FAQs / Policies

We’ve put together some commonly asked questions to give you more information about Office of Innovation for easy answers to your questions.


NOTE: Clicking on the question will reveal the answer.

Frequently Asked Questions:

The Ohio Lieutenant Governor and the Inter-University Council of Ohio (IUC) have worked with the technology transfer offices across the state to establish a best-in-class approach for the licensing of intellectual property (IP) developed by Ohio’s 14 public universities.

Ownership depends upon the employment status of the creators of the invention and their use of University facilities and other resources. Considerations include: 

  • What is the source of the funds or resources used to produce the invention?
  • What was the employment status of the creators at the time the intellectual property was made?
  • What are the terms of any agreement related to the creation of the intellectual property?  

As a general rule, UC owns inventions made using significant University resources or by its employees while acting within the scope of their employment, a copy of the relevant policy can be found here: UC's patent policy.  UC’s copyright policy describes the applicable rules for copyrightable works. In some cases, the terms of a Sponsored Research Agreement or Material Transfer Agreement may impact ownership. When in doubt, it is best to call the UC Tech Transfer office for advice at 513-558-6293. 

You should complete a Share Your Idea Form at any time in the creation process, but the earlier the better. You can submit a form when the idea first comes to you, or after you’ve built a prototype. The purpose of the form is to start a process that could lead to the commercialization of your idea. Filling out the form should be done well before presenting the discovery through publications, poster sessions, conferences, press releases or other communications. Once you’ve submitted a form, the full resources of the Office of Innovation are at your fingertips. Take advantage of our breadth of knowledge and expertise.

If an idea or invention is publicly disclosed (i.e., published or presented in some form) prior to the filing of a patent application, the invention cannot be patented outside of the United States (U.S. protection may still be available). Be sure to note any imminent or prior presentation, lecture, poster, abstract, website description, research proposal, dissertation/master’s thesis, publication, or other public presentation involving the idea or invention when you complete your form. 

  • Ideas
  • Software 
  • Data
  • Research tools
  • Patentable discoveries

Publishing or presenting can prevent us from obtaining patent protection, so UC Tech Transfer would like to know about your idea/invention before you publish on it. There are significant differences between the U.S. and other countries as to how early publication affects a potential patent. Once publicly disclosed (published or presented in some form), an invention may have a restricted or minimal potential for patent protection outside of the United States. Since patent rights are affected by publishing or presenting, it is best to submit an Invention Disclosure or call your licensing specialist well before communicating or disclosing your invention to people outside the UC community.

Even after you submit an Share Your Idea Form or a Disclosure Form, be sure to inform the Tech Transfer licensing specialist assigned to you of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal submission, dissertation/masters thesis, publication, or other public presentation describing any part of the invention. Submitting a manuscript to your licensing specialist at the same time you submit to a journal for publication can be extremely helpful for both the marketing and licensing process as well as for the patent attorney assigned to the case. 

Per UC policy, a share of any financial return from a license is provided to the inventor(s). Most inventors enjoy the satisfaction of knowing their inventions are being deployed for the benefit of the general public. New and enhanced relationships with businesses are another outcome that can augment one’s teaching, research and consulting. In some cases, additional sponsored research may be funded by the licensee.  Specifically, revenues from license fees, royalties and equity—minus any unreimbursed patenting and file expenses—are shared with Inventors, colleges, departments, and UC. For more information on revenue distribution, see here. 

For technologies disclosed after January 2019:

Royalty distributions for less than $250,000:
60% to inventors / 40% to department, school, university

Royalty distributions for greater than or equal to $250,000:
40% to inventors / 60% to department, school, university

Patent applications are drafted and filed by a patent attorney or a patent agent (a non-attorney with a science education licensed to practice by the PTO); at UC, we use a mix of in-house counsel and outside patent counsel to draft our patent applications. About two years or longer (depending on PTO backlog in your technology area) after filing a full application the patent attorney will receive written notice from the PTO as to whether the application and its claims have been accepted in the form as filed. More often than not, the PTO rejects the application because either certain formalities need to be cleared up, or because the PTO argues that the claims are not patentable over the “prior art” (anything that persons in the field have publicly disclosed in the past). The letter sent by the PTO is referred to as an “Office Action.”

If the application is rejected, the patent attorney must file a written response, usually within three months in order to avoid government late fees. Generally, the attorney may amend the claims and/or point out why the PTO’s position is incorrect. This procedure is referred to as patent prosecution. Often it will take two PTO Official Actions and two responses by the patent attorney—and sometimes more—before the application is resolved. The resolution can take the form of a PTO notice that the application is “allowable” – in other words, the PTO agrees to issue a patent.

The process consists of some key steps – specifically Ideation/Research, Disclosure & Assessment, Marketing & Protection (& Venture Lab), Licensing, Commercialization, Revenue.

Ideation/Research 

  • Come up with the great ideas
  • Find funding 
  • Share your idea
  • Engage in the innovation community

Disclosure & Assessment

  • Complete forms; provide detailed information
  • 3 weeks meet
  • 3 weeks discuss final plan 

Marketing & Protection (& Venture Lab)

  • Keep us up to date on commercial interest
  • Keep us informed of new discoveries

Licensing

  • Provide input as requested

Commercialization

Your role can vary depending on your interest and involvement, in the interest of the licensee in utilizing your services for various assignments, and any contractual obligations related to the license or any personal agreements. 

Revenue

Revenues received by U-M from licenses are distributed to schools, colleges, departments, units, central administration, and inventors to fund additional research and education and to encourage further participation in the tech transfer process. 

A conflict of interest is a breach of an obligation to the University or the appearance of breach that has the effect or intention of advancing one's own interest or the interests of others in a way detrimental to the interests or potentially harmful to the integrity or fundamental mission of UC.  UC licenses inventions and other technology to for-profit companies and receives income from this activity. Consequently, it must pay careful attention to, and resolve potential conflicts of interest that may arise. The University has established guidelines and procedures for identifying, protecting and licensing innovations resulting from University activities. However, every employee must strive to avoid conflicts of interest and the appearance of conflicts of interest.  Two times in particular when guidance is required: when research proposals are submitted to external sponsors (SRS) and when a license, option or MTA is being considered with a company in which the faculty member, or any university employee, has an equity or management interest (UC Tech Transfer).   For additional information, please contact the Office for Ethics in Industry Engagement (https://research.uc.edu/support/offices/oeie/overview)

 

Laws regulating export control have been in place in the United States since the Second World War. These regulations serve to carefully manage the flow of sensitive technology and know-how such that they don’t end up in countries where they can be used to commit harm. Given the cutting-edge nature of university research, as well as liberal access to our labs to foreign nationals and the amount of international travel conducted by our faculty in the course of their employment, compliance with export control law is of critical importance to UC.  Simply stated, information and/or material under export-control includes any information or material that cannot be released to foreign nationals or representatives of a foreign entity, without first obtaining approval or license from the appropriate federal government regulatory agency (The actual agency will depend on actual information or material that is controlled).

More information may be found at UC’s Office of Export Controls Office.

 


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