FAQs & Answers
1. What is technology commercialization, and what is my role in it?
Technology commercialization refers to the formal licensing of technology to third parties and the organization of new technology-based companies for the benefit of the University, the inventors, the community, the state and the world.
Studies have shown that 70% of technology commercialization licensees were known to the inventors. Thus, research and consulting relationships are often valuable sources for licensees and the IDEA Center encourages the participation of inventors. The more involved and interested the inventor is in the licensing of a technology the higher the chances are that successful licenses will be secured. Normally the inventor is the first best source of information on what companies would be interested in licensing the technology. Once interested companies are identified, the inventor is the best person to describe the details of the invention and its technical advantages. The most successful technology commercialization results are obtained when the inventor and the licensing manager work together as a team to market and promote use of the technology. That said, the IDEA Center will still commercialize an invention if the inventor does not want to be involved, insofar as the IDEA Center believes it has sufficient promise.
2. Why should I disclose? Am I obligated? (Why should I submit an Invention Disclosure?)
Part of the University’s public service mission is to ensure that the results of its research are made available for public use and benefit. This is accomplished in many ways: through educating students, publishing results of research and ensuring that inventions are developed into useful products and services for the benefit of the public.
University IP policy states that the University owns inventions, discoveries, and improvements made by University employees in their field of expertise, or through University research, or through the use of University resources.
3. What constitutes public disclosure, and how does it affect protection of my invention?
There are some gray areas to this question, but public disclosure includes journal publications, website publications, presentations at conferences, posters, dissertation/master thesis or abstract publication. More generally public disclosure occurs when the intellectual property is made publicly available and accessible to those skilled in the art to which the invention relates.
Since patent rights are affected by these activities it is best to submit an invention disclosure form well before any public communication or disclosure. There are significant differences between the U.S. and other countries as to how early publication affects a potential patent. Whenever public disclosure occurs, the inventor loses world-wide patent rights for that invention. Additionally, there is only a one-year window to obtain patent protection in the United States. Whenever possible contact the IDEA Center prior to public disclosure to make sure your work is appropriately protected.
If you have any questions about this please contact the IDEA Center.
4. How does the IDEA Center assess invention disclosures?
A skilled team of IDEA Center employees, outside attorneys and trained student analysts knowledgeable in the invention’s field(s), reviews the features of the invention, searches the depth of competing technologies, conducts an IP search to determine the likelihood of protection, determines the market potential of a future product or service by soliciting feedback from dozens of individuals in the invention’s market, and determines the amount of time and money required for further development.
5. How does the IDEA Center market my invention?
The IDEA Center has strong connections with industry. We leverage our many sources and strategies to identify potential licensees and then market inventions. Sometimes existing relationships of the inventors and other researchers are useful in marketing an invention. Market research can also assist in identifying prospective licensees. In addition, we also examine other complimentary technologies and agreements to assist our efforts. Faculty publications and presentations are often excellent marketing tools as well.
6. Is an invention ever reassigned to an Inventor?
In the event an invention is determined to be not protectable and/or a market does not exist for the invention, the IDEA Center will notify the inventor and offer to reassign (transfer ownership) to the inventor(s). Reassignment of inventions funded from U.S. government sources requires the government's prior approval. Among the key factors in the University deciding to reassign are whether additional University resources or private resources could best improve marketability and whether all inventors agree with the reassignment. Upon reassignment, the inventor(s) are responsible for payment of prior patent costs and all further development, patenting and marketing expenses. If additional University resources are used to further develop the invention, the University may reassert ownership interest in the invention.
7. What right does a research sponsor have to any discoveries associated with my research?
A sponsored research agreement or grant agreement should specify the intellectual property rights of the sponsor. In the case of the U.S. government (NIH, NSF etc.) they maintain non-revocable non-exclusive license to use the technology. For commercial sponsored research the University retains ownership of the patent rights and other intellectual property resulting from the sponsored research. However, the sponsor may have rights to obtain a license to the intellectual property arising from the research. Often, sponsored research contracts allow the sponsor a limited time to negotiate a license for any patent or intellectual property rights developed as the result of research. Even so, the sponsor generally will not have contractual rights to discoveries that are clearly outside the scope of the research (and which do not use funds from the research agreement). Therefore, it is important to define the scope of work within a research agreement.
