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)

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Understanding Patents

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)

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Patent Basics

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)

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Patent Basics II: Prosecution

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)

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Understanding Copyrights

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)

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What is a Copyright?

Learn about what copyright involves, including what types of works are subject to copyright protection. (~5 minutes)

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Copyright Basics 

This medium-length presentation explains the history of copyrights, relevant definitions of what copyright material is (and isn’t). (~12 minutes)

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Fair Use of Copyright Material

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)

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Learn about the importance of trademarks and how they can protect the reputation of your business. (2-minute video)

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Learn about how to deal with trade secrets, using federal labs as an example, when partnering with businesses or individuals. (2-minute video)

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The U.S. Bayh-Dole Act of 1980 fundamentally changed the nation’s system of technology transfer. This act was co-sponsored by Senators Birch Bayh (D-IN) and Robert Dole (R-KS).  The act created a uniform patent policy among the various federal agencies that fund research.  This enables small businesses and non-profit organizations, which includes universities, to retain title to inventions made under federally funded research programs.

Major Provisions of the Act

• Non-profits, including universities, and small businesses may elect to retain title to innovations developed under federally funded research programs
• Universities are encouraged to collaborate with commercial concerns to promote the utilization of inventions arising from federal funding
• Universities are expected to file patents on inventions they elect to own
• Universities are expected to give licensing preference to small businesses
• The government retains a non-exclusive license to practice the patent throughout the world
• The government retains march-in rights to take title to the invention in very specific circumstances

Source:  AUTM Website

A patent for an invention is the grant of a property right issued by the patent office of the country or region in which protection is sought.  A U.S. patent is effective within the United States, U.S. territories, and U.S. Possession and grants the right to exclude others from making, using, offering for sale or selling the invention in the U.S., or importing the invention into the U.S.  The typical term of a U.S. patent is 20 years from the date on which the patent application was filed in the United States or, in some cases, from the filing date of an earlier related patent application, assuming all periodic maintenance fees are paid.  Patent term extensions or adjustments may be available in special circumstances.  The potential for success in the market can be greatly strengthened by the support of a patent, which can provide a substantial and sustainable competitive advantage.

There are three patent types:

1. Utility Patent: Protects any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.
2. Design Patent: Protects a new, original, and ornamental design of a manufactured article.
3. Plant Patent: Protects a new and distinctive plant that can be asexually reproduced.

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.

For an invention to be patentable, it must meet the following requirements:

1. Reduced to practice – The invention must be more than just a theory or concept and requires a complete description of the new process, machine, article, or composition.
2. Novel – The invention must be new and different from what has been used or described in the prior art.
3. Useful – The invention must have a useful purpose and must be operative to perform the intended purpose.
4. Non-obvious – The invention must be sufficiently different from the prior art in a way that is not obvious to someone of ordinary skill in the field of the invention or covered by prior-art (that is, someone has described or shown or made something that contains a use of technology that is very similar to your invention)

It is important to note that not all inventions and discoveries are patentable. The courts have interpreted the patent law to define certain limits on patentable subject matter. 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 a patentable invention unless it executes a new technical process or improves the functionality of a device. Also, works of authorship are not eligible for patents.

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 Provisional patent application provides the means to establish an early effective filing date in a later filed non-provisional application and provides a short-term amount of protection (one-year). The effective filing date establishes the priority or place in line with respect to the prior art and inventions of others that can be used to reject the subject patent application. Having an early filing date is especially important now that the United States has transitioned to a first inventor-to-file (FITF) system. At the end of the year time limit (or before), one must convert to a Non-Provisional patent application.

A Non-Provisional patent application (or a full patent) contains all appropriate embodiments and at least one claim.

A Divisional patent application is a patent application that has been “divided” from an existing application.  A divisional application can only contain subject matter in the application from which it was divided (its parent) but retains the filing and priority date of that parent.

A Continuation is an application filed by an applicant who wants to pursue additional claims to an invention disclosed in an earlier application of the applicant (its parent) that has not yet been issued or abandoned.  The continuation uses the same specification (or body) as the pending patent application.

Continuation-in-Part is an application claiming priority to the parent application in which the applicant adds subject matter not disclosed in the parent, but repeats substantial portion of the parent’s specification, and shares at least one inventor with the parent application.

A PCT is an international application filed under the Patent Cooperation Treaty. The Patent Cooperation Treaty provides a unified procedure for filing patent applications in each country that is a party to the PCT (about 150 countries).  However, the PCT does not provide for the grant of an “international patent” as one does not exist.  Each country or regional authority that is a party to the PCT determines whether to issue a patent in that country or region.

Once the application file is accepted as complete, the case is assigned to a patent examiner.  Once submitted, the patent application undergoes examination by the patent office.  This examination process is a series of discussions that occur between the patent attorneys working on behalf of the University and a patent examiner at the patent office that was assigned the patent case.

