Frequently Asked Questions
What are Intellectual Property Rights?
Intellectual property (IP) rights consist of rights granted to one or more person for the creations of his or her mind. IP rights typically allow the creator to exclusively make, market, sell, or otherwise use their technology for a certain period of time. Such rights enable and incentivize commercialization of marketable technologies.
What is Patentability?
To be considered patentable, an invention must be useful, novel, and non-obvious (see the USPTO website for more information). In addition to these three criteria, the invention must also be reduced to practice, meaning it must be more than a mere idea. A physical embodiment (e.g. prototype device) is not necessarily required to satisfy this criteria, so long as the inventor can provide an enabling description of the invention.
What is Marketability?
A marketable invention satisfies or creates demand within a market. Marketability is distinct from patentability; an invention may meet the requirements for patentability, but would not be considered marketable if customer demand was low. Likewise, an invention may fail to meet the standards required for patentability but still be marketable.
Who is the Inventor?
From a United States patent law perspective, an inventor is a person who contributes intellectually to one or more claims of a patentable invention. Inventors must be involved in the original conception process of at least one claim; participation in the reduction to practice (i.e. validation) of an invention is not by itself sufficient to be acknowledged as an inventor. A detailed definition of "inventor" is given by the USPTO here.
What Intellectual Property Must I Disclose to the University?
You must disclose:
- Patentable inventions, products, processes, discoveries, or plant varieties created with University support (see Intellectual Property Policy for more information).
- Materials including DNA libraries, bacterial strains, chemicals, and other compositions of matter created with University support.
- < Copyrightable works created with "significant University support" that have commercial applications.
- Any intellectual property required to be disclosed as part of the terms of a third-party agreement with the University, such as a grant or contract.
These types of intellectual property initially belong jointly to the University and the creator (unless a grant agreement stipulates otherwise), but the University controls their disposition. See the University's Intellectual Property Policy for full details.
Grants and contracts: The terms of most sponsored project award agreements set forth the ownership of any intellectual property arising from the grant/contract project and the subsequent obligations of the University and the funding agency. If the agreement does not address this issue, any intellectual property arising from the grant or contract is subject to University policy. You must disclose any intellectual property ensuing from a sponsored project that either University policy or the sponsored project agreement requires to be disclosed. Contact your campus sponsored projects office for more information.
How do I make an Intellectual Property Disclosure?
Employee disclosures are made in writing to the Office of Technology Transfer. Evaluation Request forms are available online and should be filled out, signed and dated by the inventor(s), and forwarded to the Office of Technology Transfer Office. Please contact us or refer to the University's Intellectual Property Policy for more information.
What Happens After Disclosure?
Upon receipt, your Evaluation Request is assigned a technology ID number and flagged for the next step of the process: the initial review. Together with the inventor, an assigned technology transfer specialist prepares an initial review which includes concise information about the invention's stage of development, novelty, market potential, possible licensees, and inventor intentions. The initial review and Evaluation Request are forwarded to a peer committee (the composition and protocol of this committee may differ per campus and applicable Intellectual Property Policy).
The inventor and technology transfer specialist present the invention to the committee to convey the discovery/invention's merit and potential importance, commercial possibilities, and so forth. In general, the committee may recommend 1) to send the invention back to the lab for more research/data, 2) to release the invention to the inventor, 3) to license it to a research sponsor for development, or 4) for SIU to pursue a patent. This process should take no longer than six months from the submission of the Evaluation Request to the Office of Technology Transfer, provided all parties are responsive.
The committee's recommendation as to the disposition of the intellectual property (i.e. what steps the University should take with respect to it) is reviewed by an authority on each campus (for example, the Vice Chancellor for Research at SIU Carbondale), who makes the final decision on the course of action.
What Does Licensing Entail?
Taking into consideration the committee assessment and intellectual property development, marketing will be undertaken to result in licensing either to 1) industry or 2) a >start-up company. Assistance at this stage is provided by the Office of Technology Transfer and other University programs as appropriate. This process typically begins as soon as a patent application is submitted (if the University opts to seek patent protection) and can take from months to years, depending on the invention, the stage of development of the technology, and market(s) of interest. The Office of Technology Transfer will assist you with finding prospective licensees for your technology and negotiating licensing agreements.
