Frequently Asked Questions
INTELLECTUAL PROPERTY & INVENTION DISCLOSURES
PATENTS & COPYRIGHTS
RESEARCH COLLABORATIONS & CONSULTING
MATERIAL TRANSFER AGREEMENTS (MTAs)
Should I publish or patent?
BOTH! Seeking a patent for a discovery or development does not prevent scientific publication and doesn't have to delay publishing. TTED staff will work with patent attorneys to accommodate any publishing dates and still protect your invention. But to
achieve optimum results, a description of the discovery should be submitted to the University at
least three months in advance of first publication to allow time for review
and for drafting a patent application.
What's the first step?
The technology transfer process begins when an inventor or inventors submit a
confidential Invention Disclosure Form
to the ORA. The form asks for such information as a description of the
invention, names and contact data for everyone involved in making the
invention, funding sources for the research that led to the invention, prior
publications or public descriptions of the invention, commercial contacts in
the field of the invention, and any potential conflicts of interest the
inventors may have with commercial contacts.
How are inventions
The ORA will evaluate the invention disclosure and discuss it with the
inventor(s). The evaluation process involves two components: a patent and
literature search to evaluate the uniqueness of the invention, and a
marketability survey of the literature and industry contacts. The goal of these
efforts is to answer two basic questions:
- Is the
invention patentable (new, useful, and not an obvious improvement on an
- Is the
invention licensable (will a company pay the University for the right to
commercially practice the invention)?
If the answer to these questions appears to be yes, and if
the expected return from licensing justifies the time and cost, the University
will proceed with the patent application. The University has limited funds for
the expensive process of patenting, so staff must make informed decisions about
which inventions have the most potential to be legally protected and become
valuable products. There doesn't necessarily have to be a massive market awaiting
the product, but there does have to be some industrial or entrepreneurial
interest in obtaining rights to develop a product, in funding further R&D
in hopes of realizing the invention's value, or in starting a company to
How are inventors involved?
Inventor involvement is very important to the entire patent and licensing
process. Degree of involvement varies according to the nature of the invention
and the availability and interest of the inventors. Their expertise is
especially helpful during the evaluation for patentability, in the patent
application process, in identifying licensing prospects, and in meeting with
companies expressing interest. Inventors typically provide technical evaluation
of previous patents and publications in their field, supply information to the
patent attorney and review draft applications and responses to government
actions, and discuss technical aspects with interested companies. Regardless of
the amount of involvement, inventors are kept informed of the evaluation
process and any actions taken, and their input is considered in making
decisions about the University's protection and licensing of the invention. However, final responsibility for such decisions rests with the ORA.
How long does it take?
The disclosure evaluation process may take anywhere from a week to three
months, and possibly longer, depending on the complexity of the invention and
the target industry. After filing a patent application, it can take from one to
three years for the patent to be issued or denied by the U.S. Patent and
Trademark Office. It may take five years or longer for commercial sales to
begin, depending on how much work needs to be done to develop and market a
product based on the invention. University technology transfer offices find
that it takes an average of eight years after an invention is disclosed to
begin receiving significant royalties on sales.
Who owns UMSL inventions?
Like nearly all universities, University of Missouri's policy states that the
University has first rights to acquire title to any invention that results from
use of University resources or University-administered funds. External sponsors
of research often require disclosure and patenting of results when appropriate,
and they also may have some ownership rights. If the University and sponsoring
agency decide not to protect and transfer an invention, ownership rights can be
waived to the inventor(s).
Why should I participate in technology transfer?
The University is substantially supported by the public, including the majority
of its research programs. The public deserves maximum return for its investment
in research, through publication of results, sharing of expertise with students
and others, and transfer of technologies to companies for commercialization.
Many university inventors report great satisfaction in seeing their research
efforts result in practical benefits to society. Many also find that the
increased contact with industry improves the relevance of teaching programs and
increases students' chances for internships and employment.
What is technology transfer?
Technology transfer is the formal transfer of
rights to use and commercialize new discoveries and innovations resulting from scientific
research to another party. Universities typically transfer technology through
protecting (using patents and copyrights) and then licensing new innovations. Major
steps in this process include the disclosure of innovations to the University,
patenting the innovation concurrent with publication of scientific research,
and licensing rights to innovations to industry for commercial development.
What are the goals and
responsibilities of the ORA in technology transfer?
UM-St. Louis Office of Research Administration through its Technology Transfer and Economic Development staff manages all technology transfer
activities on the St. Louis campus. The ORA's main objective and responsibility
in technology transfer is to facilitate the transfer of UMSL's inventions to
the private sector where these discoveries can be further developed for public
use and benefit.
What is the Bayh-Dole Act?
Bayh-Dole Act, passed by Congress in 1980, created a uniform
patent policy among the U.S. federal agencies that fund research in the
non-profit and small business sectors. The Act provides recipients of federal
research funds with the right to retain ownership of their patents with the underlying tenet that federally
funded inventions should be licensed for commercial development in the public
interest. This principle is reflected in virtually all university policies
whether or not the invention is federally funded.
Who has signature authority related
to technology transfer?
