Tech Commercialization: Bringing Innovations to Life
Intellectual Property
Intellectual Property (IP) encompasses the creative products developed through academic activities at the University of Pittsburgh. This includes technical innovations, inventions, discoveries, and scholarly works such as software. Understanding and managing IP is crucial for turning these creations into impactful market products.
Innovation vs. Invention: Definition, Difference and Importance
In this detailed article, definitions of what an innovation and invention are and the difference between the two. It includes real world comparisons of how an invention evolved to become a commercially successful innovation.
This 5-minute video explores the key differences between Innovation and Invention, and why this is important to understand to improve innovation performance.
The following short and easy-to-understand videos provides definitions of the various types of intellectual property and the rights they give owners. Produced by the Federal Laboratory Consortium.
Learn about Intellectual Property (IP) and how it refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. (1-minute video)
Learn about patents and how they grant ownership rights to owners and inventors in order to protect creations from being used by others. (1-minute video)
In this video, the first 4:30 is spent briefly discussing all the various kinds of intellectual property.(copyrights, trade secrets and patents. At 4:36 the discussion moves to a focus on patents including utility (4:36), design (7:13), and plant (8:49). The requirements for a patent and an introduction to patent prosecution begins at 8:49. (~16 minutes)
This video continues the discussion on patent prosecution and goes into greater detail. Includes detail on design patent prosecution (2:19) and utility application process beginning with provisional applications (3:37) followed by non-provisional applications (5:06). This is a fairly detailed explanation of the parts of a patent (written description, drawings and claims). (~15 minutes)
Learn about how copyrights protect the authorship of creative works and forms of expression. A copyright can grant ownership and give exclusive rights to the owner to decide how when how the work is used. (2 minutes)
This clever film uses “snippets” of well-known animated films to piece together sentences and phrases to teach (including by example) the principles of fair use of copyrighted materials. (~10 min)
In general, Intellectual Property (IP) refers to any product of creativity. In a University context, this includes technical innovations, inventions, discoveries, and scholarly works of art and authorship (including software) created in the course of academic pursuits at Pitt.
Intellectual Property is protected by federal government legislation in the form of patents, copyrights, and trademarks. IP can also be protected around the globe via treaties, conventions and/or local country laws.
FAQs
Patents
A patent is a grant issued by the United States Patent and Trademark Office that covers an invention and gives its owner the right to exclude all others from making, using, or selling the invention within the United States, its territories, and possessions.
The innovators are generally the owners of a patent unless they have assigned their ownership rights to another party, such as an employer. An employer can be a for-profit company or a non-profit entity.
A patent can only be granted for inventions such as machines, processes, compositions of matter, and articles of manufacture. The invention must be new, useful, and non-obvious.
The Innovation Institute can help you determine if your invention may be patentable.
In general, natural phenomena, laws of nature, and abstract ideas are not eligible for patent protection. For example, a new chemical compound may be patented as a new composition of matter, but the discovery of a molecule that exists in nature would not be patentable.
Software typically is not patentable unless it executes a new technical process or improves the functionality of a device.
Also, works of authorship are not eligible for patents.
Although most software methods are not eligible for patenting, certain technical software innovations and computer-implemented processes are still patentable.
A patent is protected for 20 years from the date of filing the nonprovisional (full) patent application.
Public disclosure is the communication of an idea, either verbally or in written form, to an individual or a group that does not have the contractual obligation to keep that material confidential.
In the United States, a patent application can be filed within 12 months of the first public disclosure of an invention. In most foreign countries, an invention is unpatentable unless the application is filed before public disclosure.
Examples of public disclosure may include:
an abstract that appears in a journal
a presentation at a scientific conference
a Ph.D. dissertation
conversations with third parties without a confidentiality agreement
No. Patents may also be granted in foreign countries.
The procedures for filing a patent, the regulations for patentability, and the terms of a patent grant vary considerably from country to country. The overall cost of obtaining a patent increases dramatically as more countries are selected for patent protection.
