or for commercial development. It is important to contact OTT prior to receiving or sending out any research materials.
A Confidential Disclosure Agreement (CDA) is a legal document that protects proprietary information. Such a document is necessary before any transfer of proprietary information is made from one party (university investigator) to another (corporate scientist). Without this agreement, the individual or company to whom the information is disclosed is free to use and transmit this information to others. Additionally, without a confidentiality agreement in place such disclosures can be considered public disclosures, thereby precluding foreign patent rights. It is important to contact OTT before disclosing any confidential information to another party.
Inventions eligible for a U.S. patent must be novel, useful, and non-obvious
Novel: The invention must be noticeably different from publicly available inventions. This does not mean that all aspects of an invention must be novel. For example, new uses of known processes, matter, or materials are patentable. Incremental improvements on known processes may also be patentable. To be considered novel, an invention must be the inventor's original work. In addition, the inventor must file a patent application within certain time constraints if the invention has been publicly revealed.
Useful: The invention must demonstrate some application or utility or be an improvement over existing products and/or techniques.
Non-obvious: A patentable invention must be "non-obvious" to someone of "ordinary skill in the art." This does not include recognized experts in the field. It only means the invention is somewhat surprising to one with "ordinary skill", yet this someone is knowledgeable enough in the field to understand the utility of the invention. This requirement is difficult to judge, for it is hard to predict with certainty what the patent examiner will find obvious or non-obvious.
An invention can be "non-obvious" if it is a combination of old elements in a new way to produce a new, unexpected result. Similarly, an invention can be considered "non-obvious" if others have attempted to achieve the invention but failed. Some situations require affidavits from experts stating the invention is not obvious to one skilled in the art.
Signature authority refers to specific University officials who have the authority to sign agreements that commit the University to abide by the legal requirements of a contract. University faculty and other inventors do not have signature authority and are not authorized to sign agreements that obligate the University to assign or license intellectual property rights to another entity. The management of University intellectual property is complex because there are often many conflicting interests. OTT works at the interface of science, business and law within the multiple contexts of University, industry and government. Maintaining limited signature authority helps manage and control technology transfer initiatives.
Although the majority of the marketing and patenting function will be performed by the OTT, considerable input from the inventor is usually required, especially regarding patent applications.
Royalty sharing is the formula that universities use to distribute any revenue realized from its commercialization efforts. The University of New Haven’s revenue sharing formula is detailed in its patent policy.
The first step is to verbally "disclose" the invention or software program to the
OTT. After discussion with OTT, you may be asked to complete and submit an invention
disclosure form to OTT. This form will briefly explain what is invented or what software
was created, who sponsored the work, whether it has been or is scheduled for publication.
If there are co-inventors from other institutions, they should be included on the disclosure; the technology transfer offices at the inventors' institutions will cooperate to manage the disclosure.
Refer to the University of New Haven IP Policy.
The Office of the Provost will make this decision. The Office of Technology Transfer will provide guidance for this decision by presenting the commercial viability of the disclosed technology and the commercial strategy that will be employed to attract a commercial partner as soon as possible. Obviously, budgetary limitations will be a factor in the committee's decision processes. OTT is responsible for implementing decisions by the office of the Provost. If the University of New Haven decides not to pursue patent protection, OTT will advise inventor(s) about available options.
The OTT will generally make this decision with support from the Office of the Provost. The decision will be based on the technical experience of the firm in the area of the invention, the track record of the firm with University of New Haven inventions, and projected costs.
Every sponsored project, even those funded by government or other non-profits, has an associated research agreement; this is managed by the Office of Sponsored Research. These agreements address many issues and contingencies but in particular each should address the issue of ownership and allocation of IP rights to patents and/or software which grow from project discoveries. For government sponsored research the IP rights sections are relatively standard for patents but not for software. For research sponsored by a company the subject of IP rights in the sponsored research contract frequently requires careful attention. OTT collaborates with the Office of Sponsored Research in review, and it negotiates IP rights clauses in contract documents, seeking review by the General Counsel's office as necessary. In recognition of the project sponsorship, OTT recommends that the contract provide the sponsor an option to license the IP rights from Fairfield in order to make, use, have made, or sublicense the technology. Terms of the license are to be negotiated at the time the sponsor indicates intent to exercise its option; the terms include how any revenue would be shared with the university and thus with the inventor(s) according to the terms of the Patent Policy. The discussions and process for developing the "IP rights clause" in a sponsored research agreement are critical to the building of good relationships with the sponsor; up-front and harmonious agreement will set the stage for smoothly and expeditiously handling any IP developed in the project for the benefit of all parties involved.
The OTT will have the responsibility of developing recommendations for commercialization
opportunities and strategies, technology marketing (including employment of external
resources, when appropriate), licensing or new business formation. These will be reviewed
internally with contributions as appropriate from: the inventor(s), the Provost, and
the General Counsel.
OTT will seek consensus and then implement. With input from the above named resources, OTT will also be responsible for development of terms, preparation and negotiation of license agreements. OTT will also attempt to alert parties which may have real or apparent conflicts-of-interest and will work with them to identify possible solutions.