The Inventor's Handbook
This handbook provides basic information concerning patents and copyrights and the policy and procedures of the University of Arkansas with respect to both. Its purpose is to supplement Board Policy 210.1, Patent and Copyright Policy, which states, as one of its objectives, to "assist the faculty, students, and staff in matters related to inventions, patents, and copyrights and provide an environment that will encourage the disclosure and development of meaningful Inventions."
University researchers, through their creative efforts, may make discoveries which qualify to be patented or copyrighted. This handbook is intended to enable them to know at such times what to do, when to do it, where to obtain forms, and whom to ask for assistance.
- Basic Information
- Patent and Copyright Policy Highlights
- Invention Evaluation and the Patenting Process
- Licensing of Inventions
- Have I made an invention?
If you have discovered or made a new and useful process, machine, article of manufacture, composition of matter, or related improvement, you probably have made an invention. A work of authorship (including computer software) is also considered to be an invention under the Patent and Copyright Policy.
- What should I do when I believe I have made an invention?
You should complete an Intellectual Property Disclosure Form Please send this form complete with appropriate signatures to Technology Ventures (note: an electronic, editable version is al requested).
- Where can I get help?
Technology Ventures will provide you with information concerning University-related inventions, including guidance on how to complete an Intellectual Property Disclosure Form. Any inventor who is concerned about the applicability of a provision of the Patent and Copyright Policy should direct written questions to Technology Ventures, which may then seek the advice of the University General Counsel or of the Associate Vice President for Legal Affairs. Upon request, either the General Counsel or the Associate Vice President for Legal Affairs will respond with a written legal opinion interpreting the particular provision of the policy in question.
- When should an Invention Disclosure Form be submitted?
A disclosure should be prepared and submitted to Technology Ventures as soon as the invention is clearly conceptualized. It is not necessary to wait for the invention to be put into actual practice, although you may wish to discuss the timing with Technology Ventures. The disclosure will be forwarded by Technology Ventures to the Campus Patent and Copyright Committee for evaluation.
On October 2nd, 2001, the Board of Trustees of the University of Arkansas revised the Patent and Copyright Policy with the purpose of insuring that discoveries made at the University "are used and controlled in a manner that benefits the public, the Inventor, and the University to the fullest extent possible." The following questions and answers are intended to elucidate the policy:
- What is the policy on inventions?
Generally, the University owns the right to all inventions which are the products of University research.
- To whom does the Policy apply?
The policy applies to all employees, appointees, or anyone paid by the University and to anyone using University facilities.
- What are the obligations of inventors?
Inventors must promptly disclose to the University any invention after it is created, conceived, or first reduced to practice. Employees of the University have already assigned their rights in any invention that they make that is in the area of their expertise. For example, a professor of Electrical Engineering may invent a new type of semiconductor device. Because the invention is in the field of the inventor’s expertise that he or she was hired to teach and/or research, that invention, by prior agreement with the University upon being hired, belongs to the University. It does not matter if the invention occurred off the campus, was done on a weekend, or if the inventor was consulting with an outside company at the time. It only matters whether or not the invention is in the inventor’s field of expertise for which they were hired by the University. If the same person invented a new type of lawnmower blade, that would not be claimed by the University as a lawnmower blade is not in the field of expertise of an electrical engineer.
- What are the obligations of the University?
The University must furnish notice of intent to obtain assignment of the invention within 180 days of the inventor's disclosure.
- What is inventor's share of royalties derived from commercial development of a patented
An inventor will receive fifty percent (50%) of the first $200,000 of net royalties from the commercialization of an invention. For any income exceeding $200,000, the inventor will receive thirty-five percent (35%).
- What are the University's rights under sponsored research?
Rights to inventions under sponsored research are determined by the provisions of the contractual agreement between the University and the sponsor. However the University will always, except in a very small number of special cases, own the invention, even if it was conceived as part of a sponsored research project. In such a case, the sponsor may have the right to an option to negotiate for a license to the patent rights, and therefore, the University will not have the right to offer to license the patent rights to another entity, unless the sponsor does not exercise the option.
- What are the publication rights?
The University and the inventor retain the right to publish the results of research. The University may permit a sponsor to review material prior to publication in order to protect any proprietary data.
- What is the policy on copyrights?
With the exception of computer software, authors own the copyrights to all their works which are not the result of projects specifically funded by the University or a sponsor of the University. Comment: The intent of this provision is to recognize and reaffirm the traditional academic freedom of University faculty and staff to publish freely without restriction; thus, the University will not construe the payment of salary as constituting funding from the University for the purpose of claiming rights in works of authorship (excluding software), except for those situations where the funds were paid specifically to support the development of such works. Textbooks developed through the use of institutional funds are not subject to University claim of ownership, unless such textbooks were developed using University-administered funds paid specifically to support such textbook development.