When it is determined that patent protection is the most appropriate form of IP protection for Pitt-owned inventions, the University will normally file a provisional patent application.
Filing a provisional patent application establishes a priority date for the invention and gives the Innovation Institute and the innovator time to assess the commercial potential of the invention. The priority date is important given that ownership goes to the first organization to file a patent–which may not be the first one that invented the subject matter in the patent. The provisional application may serve as the basis for a nonprovisional (full) patent application or international Patent Cooperation Treaty (PCT) application if warranted.
In any event, a full patent application must be filed within 12 months of filing a provisional patent application.
For IP that is not owned by Pitt, the pursuit of a patent is the responsibility of the innovator(s).
Patent applications are filed and handled by patent attorneys outside of the University who are selected and directed by the Innovation Institute. Patent attorneys work closely with Pitt innovators during the process of securing patent protections for Pitt-owned inventions.
For IP that is not owned by Pitt, the pursuit of a patent is the responsibility of the innovator(s).
Copyright
A copyright establishes ownership in a work of authorship. In general, the owner has the exclusive right to reproduce, publish, and sell the work (and allow others to do the same).
A copyright generally covers items such as a piece of software code, a course curriculum, a play, a painting, a musical score, a film, or an architectural work.
When it is determined that copyright protection is appropriate for a Pitt-owned innovation, the innovators will be asked to complete a copyright checklist to confirm authorship, sponsorship, ownership, and third-party rights in the work.
Copyright protection is automatically established at the time that a work of authorship is expressed in a tangible form (written, recorded, etc.). Formal registration is not required to establish ownership but is required to enforce the copyright.
For IP that is not owned by Pitt, the pursuit of copyright protection is the responsibility of the innovator(s).
The following notice should be applied on Pitt-owned works to protect a copyright and inform the public that the University claims ownership of the work.
The date in the notice should be the year in which the work is first published.
The following notice should be applied on Pitt-owned works to protect a copyright and inform the public that the University claims ownership of the work.
The date in the notice should be the year in which the work is first published.
When faculty publish books or articles in journals, the author will typically assign their rights in the copyright to the publisher. This does not cover the material in the article but the form of the article itself. The Innovation Institute can assist a faculty member in this situation to ensure that the assignment of rights is handled properly.
A patent protects an invention. A copyright covers the actual work of art or authorship but not the idea or concept these works attempt to convey.
A patent protects an invention. A copyright covers the actual work of art or authorship but not the idea or concept these works attempt to convey.
Trade and Service Marks
A trademark is a word, name, symbol, or device (or any combination) used by an organization to identify its goods and distinguish the source of the goods from those of others.
Prior to registration for trademark protection, the designation “TM” after a trademark will give adequate notice of a claim of ownership.
The designation “®” for a trademark may only be used after registering it with the U.S. Patent and Trademark Office.
A service mark is a word, name, symbol, or device (or any combination) used by an organization to identify its services and distinguish the source of the services from those of others.
Prior to registration for protection, the designation “SM” after a service mark will give adequate notice of a claim of ownership.
® provides notice of federal trademark registration
The use of the ® symbol means that a trademark has been registered with the U.S. Patent and Trademark Office.
Trademark protection imposes certain obligations on the part of the holder of the mark, such as actual sustained use in commerce. In the case of trademark protection of an innovation, the University’s preference is to rely on use of “TM” or “SM” (i.e., unregistered marks) rather than ® (registered marks) for unlicensed technologies.
Contact the Innovation Institute with any questions about the registration of trademarks or service marks for Pitt-owned intellectual property. If this is for institutional marks – such as the Pitt script name or shield – please contact the Department of Communication or the Office of University Counsel.
For IP that is not owned by Pitt, the registration of trademarks and service marks is the responsibility of the innovator(s).
