What is Intellectual Property (IP)?
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.
IP 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 property important?
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 the University 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 the UM Collected Rules & Regulations, Chapter 100.020 section C2).
This 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).
The 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.
In most cases, ownership is obvious; however, there can be exceptions. If you have questions about whether the University has an ownership claim, please contact us as quickly as possible for analysis.
It is important that you discuss the situation with the UMSL OIPMC 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 the way 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 the U.S. now grants patents to the first inventor to file rather than the first to 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 "first-to-file" country?
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.
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Notebook entries should be made in ink, using a permanently bound notebook with sequentially numbered pages.
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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 weeks.
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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).
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Provide detail. However, keep conclusions short and supported by the factual data. Avoid opinions or speculation.
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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.
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Identify the project to which all data relate. If possible, indicate the project or experiment number, or at a minimum give a brief descriptive heading.
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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.
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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).
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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 lab notebook.
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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 entries.
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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.
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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 tests.
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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.
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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.
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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 photographer.
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Never remove original pages from a laboratory notebook.
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Keep laboratory notebooks in a safe place when not in use.
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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.
SUMMARY:
- 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?
The 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.
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 University that you make concomitant with your employment by the University so that the UMSL Office of IP Management & Commercialization can determine whether the University has any rights to the invention.
Do I have to disclosure my research discoveries?
Yes. You can disclose your research discoveries by completing an Invention Disclosure Form. Such disclosure should occur prior to public disclosure.
When is the right time to submit a disclosure?
Whenever 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 manuscript.
Do I need to demonstrate that my invention works before disclosing it to the University?
Because much can be lost by not contacting the UMSL IP Management & Commercialization office 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?
Official 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 patent 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.
For copyright licenses, the author(s) receive 50% of copyright licensing revenues brought in by the University. The inventor's department(s) receives 50%, usually with some percentage of that share going to the campus technology transfer office.
How do I inform the University regarding a possible invention in my lab?
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Call or email Tamara Wilgers, Director - IP Management & Commercialization ( wilgerst@umsl.edu, ext. 6884), and/or
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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) I have?
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Federal 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.
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Another 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?
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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.
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Disclosing early affords many advantages, including proper assessment of the technology, development of an appropriate management and marketing plan by the UMSL Technology Transfer Office, and the ability for interested companies to evaluate the licensing opportunity before the opportunity to obtain patent rights is lost.
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Depending 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 competitors.
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Importantly, 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.
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If you have already submitted your work in abstract or manuscript form, contact us as soon as possible.
What happens once I have submitted an Invention Disclosure Form?
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We will review your invention with you and coordinate a preliminary evaluation of the invention’s potential for IP protection and successful commercialization.
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With the information gathered in the evaluation, we will decide whether to file a patent application to protect the invention.
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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.
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If the technology appears commercially viable, a marketing plan will be developed and undertaken.
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Once a committed licensee is identified, the IP Management & Commercialization office will be responsible for negotiating the license to the technology.
Who should be listed as “inventors” on the Invention Disclosure Form?
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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.
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A 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 experiment.
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Because 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.
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For the purposes of filing your Invention Disclosure Form, name as inventors the 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 University will initiate a formal inventorship determination using outside patent counsel.
Is software valuable?
Like 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?
Software should be disclosed to the University early in the development process. Disclosure to the University 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 (e.g., patent applications, copyright registration) and marketing strategy developed. Disclosure should be made using the Software Disclosure Form.
How do I know who is an "author" on a copyrighted work?
In general, the authors of a copyrighted work are those individuals who create the work with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. The parts of a work are interdependent when they have some meaning standing alone but achieve their primary significance because of their combined effect. Joint authors need not work together or concurrently. In addition, the respective contributions need not be equal either quantitatively or qualitatively. However, each contribution must be more than de minimis. In short, to qualify as a joint author, a person must show that she/she and the other author (1) intended to create a joint work; and (2) each contributed independently copyrightable material.
How is intellectual property protected?
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.