- What is the policy on software?
The University owns the rights to all computer software produced at the University unless the software is generated solely for classroom instruction (courseware). Software produced on an inventor's own time without the use of University facilities belongs to that inventor.
- What is the University Patent and Copyright committee?
This is a University-wide faculty committee that reviews the operation of the Patent and Copyright Policy, recommending any necessary changes to the policy, and generally advising the University President on patent and copyright policy matters as requested.
- What are the Campus Patent and Copyright Committees?
Each campus has a committee which is responsible for implementing the Patent and Copyright Policy on that particular campus. This includes reviewing and evaluating invention disclosures, determining the rights of the University to inventions, and recommending disposition of inventions submitted to the University. A campus with less than five disclosures per fiscal year need not have a committee. The Division of Agriculture and the Fayetteville campus have a joint committee.
- What is a patent?
A patent is an agreement between an inventor and the United States Government. It specifies that, in return for full public disclosure of the invention, the inventor is granted the right, after the patent issues, for a period of twenty years from the time of filing to exclude others from making, using, or selling the claimed invention in the United States.
- When is an invention worthy of a patent? - clarification of definitions
To be considered "patentable," an invention must be a process, a machine, an article of manufacture, or a composition of matter, or any improvement thereof. Such an invention must also be new, useful, and unobvious to a person possessing "ordinary skill in the art" to which the invention relates. A new variety of plant or any new, original, and ornamental design for an article of manufacture may also be the subject of a patent. However, certain things, even though new, useful, and unobvious, are not patentable: printed matter, naturally occurring substances, ideas, and scientific principles. Computer programs are generally not considered patentable, although a computer or algorithm may be part of a patentable process.
To be considered new, an invention cannot have been invented earlier by another person. Thus, the inventor will be barred from obtaining a U.S. patent if the invention was: (a) known or used by others in the United States or described in a patent or printed publication anywhere in the world prior to its invention by the inventor, (b) in public use or on sale in the United States or described in a patent or printed publication anywhere in the world more than one year prior to filing a patent application on the invention, (c) described in a U.S. patent granted on an application filed by someone else prior to the invention, or (d) made by someone else in the United States prior to the invention, provided that the prior invention had not been abandoned, suppressed, or concealed.
Stricter criteria apply, however, if patent protection is sought in foreign countries. Any commercial use or publication even one day before filing the patent application in the United States may prevent a valid patent from being issued in many foreign countries. It is, therefore, important to remember that, to preserve patent rights in foreign countries, the patent application ought to be filed in the United States before any publication or commercial use of the invention. Additionally, the inventor must always be aware that, in order to protect patent rights in the United States, a patent application must be filed within one year after any publication of the invention.
The "useful" criterion for patentability refers to the condition that the invention has a beneficial purpose and also includes "operativeness" - that is, a machine which will not operate to perform the intended purpose would not be called useful. For example, perpetual motion machines are refused patents.
The "unobviousness" requirement is the most difficult to define. Mere simplicity of an invention does not necessarily mean that the invention is obvious. However, if at the time the invention was made, persons having ordinary skill in the particular art to which the invention relates would have found the difference between the invention and what others had previously done to be obvious, without the benefit of hindsight, the invention is not patentable. Thus, obviousness is measured by what would have been obvious to one reasonably skilled in the applicable art rather than what would be obvious to the layperson. For example, merely changing arbitrarily the size or dimensions of a known machine or article of manufacture, or the amount or relative proportions of the constituents of a composition of matter, or the values of the operative parameters of a process cannot fairly said to be unobvious.
The patent law in the United States has changed, and now, in the US as well as in foreign countries, the first person to file for a patent, rather than the first person to invent, receives a patent if the invention is patentable. A person other than the inventor who discovers an invention in a foreign country or recognizes an invention's commercial merit cannot obtain a patent. The law does, however, recognize that an invention may be made by more than one person. Joint inventors become joint owners in a patent if they have not agreed otherwise. This means that each joint inventor may exploit the patent completely independent of the other joint owners.
- How should an invention be protected?
It is important that any invention be promptly and carefully recorded when it is conceived, together with its utility and a method for carrying out the invention. This "conception record" should contain as much detail as possible. The procedures which follow describe the optimal development of a conception record, i.e., one which would provide sufficient evidence to enable the inventor to defend against or prosecute successfully a patent infringement suit. Conception is the point at which a definite idea has formed in the mind of the inventor of the complete and operative invention as it is to be reduced to practice, i.e., conception is complete when no more than routine skill is required to put the invention in the public's hands.
The conception record should be signed by the inventor, and read, countersigned, and dated by at least one and preferably two individuals who are familiar with the subject, but who are unlikely to be deemed co-inventors with the inventor. This record should be made in ink in the inventor's notebook.