The Chancellor at UMSL has sole signature authority on
behalf of The Curators of the University of Missouri for license agreements,
material transfer agreements, and other agreements that pertain to intellectual
property. University faculty and other inventors are not authorized to sign
agreements that obligate the University to assign or license intellectual
property rights to another entity.
The Chancellor has delegated signature authority for Non-Disclosure Agreements (NDAs), also called Confidential Disclosure Agreements, to the Vice Provost for Research.
PROPERTY, INVENTION DISCLOSURES
What is Intellectual Property?
Property (IP) refers to a legal entitlement that sometimes attaches to the
expressed form of an idea, or to some intangible subject matter. This legal
entitlement generally enables its holder to exercise exclusive rights of use in
relation to the subject matter of the IP. The term "intellectual
property" reflects the idea that this subject matter is the product of the
mind or the intellect, and that IP rights may be protected by law in the same
way as any other form of property.
can take the form of any new and useful process, machine, composition of
matter, life form, article of manufacture, software, trademark, copyrighted
work, or tangible research property. Examples include new or improved
devices, circuits, chemical compounds, drugs, genetically engineered biological
organisms, antibodies, clones, cell lines, data sets, software, web-based
tools, musical processes, or unique and novel uses of existing inventions.
The term "intellectual property"
generally relates to four distinct kinds of legal protection: patents, trademarks, copyrights, and
trade secrets. Each kind of intellectual property is governed by its own body
of federal and/or state law. The kinds of things that are protected by
intellectual property law include scientific and engineering inventions
(including new methods and apparatus), distinctive marks for identifying
products or institutions, computer software, "know-how," and forms of
expression that are affixed in tangible form (i.e., books, movies, artistic
works of art).
Why is protection of intellectual
IP is an asset to be
developed, maintained and protected, not unlike land, equipment and facilities.
By protecting it appropriately, it can return value and advantages to its owner
and the inventive group.
If I invent something at the University,
does it belong to the University?
In almost all cases, yes. If the intellectual property
was developed by an employee of UM-St. Louis or invented at UMSL facilities
under the supervision of UMSL personnel, the intellectual property is owned by UMSL.
Each inventor must assign his or her rights in the intellectual property to UMSL. This includes
all faculty, staff, fellows, and students who have an appointment at UMSL (can be defined as an "employee" as described in section C2 of the UM Collected Rules, Chapter 100.020).
can be good news for you because the University assumes the burden of
protecting and commercializing the invention and provides 1/3 of net proceeds
to the inventor(s).
Bayh-Dole Act of 1980 charges the University with the responsibility
to pursue commercial development of inventions resulting from federally
sponsored research for the public interest.
most cases, ownership is obvious; however, there can be exceptions. If you have
questions about whether the University owns your invention, please contact the
ORA as quickly as possible for analysis.
is important that you discuss the situation with the ORA as soon as you think
you may have an invention. Not only will the office help to clarify the
situation, its involvement may lead to the process of protecting and
commercializing your invention and starting you, your department, and UMSL on
the road to personal and institutional financial rewards.
Why do I need to keep a lab notebook, and how should I do this?
The America Invents Act, singed into law on Sept. 16, 2011, changes
patents and trade secrets are handled in the United States. The most
sweeping reform to the existing
Patent Act since 1952, the America Invents Act includes changes such as
U.S. now grants patents to the first inventor to file rather than the
invent. Lab notebooks under the old statute were key to proving first to
invent. So, are lab notebooks important now that the United States is a
Until the passage of the act, America was a
“first-to-invent” country -- the first individual to invent something
was the person entitled to patent the invention. If someone else filed first,
the original inventor could overcome the other’s patent by by proving that the original inventor
conceived of the invention and diligently reduced the invention to practice
before the filing date of the other person’s patent. This required an inventor keep a detailed laboratory notebook.
Now, with the United States converting to a "first-to-file" country,
only the first inventor who files will receive the patent. However,
carefully written notebooks are still necessary to establish the
inventor's identity as required by the statute.
Maintaining Your Lab Notebook:
Another investigator should be able to replicate the invention by
looking over your entries. The notebook should allow one to determine
the nature of the project, when it commenced, what ideas were considered
during the project, the compounds made or circuits and equipment
actually built and tested, the results of the tests, the dates for each
of the above and the final conclusions.
Notebook entries should be made in ink, using a permanently bound notebook with sequentially numbered pages.
Sign and date the inside front cover to indicate the first day of
use. Entries should be signed and consecutively dated. An independent
witness (i.e., someone who understands the technology but will not be
named as a co-inventor) should regularly look over the entries and
witness the same by signing and dating the notebook pages. Have your lab
notebook witnessed daily if possible, but at least every two to four
Write legibly and identify entries with respect to the particular
project for which the work was done. Use past tense to describe the
experiments that were actually performed. Explain abbreviations and
special terms that are not standard (in context, in a table of
abbreviations, or in a glossary).
Provide detail. However, keep conclusions short and supported by the factual data. Avoid opinions or speculation.
Include all formulae or diagrams and sketches of circuits and
equipment that were considered during the project, including the ones
actually built and tested. Accompany each diagram and sketch with an
explanatory note sufficient to identify and explain the subject matter.
