Frequently Asked Questions
Technology Transfer Questions
Inform KUCTC at your earliest -"disclose" the invention or software to KUCTC using the appropriate disclosure form. This disclosure form will ask you to briefly explain what has been invented or what software was created, how the work was funded, and if a public disclosure has been scheduled or has occurred.
In order for a patent to be granted for an invention, the invention must be novel, useful, and non-obvious. Hence, it is important to point out in the disclosure novel, useful, and non-obvious aspects of the invention. Call KUCTC if you have any questions re: filling out the disclosure form.
The KU intellectual property policy and your employment agreement with KU requires that rights to inventions and software [annual value of $10,000 or more] developed in the conduct of research at KU or with KU resources be assigned to KU. As a result, KU becomes the owner of all related patents and copyrights. It is important for all researchers to recognize that the obligation to assign rights to KU is mandated by Federal Law for government funded research.
You can do both! Seeking a patent for a discovery or development does not prevent scientific publication and, in most cases, does not delay publishing. However, to retain the potential for foreign patent protection, a U.S. patent application must be filed before any description of the invention is published in an article, abstract, thesis, presentation, on the Internet or any other public format. This also includes technical discussions with colleagues from companies or other institutioins. To find out if your discovery should be patented, contact KUCTC. A KUCTC licensing associate will work with you to accommodate publishing dates.
To achieve optimum results, KUCTC needs your cooperation and participation. A detailed description of the discovery should be submitted to KUCTC at least three months in advance of the submission of the manuscript or abstract for publication. The lead time will allow KUCTC to review the information, perform prior art search and engage a patent attorney to draft and file the patent application.
The United States adopted a first-to-file system in 2014, which is widely accepted by most nations. In some cases, a patent application may be filed up to one year after you publicly disclosed your invention. In most countries, however, an invention cannot be patented once that has occurred. A software copyright begins the moment the code is affixed to tangible media, creating fewer issues with publishing.
To find out if your discovery should be patented, contact KUIC. A KUIC licensing associate will work with you to accommodate your publishing preferences. To protect your rights, you’ll need to submit a description of the discovery to KUIC at least three months in advance of the submission of the manuscript or abstract. This allows KUIC time to review the information, perform prior art search, and engage a patent attorney to draft and file the patent application.
After you’ve filed a patent application, publishing and discussing your work publicly can help generate interest. However, you may still be constrained about disclosing certain information such as the possibility of filing future patent applications. In addition to assisting you with the copyright and patent process, KUIC can help you determine what to publish and when.
The disclosure evaluation at KUCTC may take a week to three months, depending on the complexity of the invention and the target industry. At the end of the evaluation, the decision to move forward with patenting will be made in concert with the inventor. Drafting the patent application with the help of a patent law firm can take up to two months. Once filed with the U.S. Patent Office, claims generally take at least three years to be approved. Licensing and marketing efforts can occur concurrently with the patenting process.
KUCTC rarely files for protection in foreign jurisdictions due to budget limitations.However, there are certain sectors and technologies that warrant such protection.Please discuss with your licensing associate.
The filing and prosecution of patent applications are handled by outside patent firms. A patent attorney is selected on the basis of technical expertise, competence and prior experience in working with similar cases.
A company or an individual who is interested in your new invention, which is in the patent application process or not published, will frequently seek access to confidential information pertaining to the specific patent, for example, through a discussion with the inventor or site visits to the inventor's laboratory.
KUCTC can help you conduct confidential discussion and prevent public disclosure, thereby preserving patent rights, by executing a confidential disclosure agreement. Confidential disclosure agreements (sometimes called non-disclosure agreements) are contracts which bind a receiver of confidential information (the potential licensee) to secrecy. KUCTC will help with the preparation, negotiation and execution of confidential disclosure agreements. We use standard agreement templates, which has been approved by the KU Office of the General Counsel.
If the agreement allows for confidential disclosure to KU inventors by the other party, then KUCTC will inform the inventor(s) or principal investigator(s) of his/her responsibilities/obligations under the terms of the agreement.
The execution of a license agreement begins a long-term relationship with the licensee. KUCTC monitors the licensee’s performance for the duration of the agreement. To ensure commercialization of the invention, most license agreements require periodic financial and development reports from the licensees, with special attention to meeting certain milestones or deliverables.
KUCTC will also monitor patent prosecution and maintenance of issued patents. Sometimes it is necessary to re-evaluate a licensing relationship to accommodate changed circumstances, or to take into account new situations.
Every sponsored research project, whether it is funded by the federal government, a foundation, other non-profits, or a company has an associated research agreement. This agreement addresses many issues and contingencies including the issue of ownership and allocation of IP rights to patents and/or software resulting from project discoveries.
For government sponsored research, IP rights are relatively standard for patents but not for software. When research is sponsored by a company, the subject of IP rights in the sponsored research contract typically requires careful attention. KUCTC works closely with the KU Office of Sponsored Research [KUCR in Lawrence and KUMCRI in Kansas City] to review and negotiate the IP rights provisions in the sponsored research agreements.
In recognition of project sponsorship, the sponsor is often provided with an option to license the IP rights from KU to make, use, have made or sublicense the invention. Terms of the license are negotiated at the time the sponsor exercises the option. Revenues generated by the license are distributed to the inventor, the inventor’s department and KU according to the KU revenue sharing policy.
For patents the rules vary in different countries with respect to public disclosure. A public disclosure can include a publication, either in print or on the internet, presentations at professional society meetings, technical discussions with colleagues from other institutions or from companies. Patent laws in the US have changed recently – America Invents Act of 2011. The U.S. is adopting the first to file system widely accepted by most nations, however, in some cases a patent application may be filed in behalf of the inventor, up to one year after public disclosure. In most countries, however, an invention cannot be patented once a public disclosure has occurred.
Subsequent to filing a patent application, disclosures and publications about the invention are encouraged as they are often beneficial to generate interest. However, there may still be some constraints on our ability to disclose information, e.g. regarding future contemplated applications. KUCTC can help any inventor determine how and what to publish.
The copyright to software begins the moment the code is "affixed to tangible media". Consequently, there are fewer publication issues. KUCTC can help register the copyright with the USPTO when there is commercial interest.
Revenues generated by the license are distributed to the inventor, the inventor’s department, and KU according to the KU revenue sharing policy. The KU Policy regarding royalty distribution describes this in detail.