8. What can be patented and how long does it take to obtain a patent?
An invention is patentable if it is novel, non-obvious, and useful. Novel means new. Non-obviousness is achieved if someone who is skilled in the art would not have thought of the idea easily. A new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement may be eligible for patent protection. Methods making use of concepts and ideas may be eligible for patent protection. On the other hand, concepts and ideas per se are not patentable.
Generally patents are issued within 18 to 48 months after application though inventors in the biotech and computer fields should plan on a longer waiting period. During this period a patent is "pending". A pending application still affords some protection, as infringers of a technology labeled “patent pending” can be subject to legal action upon issuance of patent claims covering that technology.
9. What are the other types of IP protection available (trade secrets, copyright, trademark)?
A trade secret is confidential information having a commercial value, where the value at least partially comes from keeping it secret. Recipes or formulae, customer lists, business methods, and manufacturing methods are just a few examples of things that can be held as trade secrets. The trade secret approach is an alternative to patent protection for things that are not subject to protection by patent, where getting a patent may be difficult, or where the kind of detailed disclosure required in a patent would enable competition in spite of your patent. One benefit of trade secret protection is that it has no expiration date—protection lasts as long as you are able to keep it secret. However, once secrecy is lost, you typically cannot exclude others from using the information.
A Trademark includes any word, name, symbol, device, or combination that is used in commerce to identify and distinguish the goods of one manufacturer or seller from those manufactured or sold by others, and also to indicate the source of the goods. In short, a trademark is a brand name. A service mark is any word, name, symbol, device or combination that is used or intended to be used in commerce to identify and distinguish the services of one provider from those of others and to indicate the source of the services. It is not necessary to register a trademark or service mark to prevent others from infringing upon the trademark. Trademarks generally become protected as soon as they are adopted by an organization and used in commerce, even before registration. With a federal trademark registration, the registrant is presumed to be entitled to use the trademark throughout the U.S. for goods or services for which the trademark is registered.
A Copyright is a form of protection provided by the laws of the U.S. and other countries to the authors of "original works of authorship". This includes literary, dramatic, musical, artistic, and certain other intellectual works as well as computer software. This protection is available to both published and unpublished works. The Copyright Act usually gives the owner of the copyright the exclusive right to conduct and authorize various acts, including reproduction, public performance and making derivative works. Copyright protection is automatically secured when a work is fixed into a tangible medium such as a book, software code, video etc. In the United States, copyright protection lasts the lifetime of the author plus 70 years.
In some instances, the university registers copyrights, but generally not until a commercial product is ready for manufacture. All new software and source code intended for commercial distribution should be disclosed just as any new invention and processed and managed by the IDEA Center.
10. How are license revenues distributed?
Please read the University's official IP policy for more information on how revenue is distributed.
11. I am considering starting a company. Where do I begin?
The Commercialization Engine Team is the best starting point for initial consultation regarding your new venture development interests. We can help you understand key considerations, such as:
- Your desired role in the venture and whether or not it's best for you to lead the company
- Other management resources needed
- Possible avenues for funding resources
- Other avenues for support
We can also make referrals as appropriate to other organizations on campus and in the region based on the needs of your venture.
12. How does a company based on Notre Dame technology get started?
Filing the invention disclosure with the Commercialization Engine Team is always the first step. After that, the path to commercialization always leads to a license from the University to the company. Whether the technology is commercialized by a large, established company or a new start-up, the license is the mechanism used to give the company the necessary rights to use the University’s technology.
13. Do I have to leave ND to start a new company?
It depends on the role you want to play in the new company. If you plan to be the president or chief executive officer, you may find it difficult to fulfill your faculty responsibilities, avoid conflict of interest or conflict of commitment, and spend the time necessary to build your company. However, if you take a role that is less involved in the day-to-day management of the company, such as chief technical officer, you may very well be able to maintain both positions (see discussion of conflict of interest on how to disclose and manage both roles).