Identify the project to which all data relate. If possible, indicate
the project or experiment number, or at a minimum give a brief
In general, avoid fragmentary diagrams or sketches, or diagrams or
sketches without explanatory notes. Draw circuit diagrams, for instance,
as comprehensively as possible, using blocks or similar notations to
indicate conventional parts.
Avoid loose pages or inserts carrying sketches or other information.
If a sketch or note is made on a loose piece of paper, and you wish to
place it in your book without making another entry, permanently affix it
in the notebook with tape and have its placement witnessed by another
investigator. Make sure the taped-in information does not obscure any
other information in the lab notebook. If the pages or inserts cannot be
taped into the notebook, store them in a supplementary file (see next bullet point).
Keep supplementary files and papers (e.g., chromatography reports,
biological assay data tables, etc.) in a supplemental file. Make sure
every page in the supplemental file is tied directly to a primary lab
notebook page and has an unambiguous reference name in the text of the
When two or more investigators are working on the same project, they
should not split entries between two or more laboratory books. One book
should be complete in itself. When two or more investigators are making
entries in the same book, they should initial and date their own
Make notations of the progress and completion of compounds,
assemblies, or models being prepared for testing. Relate these entries
to previous sketches or entries that explain how the compound or
equipment is being made.
Successful testing of a compound or particular setup or piece of
equipment is "reduction to practice" and the date of such accomplishment
is important. Make notations of such tests, identifying the compound or
equipment, and commenting on the results of the test. Give tabulated
test data, if available. Avoid unnecessary derogatory remarks about
Avoid erasures. If an error has been made, cross it out with a
single line, initial and date the strikethrough. Then make a new entry.
Avoid modifications. Do not modify prior entries at a later date. If
information was omitted, enter it under a new date and cross-reference
to the previous entry.
Photographs are useful in keeping a complete laboratory notebook.
Particularly where a model has been made and successfully tested, it is
desirable to take one or more photographs which will serve as future
identification. Permanently paste the photographs into the laboratory
book, and give the date and identification, as well as the name of the
Never remove original pages from a laboratory notebook.
Keep laboratory notebooks in a safe place when not in use.
Index (e.g., by number, author, subject area) and save all completed
notebooks in a central lab repository. Lab notebooks that relate to
inventions on which patents have issued should be kept for the life of
the patent plus six years.
Use permanent ink
- Use consecutive, sequentially numbered pages
- Date entries
- Identify subject matter
- Include sketches, diagrams, etc.
- Explain sketches, diagrams, etc.
- Photos, drawings, etc. should be identified and attached
- Avoid erasures
- Avoid modifications
- Permanently affix attachments to the notebook
- Unambiguously tie supplemental file pages to a primary notebook page
- Make new entries, do not alter existing entries
- Have entries witnessed regularly
- Provide proper storage
- Index and save all lab notebooks
What about my inventions prior to
joining the University?
University does not claim ownership of such inventions. However, any
developments or improvements of these inventions that you make while at UMSL
may be owned by the University and should be disclosed to the University (ORA).
I made an invention on my own time without any University resources.
Am I free to license and commercialize my invention on my own?
You have an obligation to disclose any inventions (even those made
on your own time) to the ORA that you make concomitant with your employment by
the University so that the ORA can determine if the University has any rights
to the invention. You will be entitled to your invention if it was not made
using University resources and the subject matter of the invention is outside
the scope of your University research.
Do I have to disclosure my
you need to disclose any Intellectual Property to the University. You can
disclose your research by completing an Invention Disclosure Form. Such
disclosure should occur either simultaneously with or prior to public
When is the right time to submit a
you feel you have identified a new research discovery that you feel is
interesting, novel and important to advancing the field. Don't worry about
whether or not you have an "Invention" or "Intellectual
Property," we can help you figure that out. You should also disclose
any such discovery either simultaneously with or prior to a public disclosure
such as submitting an abstract for a scientific meeting or submitting a
Do I need to demonstrate that my
invention works before disclosing it to the ORA?
much can be lost by not contacting the ORA technology transfer staff early in
your research, it is best to communicate with us before your invention is fully
implemented. It is not necessary to have a model or working demonstration to
file a patent application.
How do I benefit from disclosing my
invention to the University?
disclosure is a necessary first step for proper evaluation and protection of
your invention in order to bring about the commercialization of the technology.
Its primary purpose is to collect information to help evaluate the invention
for patentability and commercial potential. We strongly recommend that you
complete the Invention Disclosure Form as soon as you think your research has yielded a discovery or
invention. As an official document, the completed form serves to establish a
legal record of the date of conception of the invention. It
is important to note that disclosing your invention to the University is required. In addition, submission of
the disclosure form is required by all federal funding agencies; the university
faces strict requirements regarding inventions discovered through sponsored
research. Please contact our office if you have any questions regarding this
part of the process.
The inventor(s) receive 1/3 of licensing revenues brought in by the University. The inventor's department(s) receive 2/9 of revenues after expenses to fund additional research. Another 2/9 goes to the UM System to fund future patent applications, and the final 2/9 goes to the campus technology transfer fund to facilitate commercialization activities.
How do I inform the University regarding a possible invention in my
- Call or email Tamara
Wilgers, Director - Technology Commercialization and Economic Development (ext. 6884), and/or
- Complete and submit an Invention
Disclosure Form. Completion of this form enables efficient review of
the invention. Faculty participation at this step is often key to
successful licensing of the invention because the inventor(s) are the most
knowledgeable of their field and often can provide the most promising
commercial licensing leads.