Protecting IP
The first step in protecting your IP is to communicate your invention, discovery, software, or technology to the Innovation Institute. This communication is called invention disclosure, and it is done by submitting an electronic invention disclosure form at https://www.innovation.pitt.edu/invention-disclosure.
The Institute can then guide you in any other steps appropriate for your IP. Generally, you will work with the Institute to appropriately protect the IP (via patents, copyrights, etc.), determine its potential for commercialization, and identify potential partners for the innovation.
Innovators with appointments at other institutions (e.g., visiting scholars, Veterans Administration, etc.) must declare this on the invention disclosure to Pitt and must also satisfy any reporting obligations they may have with those other institutions.
When submitting an invention disclosure, an innovator may request that the Innovation Institute determine or confirm whether the University has any claim to IP rights. For Pitt-owned innovations, the invention disclosure form includes an assignment of IP rights to the University.
The invention disclosure form will be assigned to a licensing manager in the Innovation Institute who will evaluate the technology and the available options for protecting the intellectual property.
Note that the terms of grants and sponsored research agreements normally create obligations with respect to the reporting of disclosed inventions, technical data, and copyrightable works such as software.
It is very important to understand that any publication or verbal public disclosure that describes an invention prior to filing a patent application may preclude patenting.
After this type of public disclosure:
patenting outside of the United States may not be possible, and
patenting within the United States may be prohibited unless a patent is filed within 12 months of the public disclosure.
If you plan to submit an invention disclosure, please do so before public presentation.
Before you present your work publicly, you may want to submit an invention disclosure to the Innovation Institute if it contains an innovation. This invention disclosure is a key first step toward appropriately protecting your IP so that your rights to the discovery are not forfeited.
So, you may want to meet with a licensing manager at the Innovation Institute to discuss the implications of publication upon your patent rights. A decision on patent filing can typically be reached promptly so that publication will not be delayed.
Commercialization
Commercialization is a key form of research impact. The ability to move research results into new or improved products and services in the marketplace creates the direct societal impact a university-based innovator intended the work to have. Further, these investments made in academic research are one of the greatest sources of regional and national economic growth given the new industries they create, the existing organizations they support and the large number of additional jobs they create.
Intellectual property must be protected so that the University and its innovators can provide access to the innovation to a third party. Without the exclusivity afforded by patent/copyright protection, many companies will not make the significant investments necessary to commercialize University IP.
Pitt, like all other universities, uses legal contracts called option agreements and license agreements to provide third parties with access to its intellectual property.
An option agreement provides a third party a set amount of time to evaluate the technology. During this time period, the third party cannot commercialize the innovation (i.e., they cannot make, market, and sell it).
A license agreement includes a grant of rights to intellectual property, which the licensee needs to commercialize an invention. In exchange for these rights, the University will typically receive some form of remuneration.
The option or license agreement will contain a collection of legal obligations related to what the third party can and cannot do with the intellectual property.
The Innovation Institute can help you find an industry partner and guide you through the process of licensing your technology.
Pitt faculty, staff, or student innovators may request a license to commercially develop their Pitt-owned inventions or copyrighted materials (for example, to create a startup company). Typically, this request is appropriate when licensing would enhance the transfer of the technology, is consistent with Pitt obligations to third parties, and does not involve a conflict of interest.
Such agreements will include all customary licensing terms such as technology development milestones and requirements to disseminate the technology.
Licensed startup companies (LSCs) are new companies that have an Option or License agreement for Pitt technology. In some cases, the University and/or one or more of its employees, students, or members of their immediate families may have an ownership interest in the company.
Taught via Zoom at Columbia University, Fall 2020. Intellectual property (patents, copyrights, trademarks) is an increasingly critical part of almost any business, at almost any stage of growth. This course provides the aspiring business executive, entrepreneur, or scientist an overview of commercial opportunities and risks associated with intellectual property, with a particular focus on technology patents.
WIPO is the global forum for intellectual property (IP) services, policy, information and cooperation. They are a self-funding agency of the United Nations, with 193 member states.
