Protecting Your Intellectual Property: Frequently Asked Questions
What is intellectual property?
Intellectual property (IP) generally refers to creations of the mind that can be protected under federal law through patents, trademarks and copyrights. A patent, which protects an invention, is the most common form of intellectual property managed by the Office of Technology Transfer. Other types of intellectual property include copyrights and trademarks.
Who is the inventor?
Although it is convenient to speak of an invention as the product of an inventor, an invention may be the product of more than one mind. "Inventorship" is a legal concept that is established by the claims that actually issue in a patent. It is reasonably clear that a person who has merely followed instructions of another in performing experiments is not a co-inventor of the object to which those experiments are directed. One need not be able to point to a specific component as one's sole idea, but one must be able to say that without his contribution to the final conception, it would have been less efficient, less simple, less economical, and such contribution is expressed in the claims of the patent application.
Peter D. Rosenberg, Patent Law Fundamentals, 2nd edition, Clark Boardman Company, LTD. New York, 1987, p.11-4.
Who owns the intellectual property I develop while at UTMB?
In general, the Board of Regents of the University of Texas System owns inventions made by its employees while acting within the scope of their employment or using university resources. The rules of the UT System concerning intellectual property appear in the 90000 series of the Rules and Regulations of the Board of Regents.
Why should I care about protecting my intellectual property?
If you have developed something new that is useful to you, it may also be useful to others. Depending on the market for a product, sales may generate profits for the maker and royalties for the inventor and university. Further, generating intellectual property might provide leverage for a research sponsor to fund research at UTMB.
However, if you have not properly protected your intellectual property, other individuals or companies could use it and not share the recognition and profit. Most companies are reluctant to fund research and development of products lacking appropriate patent protection. Under The University of Texas System Intellectual Property Policy, the inventor shares in 50% of the royalties that result from licensing intellectual properties.
What are patents and copyrights?
Patents and copyrights are legal mechanisms to protect intellectual property. Intellectual property protected by a patent or a copyright may not be used by any individual, other than the owner of the patent or copyright, except with the express permission of that owner.
What types of intellectual property can be patented?
A patentable invention includes a process, a machine, an article of manufacture, a composition of matter, an improvement, or a new use of the same.
What types of intellectual property can be copyrighted?
Copyright protects the expression in articles and books; pictorial, graphic and sculptural works; motion pictures and other audiovisual works, particularly video productions, sound recordings, and computer software. Copyright gives the owner exclusive right to publish or copy the work. While copyright attaches upon creation of the work, legal enforcement of one's rights is possible only if the copyright is registered in the Copyright Office.
The University of Texas System does not assert ownership interests in scholarly books or articles unless such work is commissioned by The System or Component Institution of The System or is a work for hire. The System does assert an interest in computer software and videotapes; for these an invention disclosure should be filed.
What is royalty?
Patent licensees typically pay a specified financial amount (i.e., a "royalty") based upon the sale of products covered by a patent.
How do I obtain a patent or a copyright?
If you are a full-time or part-time employee or student at UTMB and if you think that you have developed intellectual property that could be patented or copyrighted, you should file an invention or copyright disclosure with the Office of Technology Transfer. After a review (including patentability and marketability review), the disclosure may be forwarded to a patent attorney to provide appropriate legal protections. UTMB has the ultimate authority to maintain or decline an interest in the intellectual property.
What if the University does not assert its interest?
If the University does not assert its interest in the intellectual property it is formally released to the inventor(s). In the letter provided to the inventor(s) by the OTT, the University identifies the conditions under which the invention is being released. For example, the UT System usually retains for itself and its component institutions a royalty-free right to use the invention in educational, research and patient care activities or the System may require that the institution receive a small percentage of the royalties received by the inventor(s).
What can be done to protect computer software?
Computer software can be protected by patent or copyright, depending on the nature of the software with regard to novelty, nonobviousness and disclosure. While most ordinary programs, or the mathematical algorithms on which they are often based, usually are not patentable, there is increasing use of patent protection being afforded to algorithms used to implement novel and nonobvious processes. Many such patents provide protection for the algorithm and not just the specific implementation of a computer program.
Copyright protection is widely used for computer software because it is easier and less costly to obtain. Copyright protection can be obtained for original software, whether an application program, an operating system or a database. Publication of the software is not always required. Copyright protection only protects the specific work so that it remains possible for others to independently create programs with identical or equivalent capabilities.
Will it be worth my time and effort to go to all of the trouble of filling out a bunch of legal paperwork?
The University of Texas System Intellectual Property Policy states that the inventor(s) will receive 50 percent of the royalty income derived from the invention and UTMB will receive 50 percent after the costs of licensing and protecting the property have been recaptured (the cost of patenting or copyrighting). The inventor's 50 percent will be paid directly to him/her. The proceeds may be used by the inventor any way that he/she sees fit, including further research at UTMB.
Are there any special rules that I need to keep in mind?
Yes! The most important of these is that for all U.S. patents a patent application must be filed with the United States Patent Office within one year after "publication" or public use of the invention. International patent protection must be secured before publication or presentation. Publication, as used here, means a public presentation, whether by an oral presentation at a scientific meeting or by an abstract or article in a journal. If you are unsure as to what constitutes a "publication," consult the OTT in advance.
But if I disclose my work to the Patent Office or the Copyright Office, have I given up the right to publish?
No. When the editor of a journal and the chairman of a program committee of a scientific meeting state that the material must not have been presented elsewhere, they specifically exclude submissions for the purpose of patenting or copyrighting. An appropriate approach would be to file your invention disclosure before you submit your manuscript or abstract for publication or presentation. Therefore, early submissions to the OTT are strongly encouraged.
How do I protect my intellectual property rights?
I'm at the stage in my research where I need to solicit external support, and the most likely source is a company that might be interested in marketing my invention if everything works as expected.
Although most commercial companies may respect your intellectual property rights, it is always best to protect your own interests carefully before public disclosure. In general, you should not communicate the details of your invention in preliminary discussions, whether oral or written. As soon as possible, but certainly before you send detailed information, we will negotiate a Confidentiality Disclosure Agreement that protects both parties. This link provides a standard UT System Confidentiality Disclosure Agreement.
Under the terms of the Confidentiality Agreement, the company is not to divulge your information to any other company and not use it for any other purpose.
Where can I get further information about intellectual property?
The OTT is the UTMB office that advises faculty and staff about intellectual property. The invention disclosure forms and other information about patents and copyrights may be obtained by contacting the OTT.