Why do you ask what funding source(s)
regulations under the Bayh-Dole Act (1980) require that government-funded
inventions be reported to the federal agency who made the award. As a
service to grant awardees, our office uses a system call iEdison to report
inventions to the funding agency.
reason we ask for this information pertains to the Intellectual Property rights
under any funding agreement. Although funding agreements with the Federal
government are pretty standard and fall under Bayh-Dole, those with private
agencies are not and it is important that we know about the funding source to
determine those rights.
Should I disclose before or after I have submitted my work
in abstract or manuscript form?
- It is critical to disclose
your invention as soon as the invention is in hand. Thus, you should be
disclosing well before a manuscript or abstract is drafted.
early affords many advantages, including proper assessment of the
technology, development of an appropriate management and marketing plan by
the ORA, and the ability for interested companies to evaluate the
licensing opportunity before the opportunity to obtain patent rights is
on the invention, many companies may have no interest in licensing the
invention unless they can obtain a license well in advance of any enabling
public disclosure of the invention in order to have lead-time over their
the ability to obtain foreign patent protection for an invention is lost
immediately upon the enabling public disclosure of such an invention. Many
companies are not interested in licensing rights to inventions for which
foreign patent protection no longer is available.
you have already submitted your work in abstract or manuscript form, contact the ORA as soon as possible.
What happens once I have submitted an Invention Disclosure Form?
- The ORA Technology Transfer and Economic Development (TTED) staff will review your invention with you and coordinate a
preliminary evaluation of the invention’s potential for IP protection and
the information gathered in the evaluation, we will decide whether to file
a patent application to protect the invention.
- If a
scholarly publication or other public disclosure is imminent, we will
accelerate the process of reviewing, drafting, and filing a patent
application in order to preserve your patent rights.
the technology appears commercially viable, a marketing plan will be
developed and undertaken.
- Once a
committed licensee is identified, TTED staff will be
responsible for negotiating the license to the technology.
Who should be listed as “inventors” on the Invention Disclosure Form?
- Unlike authorship of a
scientific publication, inventorship is a matter of law. A patent that
fails to name the correct inventors may be ruled invalid.
lawful inventor is one who makes an inventive contribution to one or more
of the claims that formally define the invention -- a person who makes an original, significant intellectual
contribution leading to the conception of the invention.
Someone who provides equipment, space or money, no matter how critical to
the development of the invention, is not an inventor. Also, someone who
performs work under the supervision of another party is not an inventor,
even though that person may have worked long hours or conducted a critical
patent claims may change as the patent application is being drafted and
also while it is undergoing prosecution by the patent office, inventorship
may change as well.
the purposes of filing your Invention Disclosure Form
with the ORA, simply name as inventors any individuals who have made a
creative contribution to the invention (a creative contribution may
include contributing a seminal idea towards the conception of the
invention or overcoming a technical hurdle in the reduction to practice of
the invention). When necessary, the ORA will initiate a formal
inventorship determination using outside patent counsel.
Is software valuable?
any invention, software is an asset that has value to the University and to its
author(s). Often even the simplest software function has commercial value
simply because of the time invested in writing the code, not to mention the
expertise needed to develop the function.
Should I file an invention
disclosure if I have created software?
should be disclosed to the ORA early in the development process. Disclosure to
the ORA should be made before any public disclosure (oral or written) of the
information is made. In this way, an informed evaluation can be completed for
the potential invention and an appropriate protection and marketing strategy
How is intellectual property
Generally, by federal patent law, federal
copyright law, federal trademark law, state trademark law, state laws regarding
trade secrets and other laws related to businesses and contracts.
What happens if my invention is
In the United States, if the invention has been described
in a printed publication anywhere or has been in public use or on sale more than one year before an application for patent is filed, a
patent cannot be obtained. In most other countries, once the invention has been
described in a printed publication or has been in public use or on sale, a
patent cannot be obtained.
What is a “public disclosure”?
disclosure is any transfer of information about your invention, written or
oral, into the public domain or to any party not obligated to keep the information
confidential. If it is “enabling,” a public
disclosure immediately bars one from obtaining foreign patent protection and
starts a one-year grace period from the date of the disclosure during which
time a U.S. patent application can be filed.
An “enabling” public disclosure is one wherein the work is
described in sufficient detail such that one of “ordinary skill in the art”
could reproduce the invention without undue experimentation. Therefore, not all
public disclosures are enabling and all do not necessarily bar one immediately
from obtaining foreign patent protection. However, it is always best to contact the ORA to put a
Non-Disclosure Agreement (NDA) in place prior to any discussions concerning
your research with parties outside the University.
Many companies are not interested in licensing inventions
for which no foreign patent protection is available. Also, depending on the
invention, many companies are not interested in licensing the patent rights
unless they can get a license well in advance of the public disclosure in order
to have lead time over their competitors.