Unlock the potential of your research at the University of Pittsburgh by submitting an Invention Disclosure Form. The form kicks off a streamlined process for pursuing intellectual property protection and evaluating the commercial potential of your innovation.
University of Pittsburgh Intellectual Property Policy
The University of Pittsburgh’s Intellectual Property Policy outlines the guidelines for managing copyrights, patents, and the distribution of commercial proceeds. This policy helps creators and inventors understand their rights and responsibilities regarding their scholarly work, course materials, and inventions. It ensures that intellectual property is protected and appropriately managed within the University framework.
The University’s Intellectual Property Policy (RI 10) describes and establishes the rules, roles, obligations, and responsibilities governing IP matters at the University. It also describes the ownership, distribution, and commercial development of technology created by Pitt faculty, staff, students, and others participating in Pitt programs.
Pitt desires to nurture a culture and infrastructure that creates a thriving innovation community. Pitt’s IP policy describes and establishes the rules, roles, obligations, and responsibilities governing IP matters at the University. It also describes the ownership, distribution, and commercial development of technology created by Pitt faculty, staff, students, and others participating in Pitt programs.
The development of Pitt’s IP policy was guided by the following principles: (1) protecting academic freedom to preserve and advance the educational mission of the University; (2) promoting the dissemination of creative and scholarly works, discoveries, and inventions; (3) encouraging, incentivizing, recognizing, and safeguarding the interests of innovators and the campus community to support the creation and further development of knowledge; and (4) adapting to new, changing, and diverse ways in which knowledge and discoveries continue to be made.
The University of Pittsburgh Intellectual Property policy can be found here:
This policy covers IP developed by full-time or part-time faculty, staff, students, academic visitors, volunteers, postdocs, fellows, trainees, and interns.
In the context of this policy, a student is any individual taking courses at the University. This includes those who are pursuing undergraduate, graduate, or professional studies (seeking a degree or not) as well as individuals enrolled in non-credit courses or programs.
As defined in Pitt’s IP policy, a creator is a University member who creates a copyrightable work of authorship; a developer develops software; and an inventor creates a patentable invention. In this FAQ document, innovator is used to cover all of these terms.
Scholarly work includes scientific or scholarly writings and/or papers; books, theses, and dissertations; poems and other literary works; graphical works (including films, photography, paintings, etc. ); musical works (including compositions, lyrics, performances, mixing, and recordings); architectural works; databases, datasets, collections, or compilations of data; and artistic works and sculptures.
In general, this IP policy only applies to IP covered by licensing agreements with an effective date on or after the policy’s Effective Date.
There are situations, most often occurring with already non-exclusively licensed IP, where new agreements will be treated under the previous policy.
In instances where it is unclear as to which policy governs, the Senior Vice Chancellor for Research will consult with the Office of Innovation and Entrepreneurship for consideration.
If you’ve got an innovation,
The Innovation Institute is the unit of the Office of Innovation and Entrepreneurship that protects and manages IP generated by Pitt innovators. This intellectual property may turn into a patent, a copyright or a trademark. It also provides programs, services, and funding to assess the commercial potential of innovations and accelerate their path to market. Coordinating with partners across the University, as well as external partners, the Innovation Institute helps launch innovations into the world through the licensing of Pitt-developed technologies to existing companies and also through the formation of startup companies created to advance the specific innovation.
The Innovation Institute can help with the disclosure process, ownership questions, patent and copyright filing, and a variety of other steps involved in protecting and distributing your IP.
Ownership
The University is committed to protecting academic freedom necessary to preserve and advance the educational mission of the University. Therefore, ownership of intellectual property defaults to the innovator(s) unless certain conditions require the transfer of ownership to the University.
The University will hold ownership of IP when an innovation:
results from a sponsored activity paid for by a third party (such as a research grant from a federal agency or foundation); or
is directed by a contract, grant, or cooperative agreement with a third party; or
is supported by anything more than an incidental use of University resources; or
is made at the direction of the University for a specific University purpose.
