- What is the first step if I think I have an invention to disclose to the University or a project sponsor?
- When should I contact the staff at Technology Commercialization?
- Who owns intellectual property discovered or created at the University?
- Why is it important for faculty to consider whether their research might result in intellectual property?
- What is the Bayh-Dole Act and how does it apply to me?
- How does the University evaluate intellectual property to determine if it should be protected?
- How do I know if my idea or discovery is a patentable invention?
- How does submitting an Intellectual Property Disclosure Form affect communication of my research results?
- If the University decides to file a patent application, how are researchers involved?
- How long does the patent and licensing process take?
- How much does it cost to patent an invention and what has the University's return on the investment been?
- Do I need to have a company in mind to license the invention before I disclose?
- I've written a software program I believe has commercial value—is it patentable?
- I wrote software in conducting an industry sponsored research project and the agreement assigns to the company sponsor exclusive intellectual property rights. May I release the software under an open source license without the sponsor's written permission?
- What type of provisions can be included in sponsored agreements with relation to software development?
- How are royalties divided?
- How are royalties distributed?
- Can I transfer research tools and materials to or from another institution?
- Who can help me draft a research agreement with a company so that intellectual property rights are well defined?
- What is the intent of the “Student-Created Technology” exclusion to the Regents Policy Commercialization of Intellectual Property Rights?
- How is “student” defined?
- When does the student own student-created IP?
- When does the University own student-created IP?
- Who owns IP created under a UROP award when the student is paid for working on a research project?
- When may a third party require students to assign student-created IP?
- What steps should students take to be sure they are in compliance with policy?
What is the First Step if I Think I Have an Invention to Disclose to the University or a Project Sponsor?
View this Step by Step guide or watch this short video introduction to Technology Commercialization to get started. If you believe you may have intellectual property to disclose, contact us so we can provide guidance with respect to the disclosure, evaluation, and the protection process.
If appropriate, submit an Intellectual Property Disclosure Form to begin the process. This form is confidential and should fully document your invention so we can evaluate and commercialize your invention.
When Should I Contact the staff at Technology Commercialization?
Contact us whenever you have questions about disclosing or protecting intellectual property.
For example, when:
- You wonder if your idea or discovery is intellectual property that should be disclosed to the University or a project sponsor.
- You have an idea for a new product or service that fills an unmet or underserved market need with potential for substantial revenue.
- You have a working prototype of your idea.
- You are planning to or already did disseminate your research results in a grant proposal, publication, poster presentation, dissertation, or even a casual conversation.
- Your research has federal funding or is sponsored by industry, and may have resulted in intellectual property.
- There may be commercial interest in your discovery or if a company has contacted you to find more about your research.
- You want to send or receive research tools or materials to or from another institution.
- You want to start a company with your idea.
Who Owns Intellectual Property Discovered or Created at the University?
The University is sole owner of all IP:
- Created by University employees in the course of their employment.
- Created by individuals—including employees, students, post-doctoral or other fellows—using substantial University resources.
Why Is it Important for Faculty to Consider Whether Their Research Might Result in Intellectual Property?
Identifying, protecting, and commercializing intellectual property serves the public good by facilitating the beneficial use of University research results. Many times, additional development work is required to bring a new discovery to a stage where it can be used by the public.
Medical devices, pharmaceuticals, software, sensors, new fruit and grain varieties, and machines all require additional development, testing, manufacturing, and distribution expertise that is not available at the University, but can be provided by companies that license University technology. In addition, reporting the creation of intellectual property is required by the Bayh-Dole Act and University policy.
What Is the Bayh-Dole Act, and How Does it Apply to Me?
The Bayh-Dole Act allows small businesses, nonprofits, and universities to own inventions that result from federally funded research. In exchange, universities are required to report each disclosed invention to the funding agency.
Since the act was passed in 1980, the number of technologies patented, licensed, and commercialized through university technology transfer offices has grown rapidly. The Act allows the University to use licensing revenues to support patenting and licensing, pursue additional research and education, and provide proceeds to inventors.
How Does the University Evaluate Intellectual Property to Determine if it Should Be Protected?
Patenting decisions are not based solely on technical merit. Only those technologies judged to offer reasonable commercial potential and return on investment will be selected for further processing. Using a well-defined process, Technology Commercialization decides which disclosures offer enough financial or public good potential to be supported by patent funding and administrative support.
How Do I Know if My Idea or Discovery is a Patentable Invention?
United States and foreign patent laws determine patentability.