Written public disclosure includes published materials such
as journal articles, abstracts, posters, book chapters and proceedings. It
can also include demonstrations, exhibits, slides, other projected material,
information which is distributed or discussed at non-confidential meetings,
conferences, seminars or forums, private correspondence and catalogued graduate
theses. Electronic transmission of abstracts, articles or research reports is
also a form of publication or public disclosure. Descriptions of research
projects on your departmental or faculty web sites may also constitute public
Oral public disclosure is a slightly grayer area, but it
can include formal talks, meeting presentations, departmental seminars open to
the public, oral theses defense and even discussions with a single person about
your invention. In short, oral public disclosure encompasses any
discussions where another party could take detailed notes that describe your
Summary of common public
- Information discussed in a non-confidential setting
- Web posting
- Oral presentation
- Poster presentation
- Abstract publication available to scientific public or meeting
attendees either in print or online
- Manuscript publication including online publications prior to the
journal’s hardcopy release
- Thesis submission to a library or outside source
- Thesis publication
- Funded government grant
If you are uncertain if a disclosure will be considered an
enabling public disclosure, please contact the ORA.
Is a grant proposal considered a
grant proposal is not considered a public disclosure until it is available to
the public for review. Grant
applications to federal agencies can constitute public disclosure as they are
accessible under the Freedom of Information Act. However, you can take
certain steps to help maintain the confidentiality of patentable materials
within the application by placing a notice on the first page of the proposal
that states: "Confidential Information - Pages ___ to ___ contain
potentially patentable information." List the pages containing the
confidential information and write "CONFIDENTIAL" on each page that
contains the information.
the ORA can also file a quick provisional patent application before you submit
Does public disclosure/publishing
my data interfere with patenting?
public disclosure interferes significantly with patenting if you have not taken
the appropriate steps to maintain patent rights. If you publicly disclose
your invention, you immediately lose most foreign patent
rights. Additionally, you have only one year from the date of public disclosure
to file a patent application within the United States. If you wait longer
than one year, your patent rights are also lost in the United States.
publishing of data constitutes a public disclosure of an invention, and is
considered prior art. Although it may seem unfair, your own publication
may be used against you as prior art when you attempt to patent your
invention. Therefore, it is extremely important to inform the ORA of your
plans to publish or present data if you also desire to obtain a patent on your
How do I protect intellectual
property rights before public disclosure?
best way to protect intellectual property rights prior to public disclosure is
to contact the ORA to either get an NDA in place, in the event of discussions
with a company, another institution or an individual, or to get a provisional
patent application on file with the USPTO.
Wouldn't it be more beneficial to
the public to publish my data, rather than try to patent my invention?
may seem that University inventions and discoveries should be entirely
dedicated to the public by making a completely enabling disclosure in the form
of a publication. However, most inventions that come out of universities
need further development before they are ready to go into production. No
commercial entity would invest the large amount of resources necessary to
further develop a technology if it had been entirely dedicated to the public
though a publication. This is because without the protection provided by a
patent (through licensing from a university), a competitor company can reap the
financial benefits once the invention has been perfected by the first
commercial entity. Therefore, patents actually benefit the public more
than a simple public disclosure by encouraging companies to further develop the
technology and, in the end, provide a fully developed product.
however, the ORA can work with you to protect inventions prior to publication.
We want to make it possible for you to both patent and publish.
What can be publicly disclosed
before a patent application is filed?
In the absence of a signed, valid confidentiality
agreement or a filed patent application, it is generally not a good idea to
make any kind of
public disclosure of your potential invention. What constitutes a public
disclosure depends greatly upon the circumstances under which the information
is being disclosed and the nature of the disclosure. Accordingly, it is
strongly advisable for you to discuss a pending disclosure (including a
publication submission, a presentation of a poster, paper or abstract at a
meeting, or meeting with a company) prior to the disclosure with the technology
transfer staff in the ORA.
Should I contact the ORA before
talking to a company about my invention?
Yes. In order to maintain the confidentiality of your invention, you should contact
the ORA to put a Non-Disclosure Agreement ("NDA") in place with the
company prior to your
discussions. If you do not have an NDA in place before discussing your
invention with a company, it can constitute a public disclosure and patent
rights to the invention may be lost.
What is a Non-Disclosure Agreement
Non-Disclosure Agreement (NDA), also known as a “Confidentiality Agreement” or
“Confidential Disclosure Agreement (CDA),” is an agreement whereby one party
agrees to hold the proprietary technical and/or business information of the
other party in confidence. NDAs are a standard tool of the trade and many
companies are amenable to having access to a technology under the terms of this
type of agreement.
Who can sign a Non-Disclosure
Only authorized individuals (the Vice Provost for Research or the Chancellor) can sign an NDA on
behalf of the University. PRINCIPAL INVESTIGATORS ARE NOT AUTHORIZED TO SIGN
THIS AGREEMENT ON BEHALF OF THE UNIVERSITY. If a company wishes to obtain
from UMSL, the investigator should contact the ORA.
What is a Patent?
patent is the grant of a property right to the inventor(s). U.S. patents,
issued by the United
States Patent and Trademark Office (USPTO), are effective only
within the United States, U.S. territories and U.S. possessions. A patent
right is "the right to exclude
others from making, using, offering for sale, or selling" the
invention in the United States or "importing" the invention into the
are three types of patents:
patents may be granted to anyone who invents or discovers any new and useful
process, machine, article of manufacture, or composition of matter, or any new
and useful improvement thereof;
patents may be granted to anyone who invents a new, original, and ornamental
design for an article of manufacture; and
patents may be granted to anyone who invents or discovers and asexually
reproduces any distinct and new variety of plant.