Incidental use is defined in the University Conflict of Interest Policy for Research and refers to the limited personal use of University equipment or services that the University is already providing and the University Member’s use of such equipment or services will not result in any additional expense to the University, or the use will result in only normal wear and tear, and uses only small amounts of power and expendable supplies, and such use complies with existing contractual obligations.
Intellectual Property Assignment
The University of Pittsburgh’s Intellectual Property Assignment process ensures that innovations and discoveries made within the University are properly managed and protected. This process helps creators and inventors understand their rights and responsibilities, facilitating the commercialization of their work while safeguarding intellectual property.
All Pitt principal investigators and employees (other than clerical or nontechnical personnel) named on a federal contract or grant effective or renewed on or after May 14, 2018 will be required to have an IP assignment agreement on file at the Innovation Institute. Pitt research personnel who must comply include, but are not limited to, principal investigators (PIs), investigators, research associates, postdoctoral associates, and research staff.
Graduate students, Postdoctoral Scholars, and undergraduates are not required to complete these IP assignment agreements to be supported on Federal grants or contracts (unless they are submitting a proposal through the Office of Sponsored Programs – OSP) and in any event they are subject to Pitt’s IP policies.
Yes, if the principal investigator is named on any federal contract or grant effective or renewed on or after May 14, 2018, an IP Assignment agreement must be on file at the Innovation Institute.
A postdoctoral researcher with a transitional position preparatory to an academic or research career may hold an appointment as a Postdoctoral Associate or as a Postdoctoral Scholar The requirements for IP assignment agreements depend on the nature of the appointment. Specifically:
Yes, an IP assignment agreement must be on file at the Innovation Institute if a postdoc is employed as a Postdoctoral Associate and supported on any federal contract or grant effective or renewed on or after May 14, 2018.
No, an IP assignment agreement does not need to be on file at the Innovation Institute if a postdoc is appointed as a Postdoctoral Scholar supported by training grants, postdoctoral fellowships, or external funding not subject to Bayh-Dole.
No, graduate students are not required to sign these IP assignment agreements to be supported on federal grants or contracts unless they are submitting a proposal through the Office of Sponsored Programs – OSP. They are still subject to the University Policy on intellectual property and terms of other non-federal support that they may receive.
Yes, if the staff member is named on any federal contract or grant effective or renewed on or after May 14, 2018, an IP assignment agreement must be on file at the Innovation Institute, unless they are clerical or nontechnical personnel.
No, undergraduates are first and foremost students, even if they are compensated as student employees, and do not need to sign these IP assignment agreements to be supported on federal grants or contracts. They remain subject to the University policy on intellectual property and terms of other non-federal support they may receive.
New research personnel added to a federally funded research project on or after May 14, 2018, who are employees, must complete an IP assignment agreement, and the agreement must be filed with the Innovation Institute.
Yes, you will need to sign both a University of Pittsburgh assignment form and a VA assignment form. For convenience, a two page versions of the VA form as the second page, is also available.
IP Assignment Process
Principal Investigators should work with their departments, schools, or centers to obtain IP assignment agreements on an ongoing basis from members of the research team supported by PIs’ federal contracts or grants.
Completed original IP Assignment agreements will be retained and tracked by the Innovation Institute. Schools or departments may already have a process for obtaining IP Assignment agreements from the personnel listed on federally sponsored awards/proposals; in that case follow the process that your unit has developed to route IP Assignment agreements to the Innovation Institute. Or, mail the signed original to:
Innovation Institute Attention: IP Assignment
1st Floor Gardner Steel Conference Center (GSCC)
130 Thackeray Avenue
Pittsburgh, PA 15260
Completed IP assignment agreements may be submitted at any time to the Innovation Institute, even before a proposal for federal funding is submitted to the Office of Sponsored Programs
IP assignment agreements must be submitted when a federal proposal is funded, because IP assignment agreements are required before a federal grant or contract can be activated.