In the US, an invention is patentable if it is:
An idea or discovery cannot be patented if it was previously known, sold, or used by others or by the inventors themselves. The idea or discovery cannot be obvious to a person with ordinary skill in the area of technology related to the invention. Abstract ideas, laws of nature, or physical phenomena cannot be patented. In addition, a patent application must describe the invention in explicit and sufficient detail to allow someone to reproduce the invention without undue experimentation.
Final patentability decisions are made by the United States Patent and Trademark Office and foreign patent offices as applicable. If you are unsure whether you have a potentially patentable invention, contact us.
How Does Submitting an Intellectual Property Disclosure Form Affect Communication of My Research Results?
Seeking intellectual property protection does not prevent scientific publication and in most cases does not delay communication of research results. However, sharing your idea with anyone outside the University may compromise your intellectual property rights.
To retain the potential for foreign patent protection, a patent application must be filed before any description of the invention is shared. Global patent laws can consider seminars, meetings, posters, abstracts, theses, journal articles, grant proposals, website content, blogs, email messages, and oral presentations methods of publication.
Contact us to review your communication schedule—ideally three months in advance of a presentation or publication—to allow time for evaluation and for drafting a patent application.
Submit an Intellectual Property Disclosure Form.
If the University Decides to File a Patent Application, How Are Researchers Involved?
Inventor involvement is very important to the entire patenting and licensing process. Inventors typically provide technical evaluation of previous patents and publications in their field, supply information to the patent attorney to assist with writing the patent, review draft applications and responses to patent office actions, and discuss technical aspects with interested companies.
We strive to keep inventors well informed during the process and will always consider your input when making decisions about protecting and licensing your invention. Final responsibility for all protection and licensing decisions rests with the University.
How Long Does the Patent and Licensing Process Take?
The evaluation process usually takes about six weeks, but may take longer.
If you anticipate presenting or publishing your research, be sure to submit an Intellectual Property Disclosure Form well in advance to allow time for the evaluation process. Once a patent application is filed, it can take from two to five years for the patent to be issued or denied by the US Patent and Trademark Office.
Studies show that it takes an average of eight years after an invention is disclosed to begin receiving significant royalties on sales.
How Much Does it Cost to Patent an Invention, and What Has the University's Return on the Investment Been?
The cost to obtain a US patent application ranges from approximately $15,000 to $35,000, depending on the complexity of the invention. International patents can cost several times this amount. In addition, both US and foreign patent offices charge fees to maintain the patent over its life.
In order to assure appropriate return on its investment, the University evaluates disclosures on anticipated ability to patent, license, and market the invention before a patent decision is reached.
Do I Need to Have a Company in Mind to License the Invention Before I Disclose?
You don't have to have a potential licensee in mind when submitting an Intellectual Property Disclosure Form. However, inventors are often aware of companies in the field, and may have been contacted by one of them. Studies have shown that over 70 percent of licenses are executed with commercial entities known by the inventor, so your contacts can be extremely useful.
We will work to license the technology to a company that has the expertise, resources, and business networks to bring the technology to market.
I've Written a Software Program I Believe Has Commercial Value—Is it Patentable?
Software is protected by copyright and sometimes can also be patented. There are many ways to distribute software for both academic and commercial use. For more information, contact us.
I wrote software in conducting an industry sponsored research project and the agreement assigns to the company sponsor exclusive intellectual property rights. May I release the software under an open source license without the sponsor's written permission?
No. The right to release in the policy does not apply if the agreement under which the software was developed includes provisions that bar open source release.
What type of provisions can be included in sponsored agreements with relation to software development?
It depends and as such, it is important to understand any requirements in the sponsored agreement that may bar or require open source release. Staff in Tech Comm are available to discuss these provisions, especially any effects on commercialization. The PI and Tech Comm will need to work with SPA to ensure that language needed to operationalize the choices made are appropriately included in the agreement.
How Are Royalties Divided?
Royalty distribution is governed by Board of Regents Policy on Commercialization of Intellectual Property Rights.
After recovering any out-of-pocket costs incurred during protection and licensing, such as costs to file a patent, and after subtracting a 15 percent administration fee to defray our operational costs, net proceeds from royalties are divided as follows:
- The department, division, or center that supported the creation of the technology, to be spent in support of the inventor’s research or directly related University work
- The collegiate unit that supported the creation of the technology
- The Office of the Vice President for Research and Innovation, to be spent in support of the University’s technology commercialization activities and to fund University research and scholarly activity
How Are Royalties Distributed?