What is a Provisional Patent?
The provisional patent application is an
application that can be filed with the US Patent and Trademark Office (USPTO)
that establishes an early effective filing date of a patent application. The
provisional application is not examined by the USPTO, and may remain pending for one year. At the
end of the period, UMSL must elect either to drop the filing, allowing the
information to become public, or to convert the provisional application to a
regular patent application. The ORA will work with the inventors to make this
decision on behalf of the University.
How long does patent protection
and plant patents issuing from the applications filed after June 7, 1995, will
expire twenty (20) years from the date of filing. The terms of certain
utility patents, however, may be extended to compensate for the
resulting from the failure of the USPTO to examine a new application within 14
months of filing;
caused by the USPTO's failure to issue a patent within three years from filing,
unless the delay was caused by the applicant; and
caused by the USPTO's failure to take certain office actions for more than four
What kind of research is patentable?
For the standard type of patent, called a utility
patent, an invention may be any new and useful process, machine, composition of
matter, or article of manufacture (i.e. an artificial, man-made thing rather
than an unprocessed, natural
object or material), apparatus, instrumentation, circuits, computer programs,
biological materials, chemicals. An improved version of previous technology may
be patentable, as well as a new use for an existing technology. The process of
invention begins with conception of the invention. Inventions eligible for a
U.S. patent must be novel, useful, and non-obvious:
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 disclosed.
The invention must demonstrate some
application or utility, or be an improvement over existing products and/or
- What does “non-obvious” mean?
A patentable invention must be “non-obvious” to
someone of “ordinary skill in the art.” This does not include recognized
experts in the field. One guideline of non-obviousness is when the change 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 used 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 that the
invention is not obvious to one skilled in the art.
What is prior art?
Art refers to public knowledge existing before the date an invention was made
that is related to the invention or is in the field of the
invention. Prior art can include published journal articles and abstracts,
previously filed patents, and, in some cases, non-written knowledge made public
such as material presented at a scientific conference. In order to obtain
a patent, an applicant (inventor) must not only prove usefulness, but also that
his/her invention is novel over the prior art and non-obvious to someone of
ordinary skill in the art.
What is a barring event?
The publication, use, offer for sale or sale of an invention anywhere in
the world is known as a barring event. If a year passes between one of these
events and the date when a patent application is filed on the invention, the
inventor is barred from patenting the invention in the United States. A barring
event may and often will immediately preclude UMSL or the inventor from seeking
patent protection in a country other than the United States.
Who prepares and prosecutes patent
The ORA retains the services of highly qualified
patent attorneys selected on the basis of their specialized knowledge in
various fields of expertise. They prepare and prosecute patent applications.
What is the cost of obtaining a
cost of obtaining a patent depends on multiple factors, including the amount of
protection desired (domestic versus foreign) and the complexity of the patent
prosecution. The costs for prosecuting a U.S. patent application typically
range from $15,000 to $40,000 through issuance. Costs for prosecuting foreign
patent applications can range from $10,000 to $15,000 or more per country for
filing. Maintenance costs add several thousand dollars per patent.
Who pays for the patent application?
The University pays for all costs associated with the preparation, prosecution
and maintenance of patents unless other arrangements are made with a collaborating entity. UMSL seeks reimbursement of patent costs through
How does the ORA manage patent
The ORA seeks to recover its investment by licensing the patent
rights to competent, committed commercial developers.
The ORA’s objective is not to file patent applications for the
sake of filing them, not only because of the high cost of patent protection but
also because not every patentable invention is licensable. Also, not every
invention must be patented in order to be licensed, including tangible
materials such as cell lines, transgenic mice, plasmids, and integrated circuit
masks. Also, software can be licensed under a copyright license, and a
copyright license for high quality, value-added software can be more lucrative
than many patent licenses.
The ORA’s objective is
to file patent applications strategically to maximize the value of inventions we
have determined are licensable because they represent a sound business
opportunity and will afford competitive advantage to a licensee.
- In order to best manage
the costs and risks inherent in patent applications, the ORA typically
will not file a patent application until it has first found a committed
licensee, and then it will file the patent application at the licensee’s
expense. This minimizes financial exposure and facilitates patenting of
only those inventions with true commercial potential. In addition, this
strategy allows the licensee to participate in drafting the patent
application so that the patent claims better support the licensee’s
specific business needs, allowing for more favorable financial returns.
some circumstances, the ORA will file a patent application “at risk” — without
having first found a licensee to pay patent costs. Such filings are usually
the result an imminent public disclosure of the invention that would
result in the loss of foreign patent rights unless a U.S. patent
application is filed prior to the public disclosure. The ORA will make an
at-risk filing if its business analysis of the invention leads the ORA to
believe there is an excellent probability that a future license will
result. Such analyses take considerable time if done properly, so it is
imperative that you disclose your invention to the ORA well in advance of
any public disclosure.