As the research progresses, the inventor's findings should also be recorded contemporaneously in the notebook, without erasure, and promptly signed, dated, and witnessed. A laboratory technician or colleague familiar with the work may serve as a witness. When an inventor has conducted a highly significant experiment, the results of which appear to be of substantial importance, it is advisable to arrange for someone else who is not a co-inventor to repeat the experiment with authenticated starting materials. This person should also identify the product and confirm its utility, so that he or she may serve as a corroborative witness to such "reduction to practice" in any litigation on the question of inventorship. In such a contest between rival applicants, the inventor's own evidence of priority activity requires corroboration by an independent witness having first-hand knowledge of the work.
When the inventor has successfully carried out the invention and demonstrated its utility, i.e., reduced it to practice, the inventor has completed the process which, with the prior conception, constitutes the act of invention. This is an ideal time at which to disclose the invention to the University. An inventor may disclose at any time prior to this point but usually not before the actual conception of the invention.
- What is a copyright?
A copyright is a form of protection afforded by law to authors of intellectual works.
- Who owns copyright?
Faculty, staff, and students who write papers are actually creating "original works of authorship" for which copyright protection exists. Only the authors of such works or those to whom the authors have granted their rights, such as an employer, may claim copyright. The literary endeavor immediately becomes the property of the author and no further action, such as publication with a copyright notice or registration in the Copyright Office, is required to secure copyright. Copyright is secured automatically when the "work" is created. The work is "created" when it is fixed in a tangible medium for the first time. This "tangible medium" may be read or visually perceived either directly or with the aid of a machine or device; it includes books, manuscripts, sheet music, film, videotape, microfilm, and even microcircuits.
The owner of a copyright retains and controls the rights to print and reprint copies of the work, to sell or distribute copies, to transform or revise the work, and to perform, display, and record the work. These rights are exclusive to the copyright owner; before anyone can copy an author's work, he or she must obtain the copyright owner's permission. Failure to obtain such permission will constitute an infringement of copyright, and the copyright owner may seek damages or other sanctions against such unauthorized use.
It should be understood that, unlike the patent system, copyright protects only the particular expression of an idea and not the idea itself. In other words, while the exact expression of a copyrighted work cannot be legally copied, the idea contained within the copyrighted work can be freely copied or otherwise transmitted or discussed. For example, an author may receive copyright protection for a book or pamphlet which describes a scientific process or procedure. The protection afforded by the copyright extends only to copying the book or pamphlet, however, and does not extend to the process or procedures described . The public is free to follow the process or procedure described without the risk of infringing upon the author's copyright.
- What are the limitations on exclusive rights?
Libraries and archives are allowed, under certain conditions, to reproduce copyrighted material without permission. Also, "fair use" of portions of a copyrighted work is permitted for such purposes as criticism, comment, news reporting, teaching, scholarship, and research. The doctrine of "fair use" significantly restricts the privileges which the owner of a copyright may enjoy. "Fair use" is a right of someone other than the owner of a copyright to use the copyrighted material in a reasonable manner without the consent of the owner.
Generally, a somewhat greater amount of copying of copyrighted works is permitted of scholarly, technical, or scientific works. However, the contention of fair use is weakened if the finished product produces commercial gain for the person doing the copying. In addition, if extensive quotations of a copyrighted work are to be used, permission should be requested from the copyright owner.
- How is copyright protected?
Copyright protection for a particular work exists at the moment of its "creation." However, if the author of a copyrighted work wants to distribute or "publish" the writing, a copyright notice should be placed on all publicly distributed copies in order to secure the exclusive rights of a copyright owner. This is the author's responsibility. No advance permission or registration is required from the Copyright Office. It should be understood by the author that, under copyright law, a "publication" consists of the distribution of copies of a work to the public by sale or other transfer of ownership or by rental, lease, or lending.
A proper copyright notice, in most circumstances, must contain three elements: (1) the symbol (c), the word "copyright," or the abbreviation "copr." (however, in the case of sound recordings, the symbol (c) is replaced by the symbol (p); (2) the year in which copies of the work were first distributed to others; and (3) the name of the copyright owner. For example, if the copyright owner is Jane Smith and copies of the work were first distributed in 1986, a proper copyright notice would be: (c)1986 Jane Smith.
- Should a copyright be registered?
Registration of a copyright with the United States Copyright Office is not a condition or requirement for copyright protection. In general, it is a legal formality intended to make a public record of the facts of a particular copyright. There are, however, certain advantages to registration. Besides establishing a public record, registration or application for registration is necessary before the copyright owner can file an infringement suit in court. In addition, if made before or within five years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the registration certificate. Registration forms may be obtained from U.S. Copyright Office.
Although copyright registration is not required, works published with a notice of copyright are subject to a mandatory deposit requirement. The copyright owner is required to submit two copies to the Copyright Office (for use of the Library of Congress) within three months of publication. Failure to make the deposit can give rise to fines and other penalties but does not affect copyright protection.
