Protecting Your IP
The KUCTC Startup Guide is intended as a quick reference tool for KU & KUMC faculty, students and staff inventors interested in starting a company based on their IP which may be owned by the university. Where can you go for help? This guide summarizes the many resources available to the KU & KUMC inventors and the policies that are most relevant.
This guide was assembled in July 2014. The policies and practices may be revised from time to time. Inventors should refer to the universities policies for current guidelines on intellectual property, conflict of interest and other issues. Additional information may be found on the KU Center for Technology Commercialization website: kuctc.ku.edu or by contacting our office at 785-864-6401.
The innovation and discoveries you create at KU have the potential to change the world, but the first step is protecting your intellectual property.
KUCTC will review disclosures dealing with patentable material, copyrights, software, tangible property, utility patents, biological materials, and more.
While the process can be time-intensive, we won’t inhibit your ability to publish or disclose your idea once we file for intellectual property protection.
TYPES OF INTELLECTUAL PROPERTY
Copyright is a form of legal protection provided by the United States to the authors of “original works of authorship” giving them exclusive rights to it, and to be credited and paid for its use. This protection includes literary, dramatic, musical, artistic, and certain other intellectual works and is available to both published and unpublished works.
A patent provides the right to exclude others from making, using, selling, offering for sale, or importing the patented invention for the term of the patent, which is usually 20 years from the filing date. Patent approval can be a long and costly process. An invention must be described in sufficient detail to the Patent Office to teach someone in the field of the invention to make and use the invention just by reading the description. Applications for a patent will publish and be subject to a lengthy review process that is subject to public inspection. To get a patent, an exclusionary right, the inventor must successfully demonstrate that the innovation is new, useful, and not obvious.
Simply stated, a trademark is a brand name. A trademark or service mark can include any word, name, symbol, device, or any combination that identifies the goods or services of the owner of the mark.
Protecting intellectual property is vital for software developers. This protection can take a few different forms; copyright, patent, trademark and trade secrets. Patents, copyrights and trade secrets protect the code itself. Trademarks protect the unique name or symbols associated with the software.
Your lab notebook is the foundation for a permanent record detailing what was done during the course of a project and what inventions were made and when. These records are a critical element in the patenting process, providing evidence of first-to-invent. While ‘first-to-invent’ status has been subjugated to ‘first-to-file’, it still plays a vital role during court proceedings, if necessary.
Good record keeping should be consistent and complete throughout your research, detailing what was done, the purpose for the work, and the findings.
Records should include dates, all raw data and results of each experiment, as well as the protocols and designs, including descriptions of the calculations, equipment used and any output (charts, photos, etc.). Write down conclusions and the next steps, including plans for future work.
A witness should sign and date each notebook page within one week. The witness should not be directly involved with the work, but they should understand the work being studied.
PUBLIC DISCLOSURE AND PATENT BARS
What constitutes a public disclosure?
Under patent law, a public disclosure is any non-confidential communication of an idea or invention. Public disclosures may include the following: conventional academic printed and online publications, abstracts, master’s theses, Ph.D. dissertations, open thesis defenses, presentations, poster sessions, department and campus seminars, information posted online and publicly available abstracts of funded grant proposals.
To prevent public disclosure, grant proposal abstracts should be high-level and not describe the invention. Grant applications typically are not made public, although grant final reports can be available to the public and would be considered a public disclosure.
Not all disclosures result in the loss of potential patent rights. In order for a disclosure to bar the patenting of any invention it has to be “enabling.” This means that the disclosure has to provide enough of a description of the invention for a person “of ordinary skill in the art” to practice it.
Public Disclosure Can Lead to Loss of Patent Rights
In the U.S., an inventor’s public disclosure of their own work made less than one year prior to their patent filing date will not count as prior art. This is referred to as a grace period for the inventor’s own disclosure. Note: the time window between an inventor’s public disclosure and patent application filing date allows others to publish similar work or work that builds off your own work. These intervening publications may prevent or hinder patentability of your invention.
If your public disclosure was made more than one year before your patent filing date, it is considered prior art and may prevent you from obtaining a patent.
In most countries outside the U.S. there is no inventor grace period and any public disclosure prior to filing a patent application filing can prevent you from obtaining a patent. Foreign jurisdictions require “absolute” novelty. This is the standard in most of the world. Thus, as a best practice, it is always most desirable to determine whether a patent application should be filed before any public disclosure.
Types of Disclosures Qualifying as Public Disclosures
Email correspondence: Providing information to individuals outside of KU by email, letters or other correspondence without indicating that the information being provided is confidential could also constitute disclosure.
Grant proposals: Grant proposals to federal agencies are deemed publications as they are accessible under Freedom of Information Laws, but you can take active steps to ensure that information you provide under grant proposals is maintained in confidence when necessary.
The first page of the proposal should carry the following notice: “Confidential Information--Pages __ to __ of THIS PROPOSAL contain potentially patentable information” List the pages containing the confidential information and conspicuously write “CONFIDENTIAL” on each page that contains the confidential information.