Royalty revenue will be attributed to each technology as it is received and deposited.
Some royalty payments can be held up due to the following reasons:
- Income Distribution Agreement (IDA) in progress—if the IDA process is not complete for all inventors and departments, we cannot distribute any royalties.
- Recovery Only—any royalties that come in from a licensee are first used to recover the University’s out-of-pocket costs, such as those associated with filing a patent.
- Hold—due to an issue with the license or agreement.
Royalties are distributed at least twice a year:
- Checks received between February 1 and July 31 will be paid out in September.
- Checks received between August 1 and January 31 will be paid out in March.
All Inventors must be set up as a royalty vendor in PeopleSoft before distribution payments are made. A form will be sent directly to inventors for completion when needed.
Department/college distributions will be made via a Journal document in PeopleSoft. All distributions will be deposited into “holding” program 20715. Departments/colleges will be responsible for moving the dollars to their appropriate research/operations account.
Contact us with questions regarding this procedure.
Can I Transfer Research Tools and Materials to or from Another Institution?
You can transfer materials, (e.g., chemical compounds, cultures, cell lines, plasmids, nucleotides, proteins, germplasm, transgenic animals or plants, pharmaceuticals, materials), or information (e.g., data, databases, or computer source code) under a Material Transfer Agreement for the purpose of further research, testing, or evaluation, but not for commercial development in the absence of a licensing agreement.
Who Can Help Me Draft a Research Agreement with a Company so that Intellectual Property Rights Are Well-Defined?
Sponsored Projects Administration can assist you with standard contracts.
What is the Intent of the “Student-Created Technology” Exclusion to the Regents Policy Commercialization of Intellectual Property Rights?
The exclusion clarifies that the University owns intellectual property (IP) that results from research activity while the student owns IP that results from academic or educational activity.
How is “Student” Defined?
A “student” is any undergraduate, graduate, or professional student enrolled at the University of Minnesota.
A student may be a University employee. As a student taking a course for credit, University employment alone does not meet the criteria for University ownership, however, the University does own IP if it is created by a student as a part of their job duties as a University employee.
When Does the Student Own Student-Created IP?
When IP is created during course work taken for credit and when the only resources used were routinely made available to all students in the course.
When Does the University Own Student-Created IP?
When the student creates IP as a part of their job duties as a University employee.
When the student is conducting research supported by external (e.g. industry, state, federal) or internal funding, even if the student is not a University employee and even if that research is part of a University course.
When IP is created during course work based upon pre-existing University-owned IP or a University employee or outside individual is a co-inventor.
Who Owns IP Created Under a Undergraduate Research Opportunities Program (UROP) Award When the Student is Paid for Working on a Research Project?
The University owns student-created IP when the student creates IP as a part of his/her job duties as a University employee or when the student is conducting research supported by external (e.g. industry, state, federal) or internal funding (even if the student is not a University employee). IP created under a UROP award which pays the student fits both of these criteria, therefore the University owns student-created IP under a UROP award.
When May a Third Party Require Students to Assign Student-Created IP?
When IP is created during course work where a third party has provided funding and/or specific projects for the course, and when there is a prospective agreement that students will be required to transfer ownership of IP to the third party (e.g. BMEN 4001/4002, EE 4951, ME 4054, ME 8221-8222, BMEN 8401-8402, ENTR 6041-6042).
- Students must be informed of the requirement to transfer ownership at the beginning of the course, before projects are selected by students. Students must agree to such transfer in writing as a condition of working on the project.
- Whenever possible, students will be given an option to select a project which allows the student to retain their ownership rights.
- Grades or evaluation of performance in the course will not be affected by a student’s decision to participate or not to participate in projects requiring transfer of the student’s ownership rights.
What Steps Should Students Take to be Sure They Are in Compliance with Policy?
When conducting research as an employee or nonemployee (e.g. Undergraduate Research Opportunities Program, medical resident research project), students should ask their supervisor how to report created IP to us.
When registering for a course (e.g. BMEN 4001/4002, EE 4951, ME 4054, ME 8221-8222, BMEN 8401-8402, ENTR 6041-6042), and before selecting a project, students should ask if they will be required to sign an IP assignment agreement, and should decide if that project is right for them, or if they would prefer to work on a project which allows them to retain their ownership rights.
Students should understand that the assignment of intellectual property is a binding legal agreement and that they have the right to seek independent legal advice at their own expense prior to signing an ownership transfer agreement.
Students should contact us if they are unsure if they need to report IP they have created.