Why are some inventions not
inventions and discoveries are best to remain in the public domain in order to
ensure that they are freely and widely available.
many early-stage technologies, the invention is in such an early stage that a
patent application would not result in the issuance of a patent by the
USPTO. In such cases, the ORA will encourage the inventor(s) to submit
additional information to the ORA when the new information is available for a
reevaluation of the technology.
What is a copyright?
A copyright is the grant of protection by the
laws of the United States to the authors of 'original works' including
literary, dramatic, musical, artistic, architectural and certain other
intellectual works, and is available for both published and unpublished works. An owner has the
exclusive right to authorize others to reproduce the work; create derivative
works; distribute copies of the work; perform the copyrighted work publicly,
display the work publicly, and if it is a sound recording, perform the work
publicly. Software may be copyrighted, but may also, in certain circumstances,
be protected by a patent.
How do you file for copyright
Copyright protection automatically exists from
the moment of creation, and a work is created when it is fixed in a tangible
form. Therefore, no publication or registration or other action by the
Copyright Office is required to secure a copyright, although certain advantages are retained
for registered copyrights, such as the right to seek damages for copyright
infringement. The ORA can assist in the process of registering a copyright.
COLLABORATIONS & CONSULTING
What if a collaborator from another
institution has contributed to my invention?
has inter-institutional agreements (IIAs) with several universities, research
institutions and other organizations, and may negotiate such an agreement with your
collaborator or institution. This type of agreement determines which institution
would take the lead in patent and licensing of the invention, as well as how
any royalty income would be shared. Each inventor should separately disclose
the invention to his or her home institution.
I made an invention while consulting for a company and my client wants
to file a patent application on it. Do I need to do anything besides helping
the client with the application?
Although your consulting agreement most likely stipulates that the
company owns any inventions you make in your capacity as its consultant, your
employee agreement with the University dominates your obligations to your
client. Please contact the ORA as soon as possible — we will work with you and
your client to determine if the University has any rights to the invention in
whole or in part.
The company can take title to your invention if you made the
invention without using any University resources and the subject matter of the
invention falls outside the scope of your University research. If the
University has any rights to the invention, the company then may negotiate a
royalty-bearing license with the ORA for the University s rights in the
A company has requested my consulting services. Am I able to consult
while maintaining my position as a faculty member?
Faculty are able to consult as long as their obligations as
consultants do not conflict with their obligations as University employees.
Guidelines for policies on commitment of time for faculty and potential
conflict of interest can be found at www.umsystem.edu/ums/rules/collected_rules/personnel/ch330/330.015_policy_on_conflict_of_interest.
The University is not a party to consulting agreements, which are
private agreements between the company and faculty member. As such, the ORA
will not negotiate consulting agreements on behalf of University employees.
How is my invention marketed or
we do what we can to secure preliminary intellectual property protection, we
coordinate the formulation of a strategy and business plan for
commercialization. The most appropriate industry partners will be contacted,
and, pursuant to confidentiality agreements, we will coordinate the disclosure
of the invention and its potential. Often discussions with prospective partners
lead to new business plans and strategies or modifications of those developed
at an earlier stage. When a good fit is determined, we coordinate negotiations
intended to lead to a sale or license of the invention.
What is a license agreement?
license agreement is the standard agreement format by which the University and
the Company seek to reach mutually acceptable licensing terms regarding an
invention. Strategies for transferring inventions from universities to industry
are based upon non-exclusive, exclusive, or limited-field licensing. A
non-exclusive license is suitable for technologies, such as research tools, that
are of interest to a number of companies. Exclusive licenses are generally
granted for technologies where product development requires significant effort
and investment on the part of the licensee. An exclusive market position is
often necessary to justify the expense of the license. Exclusive licensing by
discrete fields of use is most appropriate for some technologies because it
allows for parallel commercial development of multiple fields or applications
of the invention. All license agreements must protect the mission of the
University by ensuring that faculty inventors retain rights to continue
research in the licensed field, publish freely, and disseminate tangible
research properties related to the technology to other academic researchers.
How are licensees found for new
Licensees can be identified in many ways:
- The inventors often are aware of the commercial
companies who would be interested in the work.
- Industry-specific marketing efforts including
trade show participation, affiliations and market research carried out by the ORA also serve to
identify potential licensees.
patents listed can provide names of companies who currently have patents
similar in nature, and often times these can prove to be potential licensees as
Who conducts license negotiations on behalf of UMSL?
negotiations are handled by the Director of Technology Commercialization & Economic Development at UMSL.
What kind of financial terms are
included in a license agreement?
financial terms of a license agreement can vary greatly. They may include, but
are not limited to, up-front fees, license reissue fees, minimum annual
royalties, milestone payments, royalties and equity. Financial terms vary widely
and are tailored to fit the specific nature of each technology and each license
Can equity be included in a
may be transferred to the University in a license transaction as partial, or
sometimes total, compensation for the rights conveyed. Typically, equity plays
an important part in licensing to a start-up company.
How long does it take
to execute a license agreement?
Every license is unique in
that it brings together University intellectual property to solve a company's
Once the IP is identified by the company, terms of a license need to be negotiated.
Execution can take as little as a few weeks to over a year, depending on the
complexity and the response times of all involved.
If the University licenses my invention to a company, will I still be
able to perform related research?
Yes. Our license terms always retain
the right for the University to use the invention for educational and research
Who signs license agreements?