Questions about these FAQs, suggestions for additions to these FAQs, or questions about IP in general should be addressed to IPQuestions@pitt.edu.
Confidentiality Disclosure Agreements
A Confidentiality Disclosure Agreement (CDA) is used when proprietary information about a Pitt technology is shared with another party. This includes any details about the technology that are not yet public through a patent or publication. It is essential to have one of these agreements in place before disclosing confidential proprietary information to anyone outside the University. Without a CDA, sharing this information can destroy the value of your technology.
CDAs need to be signed by an official University representative to be valid. You should not sign agreements yourself, as they won’t be legally binding, and you could lose rights to your intellectual property. Connect with OIE before sharing unpublished or confidential information with a third party.
Intellectual Property Glossary
Here is a list of some of the most common terms you’ll come across related to intellectual property.
Stopping the prosecution process of a patent application; can be implicit, such as failure to reply to an office action or pay a prescribed fee within the time period allowed or explicit, such as the applicant or his agent informing the patent office that further prosecution will not be pursued.
Answer to an office action by a U.S. patent examiner, usually modifying, correcting, striking or adding claims, or correcting drawings in an attempt to overcome objections to the application. Amendments are also used to revise license/option agreements, MTAs and other legally binding contracts and agreements.
An invention lacks patentable novelty if it has been anticipated, exists as prior knowledge, or has been established by publication or use prior to the claimed date of the invention.
The complete, formal document filed with the U.S. Patent and Trademark Office requesting the grant of a patent; includes an oath, specification, claims, and drawings; the application must include a disclosure of the invention that would enable a person of ordinary skill in the art to make and use the invention.
One who receives rights in a patent from another by the signing over or assignment of a right.
One who can assign rights to a patent.
A statement by the patent applicant specifically describing the heart of the invention; claims establish the essence and scope of protection given to the patent owner continuing the same disclosure, but with claims directed to an invention that differs from the original application; usually filed in response to a Restriction Requirement from USPTO.
A situation in which an individual or organization is involved in multiple interests, one of which could potentially influence or compromise the integrity, impartiality, or objectivity of their decisions or actions in the other. In the context of technology transfer, this often refers to scenarios where personal, financial, or professional interests may interfere with the fair and unbiased transfer of technology or intellectual property.
An agreement granting one party the sole rights under a specific issued patent restricting the licensor from granting license to another party.
Signed by President Clinton on Dec. 8, 1994; one resulting change is a U.S. patent granted on an application filed after June 8, 1995, will have a term of 20 years from the filing date rather than the previous standard of 17 years from the date the patent was granted; GATT also provided for provisional applications.
Using an invention that is protected by a valid patent without the consent of the patent owner.
An agreement allowing another party to use, manufacture or sell an invention.
An agreement for use by a licensee in which the license or reserves the right to make similar agreements with other parties.
Indicates that the patent examiner has determined a patent application has met the statutory requirements for patentability and the patent will issue at some future date.
A multilateral treaty effective in 1978 that eliminates some of the duplication involved when obtaining patent protection for the same invention in several countries; more than 100 nations are signatories of PCT; with a PCT it is possible to file and prosecute a single international application, which has the same effect as filing a separate application in each PCT nation that the inventor designates at the time of filing the application; PCT neither creates an international patent nor changes the substantive requirements of patentability in any individual PCT nation (including the United States), it merely reduces the duplication of effort required to file and process parallel applications in several nations simultaneously.
Similar work in literature, issued patents, or published patent applications throughout the world; this body of information in combination with any other public knowledge.
Accepted since 1995, the provisional patent application provides an early priority date without counting against the 20-year patent life. Requirements for filing are specifications, drawings (if necessary), filing fee, and assignee; no claims are submitted with the provisional application. A non-provisional patent must be filed within 12 months of a provisional patent or the subject matter is abandoned and the inventor loses the priority date of the application.
Payment for use of an invention, usually a stated percentage of product sales.
