FAQ: Reporting University Inventions
Reporting inventions is an important step faculty must take to ensure research-driven innovations transform our world. To help faculty navigate the process, here are answers to common questions.
How can I recognize an invention?
An invention, also referred to as intellectual property (IP), can take many different forms, from databases to material inventions. These works may be protected by a copyright, patent or trademark, depending on their nature and purpose. At the University of Minnesota, an invention is likely to be the result of your research, and could include discoveries as varied as medical devices, pharmaceuticals and new varieties of fruit.
How do I report my invention?
Inventions are reported to the U’s Office for Technology Commercialization, who can assess your invention and determine the best path towards commercialization. If you think you have developed something of commercial value, contact the OTC technology strategy manager that correlates with your field of research. If you’re not sure who to contact, email OTC at firstname.lastname@example.org or call 612-624-0550 if you would like assistance in finding the right contact. For more information, see Steps for Reporting Inventions.
Why should I report my invention?
Your inventions can have a big impact. Taking the time to report your invention is a necessary step toward ensuring your ideas are protected and can ultimately benefit society through commercialization. Not only can your inventions lead to significant financial rewards—for you, your department and the university as a whole–they may also lead to further research opportunities and business contacts.
How does reporting IP protect my invention?
The process of commercializing technology can be complicated. It requires legal and business knowledge and expertise. Having a patent on an invention, for example, ensures the patent holder can decide how (or whether) others can use the invention. Once you have reported your invention, the OTC staff will collaborate with you and manage all aspects of the commercialization process, from patenting to licensing.
When happens after I report my invention?
After you report your invention, OTC will work with you and evaluate the commercial potential for your invention, which can take up to three months. If appropriate, OTC staff will determine whether your invention should be commercialized via a university startup or be licensed to an existing company. The latter option may occur through the Minnesota Innovation Partnerships Try and Buy program, which lets companies “test drive” university technology before deciding to purchase an exclusive worldwide license.
Will reporting my invention help me as a researcher?
Yes. Before companies engage researchers, they often consider not only their technical expertise but also their experience with industry, patents and commercialization. Your reported IP helps make you an attractive candidate for future industry-sponsored research. In addition, many funding agencies now take patent filings into consideration when awarding grants, and expect researchers to include plans regarding how they will commercialize their future discoveries.
How does reporting an invention help the U?
Invention disclosures make up one of the metrics needed for the U to obtain an increase in state funding. Your diligence in reporting IP now helps the U going forward. Invention disclosures can also lead to future licensing revenue, which is then distributed to you, the university, your college and your department. In many cases revenue returning to the department from which it was generated goes to support additional research in the inventor’s lab. In the long run, showcasing U researchers’ discoveries helps create a beneficial cycle of support and sponsored research.
Who owns IP discovered or created at the U?
The University of Minnesota is the sole owner of IP created by university employees in the course of their employment. Following the Board of Regents’ February 2014 policy change, students now hold ownership over the IP resulting from their coursework.
Am I required to report my inventions?
Yes. U of M Regents policy obligates researchers to report inventions to OTC that may have commercial value. Separately, a law called the Bayh-Dole Act mandates universities report inventions that result from federally funded research. If you believe there is a commercial interest in your discovery or it fills an unmet market need, contact OTC today.
How much IP do researchers across the U report?
Last fiscal year, U researchers disclosed more than 330 inventions, and 150 of those became new patents through the Office for Technology Commercialization.
Should I report an invention before sharing or publishing my findings?
Yes. Sharing your idea with anyone outside the university or “publishing” the findings in any form, from seminars to journal articles to posters, could compromise the ability of the U to protect your IP. If you have plans to share your findings in the next couple of months, contact a technology strategy manager well ahead of time, to discuss your communication schedule.
Kevin is a writer and public relations associate with the Office of the Vice President for Research.