UMSL, only the Chancellor is authorized on behalf of The Curators of the
University of Missouri to sign license agreements. ORA staff and UM General
Counsel provide reviews to ensure compliance with university policies.
How is the income from licensing an
University's current income distribution policy is as follows:
- 1/3 to Inventor(s), before expenses
- 2/9 to Inventor’s Department(s)
- 2/9 to Campus (Technology Transfer Account)
- 2/9 to UM System (patent fund)
What happens if an inventor leaves
an inventor leaves UMSL, the inventor is still entitled to the inventor's
personal share of license revenue disbursement.
What happens if UMSL does not
license my invention?
within a reasonable amount of time, a likely licensee has not been identified,
the ORA may offer a license back to the inventor(s) or possibly decide to
release title to the invention. Depending on the source of research funding,
the inventor(s) may be able to obtain title to the invention. If the invention
was made using federal research support, the ORA can only recommend to the
government that rights be returned to the inventor(s).
What if I want to form a start-up
company with my technology?
part of its mission to commercialize University technologies, UMSL will
consider licensing requests from faculty inventors who want to start new companies
with the technology that they have created. Although not obligated to do so,
the ORA is willing to license technology to a faculty start-up company,
provided that the faculty inventors demonstrate a clear commitment and ability
to develop the licensed technology. Additionally, a faculty inventor's
involvement in such a start-up company must be disclosed to the ORA through a
Potential Conflict of Interest disclosure.
Does the University sell
intellectual property rights to third parties?
not. Rights are granted to a third party on either an exclusive or
non-exclusive basis to manufacture, have manufactured, and/or sell or use the
technology to create products or processes. Licenses are granted such that the
intellectual property must be returned to the University if the third party
fails to fully develop and commercialize the rights granted. A sale of
technology generally means there is no provision for return.
What is a Material Transfer
university faculty want to share patented or unpatented intellectual property
material (new compounds and formulations, biological research materials,
genetic constructs, data sets, computer software and applications, etc.) with
their colleagues at non-profit institutions for research purposes, the
materials should be transferred under a Material Transfer Agreement (MTA). MTAs
are binding legal agreements between the provider of research material and the
recipient, which set forth the conditions of transfer and use, protect proprietary
interest in the material, and restrict distribution. Most importantly, the MTA
requires the recipient to indemnify the provider from any liability arising
from the use of the material. Executing an MTA also helps to preserve the
faculty and University's intellectual property rights while recording the
transfer of the invention to another party.
When is an MTA necessary?
are necessary any time a researcher at the University wishes to send or receive
materials of a confidential or proprietary nature; material that is infectious,
hazardous or subject to special regulations; material for which the provider is
concerned about potential liability; or material for which the provider wishes
to obtain rights to the results of the research in which the material or
information is to be used.
Who can sign an MTA?
Chancellor has the authority to sign an MTA. Many MTAs ask for the researcher
to sign the MTA, which is acceptable if the signature is to confirm that the
researcher has read and understood the terms of the MTA. However, MTAs are
agreements between the Curators of the University of Missouri and the Provider
or Recipient — the researcher is not a party to the agreement. As the
University is the party to the agreement, only individuals authorized to sign
such agreements on behalf of the Curators have the authority to bind the
University to an MTA.
What happens if someone without
authority signs the MTA?
What is the Uniform Biological Material Transfer Agreement (UBMTA)?
the worst-case scenario, the unauthorized signatory would be held personally
bound to the terms of the agreement. Most likely, when the unauthorized
signature is discovered, the ORA will have to notify the other party and then
proceed with negotiations to arrive at an agreement that can be signed by the
Uniform Biological Material Transfer Agreement (UBMTA) was developed by the
Association of University Technology Managers (AUTM) in conjunction with the
National Institutes of Health and the Centers for Disease Control to facilitate
transfers of materials between NIH-funded researchers and, more generally, for
transfers between academic institutions. Institutions that are a signatory
to the Master Agreement are able to transfer materials under the terms of the
UBMTA simply by sending a simple letter agreement.
Are there any alternatives to using
materials that are commercially available, the option of purchasing those materials
may be considered. Sometimes, obtaining a material through an MTA will be
problematic but purchasing the material will bypass the issues. At other
times, pursuing sponsored research with a company will be a viable alternative
to a MTA.
How might using materials
obtained from other academic institutions or companies affect my research and
Materials are obtained from other academic institutions and
companies using MTAs. Through these agreements, the provider often receives the
ability to review manuscripts, abstracts and the like prior to submission and
to practice any inventions made with the materials for internal research
purposes free-of-charge. In addition, the provider often receives the first
right to commercialize any intellectual property arising from the UMSL research
involving the materials. Other terms, such as confidentiality provisions and
restrictions on transferring modified materials, also may affect your
research/intellectual property rights.
Therefore, the potential for third-party conflict and colliding
interests exists, particularly if the research is being performed with
sponsored research funding or if materials from multiple sources are commingled
in the same research program.
It is important to work closely with the ORA staff handling your
laboratory’s MTAs, Collaboration Agreements, and/or Sponsored Research
Agreements. Unfortunately, the potential for conflict and colliding interests
can, at times, prevent an agreement from being acceptable to the University.