Inventors Handbook
Title to Intellectual Properties
Faculty
Intellectual properties developed by university faculty within the scope of their employment or through the use of their time, facilities, equipment or materials owned or paid for by the university are considered by Federal patent and copyright law to be the property of the university. In claiming title to the inventions or developments of its faculty, the university follows a policy long practiced by other universities and private corporations. However, unlike most private corporations, universities traditionally share the economic benefits with their inventors and developers. BYU gives its inventors/developers 45% of all revenues collected, and reinvests most of the remaining funds in further research at the university.
Students
In general, BYU relinquishes its rights to any student (graduate or undergraduate) inventions or technology developments. There are, however, exceptions under which the university requires assignment of rights to the university.
- When the student is supported by the university(i.e., by a fellowship),
- When the student is employed by the university,
- When the student makes substantial use of university resources, or
- When the student is working voluntarily on a faculty member's research project.
In these cases, the student should sign an Employee and Student Assignment of Ownership and Nondisclosure Agreement form before they start work. The forms are available from the Technology Transfer Office or may be downloaded.
Federal Government Support
The Federal government initially retains assignment of all intellectual property rights developed under federal support. However, the university may obtain assignment of all commercial rights by applying to the government. Therefore, if there is any Federal support involved in the development of a technology, notify the Technology Transfer Office. The government will retain a royalty-free license for the government to use any invention made with any Federal support.
Research Sponsors
Approximately half of the research conducted at BYU is sponsored by commercial organizations. It is important to note that BYU policy asserts title to all inventions, even when there is an external sponsor. However, private sponsors are entitled to commercial rights to technologies developed through their sponsorship. These rights may take the form of an exclusive license to any patents or copyrights that result from the research, but the terms may vary widely and the license may take other forms, depending on the company's desires, previous commitments by the university, involvement of additional sponsors, the amount of support contributed by the company relative to previous or concurrent university support, etc. The university prefers to grant the sponsor an option to obtain a license, with the specific terms of the license to be negotiated after the completion of the work when the contributions of the parties and the new embodyment of the technology are known. The Office of Research and Creative Activities has primary responsibility for negotiation of sponsored projects but the Technology Transfer Office assists with intellectual property matters. Final approval for the terms of the agreement is given by the Associate Academic Vice President for Research.
It is important for the principal investigator to contact the Office of Research and Creative Activities or the Technology Transfer Office for assistance early in the discussions with potential sponsors, and to not make specific promises or commitments regarding intellectual property prior to negotiation of the contract. Please go to Sponsored Research Contracts for more information. The Office of Research and Creative Activities will assist in the preparation of a Research Agreement.
Consulting
The university does not make any claim of ownership of inventions or other technologies created as a direct result of private consulting services which are independent of their university research program and performed in compliance with the BYU Consulting Policy. Faculty should use the Approval for Professional Activities in Addition to Regular University Assignments, B: Consulting form to obtain approval of their chair and dean.
Consulting agreements cannot be used to transfer university intellectual property rights to the company. If faculty members are to be engaged as consultants or otherwise employed by a company that is either anticipating or has executed a license agreement with the university, the agreement should be submitted to the Technology Transfer Office for review. If there will be substantial use of university resources or if students are to be employed, the project should be funded as a sponsored research project with faculty compensation through overload procedures. Simultaneous sponsored research contracts and consulting contracts often create difficult conflicts and should be avoided. (Contact the Office of Research and Creative Activities.)
Disclosing Your Invention/Product to the Technology Transfer Office
When an investigator first recognizes that he/she is developing a technology that may have commercial potential he/she should call the Technology Transfer Office at 422-6266.
The technology transfer professionals will provide guidance on how to coordinate technology development, publication, intellectual property protection and commercialization. When the technology is relatively mature, or PRIOR TO ANY PUBLICATION, PUBLIC PRESENTATION or DISCUSSION WITH ANY PARTY OUTSIDE BYU (See Confidentiality), a technology disclosure form should be completed and submitted to the office. The Invention Disclosure Form may be downloaded and filled out and signed by each of the inventors/developers and returned to the Technology Transfer Office (A-285 ASB). Do not return the form electronically — legal requirements still dictate paper and signatures, and we have confidentiality concerns.
The Technology Disclosure serves as an official document in the process of obtaining patent protection and will initiate official action by the Technology Transfer Office. The information in a disclosure form is confidential. Do not send copies to others, even the research sponsors of the research. Research contracts usually specify that the sponsor be notified by the Technology Transfer Office. Some technologies, often software, may not be patentable, but may be equally as commercially viable. They should be treated with the same care and caution as patentable inventions, and the same disclosure procedures should be followed.
Consulting
The university does not make any claim of ownership of inventions or other technologies created as a direct result of private consulting services which are independent of their university research program and performed in compliance with the BYU Consulting Policy. Faculty should use the Approval for Professional Activities in Addition to Regular University Assignments, B: Consulting form to obtain approval of their chair and dean.
