The process put in place at YSU is designed to ensure that both inventions and inventors (faculty and staff) are treated consistently and in accordance with all policies and procedures. Additionally, the institution must ensure that inventions and inventors remain in continual compliance with any and all regulations imposed by any source(s) of external funding, including the Federal government.
Quick Guide for Intellectual Property
- Research your Invention. To be considered as intellectual property, the invention must generally be considered as: 1) novel/unique, 2) serving some credible/useful function, and 3) non-obvious. To be patentable, the invention also must
not have been used by others in this country, or patented or described in a printed publication anywhere prior to the date of conception. Researchers may wish to spend some time researching their invention to determine that it meets these criteria. Additionally, researchers should study financial data and other information to provide evidence of a potential return-on-investment (ROI). Patents may be of three types:
- Utility Patents - This classification constitutes the bulk of patents issued. A utility patent is used to protect an invention that is useful and that works in a novel or unique way.
- Design Patents - This classification is used to protect the appearance of an article. It does not protect the use of an invention. A Design Patent deals with the shape or surface ornamentation, or both.
- Plant Patents - Plants may be protected if the uniquely created plant results from any asexual reproduction process: grafts, buds, root cutting, etc. Sexually produced plants are protected under the Plant Variety Protection Act
- Make Agreements. If the invention was borne from participation between multiple faculty or staff, the team should discuss and come to an agreement on how they prefer their distribution of royalties during the age of ownership (should the invention make a profit).
- Policy and Procedure. The employee(s) in the course of research, scholarship, or other activities who is expected to yield intellectual property must maintain accurate documentation of the discovery, have it witnessed (i.e., documentary supporting documents such as laboratory notebooks), and communicate the discovery to the Office of Research. If the discovery has been “reduced to practice,” the employee completes a final Invention Disclosure (Appendix IV) to the Office of Research for review. If the discovery is of a preliminary nature a Preliminary Invention Disclosure is completed and sent to the Office of Research. Upon receipt of the disclosure, the Associate Vice President for Research (AVPR) will determine if the University has a legal ownership interest in the intellectual property.
- In the completion of Invention Disclosure Forms, please be as thorough as possible, as these forms help determine patentability and the potential support of commercialization. Researchers and inventors should be prepared to address issues or questions related to inventions made as a result of a federal or state funded grants and if the research (or technical details) has already been published or otherwise disseminated. In general, remember that if the invention was created on university time, with university computers, and with university students, then the university will usually have some claim on the invention. Inventing a product and owning a product are not the same. YSU may have the legal right to claim ownership for part of the intellectual property.
- If publication or public disclosure of the intellectual property has already occurred or is expected to occur in the near future, consideration will be given to application for a Provisional Patent in order to extend the patentability of the Intellectual property for one additional year. If research is being carried out in an area which has a high probability of producing intellectual property, all investigators should consider the effect of publication or public disclosure of their research findings.
- YSU Handbook on Ownership of Intellectual Property [March_2012]*
- YSU Policy 10-18 Intellectual Property Rights [December 14, 2011]**
- University Research Council. If the University does have some ownership rights, the AVPR will consult with the University Research Council (URC), as internal advisory body and/or external consultants as needed to determine whether the University may have interest in proceeding with the patent protection process. The decision to initiate the patent application process will be based on the evaluation of the ability to commercialize intellectual property and likelihood that it will yield royalty income. In some cases, if the public interest would be served by seeking patent protection (as in the case of an orphan drug, for example) the university could also move forward with the patent application. The URC will discuss the invention and determine the interest in which the university may wish to have partial ownership (or assert YSU's rights) pursuant to policies. It is common for the inventor(s) to present their invention to the committee. The inventors may also be asked questions or asked to elaborate on the credibility, costs, development, and potential for income generation of the invention. The URC may recommend or deny the invention for continuation.
- General Counsel. The AVPR will also communicate with the University General Counsel, to seek the advice of outside counsel in the matter of researching and protecting the intellectual property if it appears that the invention may have commercial or public value if it is commercialized. Patent Counsel may be retained to proceed with submission of the patent application to the U.S. Patent Office on behalf of the University.
- Assert Institution's Protection Rights. Based on the findings and advice of legal counsel, the AVPR, the URC, and university administration, the institution may proceed to secure funds to copyright, patent, trademark, or license (including any provisional patent). In cases of provisional patents, the application will be made to the U.S. Patent and Trademark Office (USPTO). Within twelve (12) months after the provisional patent application is filed, a determination is whether or not the invention will move forward to a non-provisional patent application.
- Marketability. After YSU's rights and property are protected, the institution and/or the researcher/inventor may prepare the product for publication, tech transfer, and any commercialization. As a rule, a researcher generally does not have the authority to negotiate for the sale of the product on their own (considering that the institution will likely have a significant share of the royalties/proceeds). Such negotiations are normally the responsibility of the URC, legal counsel, and researchers.
- Policing. In the event that a patent is issued, the AVPR will seek an external agency to track patent infringement in order to protect the invention.Intellectual property theft is a serious offense. If you are aware of any YSU intellectual property which has been misused, please notify the Office of Research immediately by email.
- Revenue. The AVPR will monitor the generation or royalties and oversee the distribution of royalties according to existing University Policy and other contractual agreements. All royalties and proceeds made toward any sale of the invention will be aligned in accordance with union contracts and university policy.
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