Posters, Abstracts, and Proceedings
- Oral disclosures: If at a formal talk, you distribute a copy of your presentation in which your invention is disclosed, it is clearly a disclosure. However, even if handouts are not provided but someone in the audience takes detailed notes that describe the invention, it would also constitute disclosure. For these reasons you need to carefully plan your oral presentations so that you do not inadvertently disclose your invention. Thus, conference presentations, departmental seminars, or thesis defense all present opportunities for public disclosure.
- Public Use or Sale: Distribution of research materials and prototypes, that embody the invention, may constitute disclosure under certain conditions. If the materials are provided without any restriction on use or further distribution it may be considered to be made available to the public. If they are clearly provided only for testing and/or evaluation or for research purposes under written agreements clearly specifying the same, it would not be considered disclosure. A sale or an offer to sell a research material or prototype also constitutes disclosure and could establish a bar date for patent purposes.
What activities do not constitute public disclosure of an invention?
- Lab meetings attended by KU employees only
- Faculty meetings – as long as they are attended only by KU employees
- Confidential submissions for publications – provided that the journal has confidentiality agreements with reviewers - prior to acceptance and publication
- Unfunded government grant applications
How can you protect your innovation from public disclosure?
Inventions can be discussed under a confidentiality agreement. Please contact KUCTC for more information.
PATENT PROTECTION PROCESS
From first filing to full protection, the patent process can cost $20,000-30,000; this cost is entirely borne by the university. Our first step is to assess the novelty of the innovation and the commercial potential. There are occasions when the idea is indeed unique, but research indicates that there is little to no commercial value. In that case, the university may decide not to proceed with the process, and the inventor may assume responsibility for the process if they desire.
The first filing is generally a provisional patent. The full patent process can be extensive and costly. In the interest of time and protection, the provisional patent makes the ‘first claim’ of the idea, and provides the university with a full year to file a full patent application. This provides KUCTC with the time to conduct a thorough market survey, identify potential licensing partners, and consult with third party experts for validation of the novelty and commercialization of the innovation. This research can provide useful information allowing us to file a ‘stronger’ patent application.
Filing a Patent
Within the first calendar year of the provisional patent filing, the university can file a complete patent application. This application will be reviewed by an examiner at the USPTO, who will assess the novelty and usefulness of the innovation. This process can take several years.
Most patent applications are rejected, and patent attorneys will respond to objections, often providing further documentation to the Patent Office.
Patent applications are published by the Patent & Trademark Office (PTO), and are published 18 months from the earliest date of filing. The 18-month period begins on the date of filing of a provisional patent application. A regular non-provisional patent application that follows a provisional filing (12 month pendency) will publish within 6 months of filing.
Examination of Patent Application
A PTO Examiner will search both the scientific and patent literature (collectively “prior art”), known and publicly accessible, prior to our date of filing to determine whether the patent application discloses and claims new and patentable subject matter. The Examiner will look at each claim of the patent on a claim-by-claim basis. The most common rejection of a patent claim is on the basis of the USC 103 (obviousness rejection). Under USC 103, the combined teachings of several prior art references can be combined by the Examiner to reject one or more claims. In rejecting claims, the Examiner takes the view that the combined references teach the inventive step of the applicant and render the claimed inventions “obvious” to one skilled in the scientific art being reviewed. The written result of the PTO examination is called an Office Action. Years can pass after filing before the PTO issues a first office action on an application.
Response to Office Action
The patent attorney, with the assistance of the inventor, responds to the examiner with arguments about why the invention is patentable. Steps 2 and 3 may be repeated. Often there are at least two office actions issued from the PTO before claims are allowed or given a final rejection.
Notice of Allowance
Notice of allowance is sent when the examiner is satisfied that all claims meet the criteria. The fee to issue the patent is due three months from the notice of allowance.
Patent is Issued
The term of the patent begins with the earliest effective filing date of the patent application. Maintenance fees are assessed at three, seven and eleven years of the patent term to continue federal protection.
We know that your passion is research and publishing. We never want to slow you down or impede your progress. Our staff is equipped to make this process as painless and fast as possible.
Disclose an Invention, Biological Material or Software Program -- Let us help you protect your IP
Faculty, staff and student inventors and creators should submit disclosures per KU IP Policy. The purpose of these forms is to record what was invented and the circumstances under which the invention was created. This is the foundation for a patent, and should be filled out as completely as possible when something new, useful, unusual or unexpected has been obtained. http://kuctc.ku.edu/faculty/protect-your- ideas/disclose-invention-biologicalmaterial-softwareprogram
Material Transfer Agreements
The staff at KUCTC will negotiate these agreements that govern the transfer of tangible research materials between two organizations. http://kuctc.ku.edu/faculty/protect-your-ideas/transferring-research-materials
Sending or Receiving Material
When transferring materials into or outside of KU, a material transfer agreement (MTA) document is necessary.
Innovation and collaboration is fundamental to KU’s global outreach. U.S. and international laws governing technology transfer are complex and impact patent applications, licensing, and research agreements. We are committed to complying with all laws and regulations that govern our international activities including those foreign visitors and employees who work and participate in projects on all KU campuses. KUCTC works closely with The Office of General Counsel and Export-Import control team. To ensure compliance, investigators, entrepreneurs, and future CEOs are encouraged to use their services early in project development.