What Happens After my Technology is Licensed?
Licensing strategy performance is monitored by the Office of Technology Transfer for adherence to minimum license payments or performance requirements. Non-performing licenses are re-evaluated as necessary. The inventor may serve in a consulting role to the licensee, as an equity holder or manager in a spin-off company, or may simply collect royalties and assist the University when necessary. Proceeds are distributed to the inventor, SIU and the inventor's college or department, according to the applicable SIU Intellectual Property Policy.
Who Profits?
If rights are released to you as the creator and you choose to pursue a patent or otherwise commercialize your work, you will bear all the costs and reap all the profits.
If SIU decides to pursue the development of the intellectual property, it is agreeing to devote resources to pursue an appropriate commercialization strategy. The technology transfer specialist will work with you and with patent attorneys to protect your intellectual property and/or identify potential industry licensees.
Before profits are distributed, the University deducts its expenditures in patenting, licensing, and/or marketing the product. The applicable Intellectual Property Policy determines how remaining net income is distributed between the inventors/authors ("creators") and the University. Licensing and royalty income allows SIU to reinvest in its technology transfer activities and to support research endeavors at the University.
The public also benefits financially, and in other ways, from the technology transfer process. As a public institution, SIU has an obligation to see that research fulfills its promise of helping society and fueling the economy.
What About Spin-Off Businesses?
In addition to licensing technology to existing companies, the Office of Technology Transfer, along with the Office of Economic and Regional Development and SIU Research Park (Carbondale), InnovateSpringfield and the Center for Clinical Research (Springfield), and the SIU Edwardsville Small Business Development Center can assist researchers in starting their own businesses to commercialize their inventions. See Commercializing Your Technology for more information.
What About Spin-Off Businesses?
Glossary
Commercialization
The process of making a product, process, service, or other resource available to a wider market.
Copyright
A legal right granting limited exclusionary rights to the creator of an original work for its use and distribution. Copyrightable works may include books, software, music, choreography, movies, architectural designs, and more.
Disclosure
May refer to:
1. The distribution of information describing an invention. Disclosure may occur in writing, via oral communication, through demonstrations, or by some other means.
2. Part of a formal process (often through an institutional office such as a technology transfer or patent office) through which an inventor shares details about his or her invention. Patent disclosures typically must contain sufficient detail to allow someone who is “skilled in the art” to make or use the described invention.
Intellectual Property (IP)
Tangible or intangible products/outcomes of University-based scholarship, research, development, teaching, or other intellectual activity. IP may include patents, copyrights, copyrightable works, trademarks, inventions, data, classroom instructional materials, creative works, and web- or electronic-based research and instructional materials, among other things.
License
A legal instrument conferring the right to make, use, and sell a product or service utilizing protected intellectual property. A licensee is an entity which has obtained the legal right to use protected intellectual property
Materials Transfer Agreement
Contract governing inter-organizational transfer of tangible research materials, where it is the intent of the recipient of such materials to use them for research purposes.
Patent
A legal instrument granting a property right to an inventor. Patents typically give the inventor the right to prevent competitors from making, using, marketing, or selling their invention for a period of time.
Payment made to the legal owner of a patent, copyright, or other property for its use. Royalties are commonly structured as a percentage of revenues generated from products or activities pertaining to the property, although they can also consist of lump-sum payments or other forms of compensation.
Trade Secret
A practice, process, or recipe that is unknown to those outside a company. Companies must take reasonable precautions to conceal trade secret information. Legal protections are typically limited to non-disclosure or non-compete agreements with employees or other partners. Trade secrets may be attractive intellectual property options if an invention will be relevant for longer than the term of a patent (for example, Coca Cola), if disclosure would enable competitors to engineer functionally equivalent solutions that do not explicitly violate IP rights (often the case in software), or if the innovation is not patentable.