- What is the duration of a copyright?
A work that was created (fixed in tangible form for the first time) on or after January 1, 1978, is automatically protected from the moment of its creation and is ordinarily given a term enduring for the author's life plus and additional 70 years after the author's death. Thin the case of "a joint work prepared by two or more authors who did not work for hire," the term lasts for 70 years after the last surviving author's death. For works made for hire, and for anonymous and pseudonymous works (unless the author's identity is revealed in Copyright Office records), the duration of copyright will be 95 years from publication or 120 years from creation, whichever is shorter.
Suppose you are a University researcher and believe you have a patentable invention. What should you do next?
You should submit an Invention Disclosure Form to Technology Ventures. Prompt action will help preserve patent rights. Technology
Ventures will evaluate the information in the disclosure form and present it to the
Campus Patent Committee for review and evaluation. The Disclosure provides information
necessary for the Committee to evaluate patentability, inventorship, the desirability
of obtaining patent coverage, and patent obligations to research sponsors outside
the University. Remember: THIS INFORMATION IS CONFIDENTIAL. Do not send the Intellectual
Property Disclosure Form to others, including your research sponsor, until the University
has made a decision concerning the disposition of the invention.
If the Campus Patent and Copyright Committee recommends that the University initially take action to protect your invention, it will be referred through the Office of the Associate Vice President for Legal Affairs to an outside patent attorney for a preliminary patentability opinion. Normally, the patent attorney will confer with you at this point. In many cases, but not always, the patent attorney is requested to conduct a novelty search of the appropriate patent literature. Inasmuch as University inventors generally invent in their own area of expertise and are aware of the most pertinent literature related to their inventions, a novelty search is not always warranted. However, such searches can be of substantial value to the inventor, since they often show a state of the art not apparent from the technical literature.
If, upon review, the University decides to proceed with patenting your invention, Technology Ventures will instruct an attorney to draft a patent application. The patent attorney will need to work closely with you in the preparation of the application. In some instances, further work may be required so that a proper application can be drafted. Upon completion of the application, including your detailed review of the final draft and execution of the necessary document (called a Declaration or Oath), the attorney will submit the application to the United States Patent and Trademark Office in your name. Before the application is submitted, you will be asked to assign patent rights to the University in writing in accordance with the Patent and Copyright Policy.
Publications and oral presentations can have a significant impact on the University's actions in protecting your invention. You should be aware that a public disclosure of your invention before the actual filing date of the United States patent application automatically destroys patent rights in nearly all foreign countries. Public disclosure means disclosure in any manner, such as by oral or written description, exhibit, demonstration, use, or the like, to outside parties in a non-confidential setting. The level of disclosure that destroys foreign patent rights varies from country to country.
United States patent law allows you a one-year grace period in which to file a patent application after the first enabling printed publication or public use or sale of your invention. You should beware, however, that "enabling," "printed publication," "public use," "sale," and "invention" are legal terms defined by a vast body of case law, not by ordinary usage. For example, abstracts, theses, and typewritten papers distributed freely at a conference may constitute a "printed publication." Even an oral defense of a master's thesis or dissertation may constitute an "enabling" disclosure if the public is invited to the event. Also, the cataloging of the thesis or dissertation in the University library where it is accessible to the public may be a "printed publication." If you have doubts about the consequences of this type of "publication," do not hesitate to contact Technology Ventures.
To facilitate the transfer of technology from the University to the public for the
public benefit, the University may undertake the licensing of its inventions to industry.
A beneficial consequence may be the generation of income to the University for education
and research. Net proceeds from licensing income are distributed between the inventor
and the University according to the provisions of the Patent and Copyright Policy.
The licensing process begins when contacts are made with individual companies to assess their interest in obtaining a license. Information you can provide which will help identify potential licensees for your invention will often greatly facilitate the licensing process. If a private company contacts you directly for information about your invention, be sure to refer the company representative to Technology Ventures so that appropriate steps can be taken to protect both your rights and those of the University.
Terms and conditions for licensing agreements are negotiated on a case-by-case basis. Remember, you do not have the right to sign a non-disclosure agreement or licensing agreement with respect to your invention. Only an authorized officer of the University may contract on behalf of the University. If your invention was made under a U.S. government-supported research agreement, the government receives a royalty-free license for its use. If the company needs more time to evaluate your invention, an option-to-license agreement may be negotiated by Technology Ventures.
In some cases, a license or option agreement is negotiated at the same time that a separate research funding agreement with the licensee or optionee is arranged by Technology Ventures working with the inventor.
Separate consulting agreements may be arranged between you and the licensee of your invention so that your knowledge can be used to assist in transferring the technology covered by the license. The University does not become a party to such consulting agreements, which are between you and the licensee, but you are subject to the limitations of University policies.