Consulting agreements cannot be used to transfer university intellectual property rights to the company. If faculty members are to be engaged as consultants or otherwise employed by a company that is either anticipating or has executed a license agreement with the university, the agreement should be submitted to the Technology Transfer Office for review. If there will be substantial use of university resources or if students are to be employed, the project should be funded as a sponsored research project with faculty compensation through overload procedures. Simultaneous sponsored research contracts and consulting contracts often create difficult conflicts and should be avoided. (Contact the Office of Research and Creative Activities.)
Disclosing Your Invention/Product to the Technology Transfer Office
When an investigator first recognizes that he/she is developing a technology that may have commercial potential he/she should call the Technology Transfer Office at 422-6266.
The technology transfer professionals will provide guidance on how to coordinate technology development, publication, intellectual property protection and commercialization. When the technology is relatively mature, or PRIOR TO ANY PUBLICATION, PUBLIC PRESENTATION or DISCUSSION WITH ANY PARTY OUTSIDE BYU (See Confidentiality), a technology disclosure form should be completed and submitted to the office. The Invention Disclosure Form may be downloaded and filled out and signed by each of the inventors/developers and returned to the Technology Transfer Office (A-285 ASB). Do not return the form electronically — legal requirements still dictate paper and signatures, and we have confidentiality concerns.
The Technology Disclosure serves as an official document in the process of obtaining patent protection and will initiate official action by the Technology Transfer Office. The information in a disclosure form is confidential. Do not send copies to others, even the research sponsors of the research. Research contracts usually specify that the sponsor be notified by the Technology Transfer Office. Some technologies, often software, may not be patentable, but may be equally as commercially viable. They should be treated with the same care and caution as patentable inventions, and the same disclosure procedures should be followed.
Confidentiality: Patenting vs. Publishing (or talking)
The pursuit of academic freedom with full publication and presentation of research results is in complete harmony with obtaining patent protection IF done in the proper order. The invention should be disclosed to the Technology Transfer Office two to three months before public disclosure. This will give the office time to evaluate the technology, perform a patent search, and prepare and file a patent application. An application can be filed in less time, but the quality of the work may suffer.
If an invention is publically disclosed before the application is filed, all international patent rights are forfeited. However, the United States alone allows a grace period. The inventor may file within one year of public disclosure. "Public Disclosure" is any publication, presentation or personal discussion with any individual or group outside of the university. Public disclosure may also occur within the university if the meeting is open to the public such as in a classroom or thesis defense. However, a thesis defense or other meeting can be made non-disclosing by having visitors sign a non-disclosure agreement. Arrangements may be made to have the Graduate Office hold the thesis from being placed in the library until a patent application is filed Request to Secure Theses and Dissertations.
To be a disclosure, the information transmitted must be in sufficient detail for the person to understand how the invention works. A description of what the technology does or an explanation of its benefits is not a disclosure. However, the inventor must careful — e.g., showing a chemical structure is an enabling disclosure. Technology details may be disclosed to others such as potential sponsors or licensees without the loss of patent rights if all communications are "confidential." Confidentiality is maintained by contract. The party receiving the confidential information must sign a Confidential Non-Disclosure Agreement. Feel free to contact the Technology Transfer Office for advice on how and when to use the form.
Companies will often ask you to sign their Non-Disclosure Agreement before they divulge their company's proprietary information. Because of the open environment of a university setting, it is difficult to maintain confidentiality. Therefore, it is recommended that you encourage the company to not disclose proprietary information and to not have you sign such an agreement unless it is absolutely necessary. If you do, you are bound to the terms of the agreement. If you have any questions about an agreement, please submit it to the Technology Transfer Office for an opinion. The University usually does not sign these agreements, but the faculty sign as individuals. The university will support the faculty if there is a dispute.
Technology Evaluation
When the Technology Transfer Office receives a disclosure, it will initiate an evaluation of the commercial potential of the technology. The evaluation is usually initiated through a discussion with the developer(s) to provide the background needed to develop an evaluation plan. The legal protectability of the intellectual property is essential to the process of being able to license the technology. This evaluation often includes a patent search conducted by a law student intern who may be assisted by an external patent attorney in preparing a patentability opinion.
The cost of patenting is also seriously considered. The average U.S. patent will cost the university approximately $10,000; and more complicated technologies may be several times as much. Also, on-going research may necessitate multiple patent applications. Foreign patents will average $6,000-7,000 per country. The university pays all patent costs, but these costs will be repaid from the initial income received from the license.
A marketability opinion is generated by the Technology Transfer staff, often assisted by an MBA marketing student intern in close consultation with the faculty developer. This opinion will involve estimates of the size and nature of the potential market, evaluations of competitive technologies, estimates of the time and financing needed to bring the technology to market, and the availability of potential licensees. After the evaluation is completed, the Technology Transfer Office will either 1) develop a commercialization plan, 2) defer action pending further research or development, or 3) the university may elect to offer to assign its rights to the faculty developer(s) if the university does not desire to pursue commercialization.