Ongoing discussions can occur with the examiner until the application is:

• Accepted as is
• Accepted after changes are made
• Rejected through a final rejection notice*

*There are a variety of paths that can be taken to pursue patent protection for the invention in the event of a rejection.

The duration of these discussions can vary significantly and can typically last over three years. The Innovation Institute remains involved with the inventor and the patent attorney throughout the process. The term of a patent is 20 years from the earliest effective filing date.

Since the patent rights granted by the United States Patent and Trademark Office (USPTO) do not cover foreign countries, the differing foreign laws for each country must be followed for protection in that country. Foreign patent applications must be filed within one year of a US application and the cost for this filing changes depending on the number of countries selected for protection and the respective costs associated with filing applications in those countries. Fortunately, most countries have signed the Patent Cooperation Treaty (“PCT”) which helps to centralize the process and defer fees.

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).

Some of the University’s most successful commercialization efforts have been in the form of creative works content developed by Pitt faculty and staff and delivered as books, papers, CDs, DVDs, databases, software or computer programs – all of which are common examples of copyright material. Copyrights protect original works of authorship and prevent others from being able to reproduce your work or prepare derivative works based on your work without the author’s permission.

A creative work is copyrighted automatically once the original work is affixed in a tangible medium, such as an article, book or CD. The copyright symbol (©) is used to remind people that the material is protected and should be visible on the work along with the entity that owns the work and the date.

The copyright can be registered by the Copyright Office of the Library of Congress which provides certain rights such as access to federal courts, a presumption of validity and ability to pursue statutory damages.

The copyright owner is also the only person, in most circumstances, who can prepare or give permission for the creation of a “derivative work”. A “derivative work” is an original work of authorship based on the material protected by the original copyright, which expands, abridges or makes other copyrightable modifications to the original work. Some common examples of a derivative work include: a French language translation of an English language novel or poem; a movie screenplay based upon the original mystery novel, or if computer code is involved, the rewriting of the code in a different computer language.

If the copyright owner grants permission for someone to prepare a “derivative work”, only the newly added material can be the subject of a new copyright and the original owner retains the copyright in the preexisting work. In these situations, it is important to have an agreement in place first which specifies ownership of the derivative work.

What can you copyright?

• Books, periodicals, manuscripts
• Software, computer programs, apps
• Stage plans and screenplays
• Music and motion pictures
• Fine art, graphic art, photographs, prints and art reproductions
• Maps, graphs and charts
• Technical drawings, diagrams and models

What can you not copyright?

• Ideas, facts
• Titles, names
• Short phrases
• Common property
• Blank forms
• Works consisting entirely of information that is common property and containing no original authorship. Examples include standard calendars, height and weight charts, tape measures and rulers and lists or tables taken from public documents.

Copyrights offer protected exclusivity, at least for a limited time.

The term of copyright for a particular work depends on several factors, including whether it has been published, and, if so, the date of first publication. As a general rule, for an individual author, copyright protection of a work extends for the author’s life plus 70 years. For employers, copyright protection of a work extends for 95 years from the date of publication. The protection extends for 95 years from first publication or 120 years from creation (whichever is shorter) for works “made for hire.”

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.

“Copyright © [Year] UNIVERSITY OF PITTSBURGH. All rights reserved.”

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.

“Copyright © [Year] UNIVERSITY OF PITTSBURGH. All rights reserved.”

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.

Research tools are materials such as antibodies, vectors, plasmids, cell lines, transgenic mice, and other materials used as instruments in the research process.  Research tools do not necessarily need to be protected by patents in order to be licensed to commercial third parties. If you have research tools that you believe to be valuable or wish to provide to others (including research collaborators), the Innovation Institute will work with you to develop the appropriate protection, licensing, and distribution strategy.

Know-How (or knowhow, or procedural knowledge) is a term for practical knowledge on how to accomplish something, as opposed to “know-what” (facts), “know-why” (science), or “know-who” (communication). In the context of intellectual property, know-how is a component in the transfer of technology in national and international environments, co-existing with or separate from other IP rights such as patents, trademarks and copyrights and is an economic asset. When it is transferred by itself, know-how should be converted into a trade secret before transfer in a legal agreement.

Know-how refers to all technical information, knowledge and data, including inventions (whether patentable or not), discoveries, trade secrets, specifications, instructions, processes, formulae, materials, expertise and other technology applicable to compounds, formulations, compositions, products or to their manufacture, development, registration, use or commercialization or methods of assaying or testing them or processes for their manufacture, formulations containing them, compositions incorporating or comprising them and including all biological, chemical, pharmacological, biochemical, toxicological, pharmaceutical, physical and analytical, safety, quality control, manufacturing, preclinical and clinical data, instructions, processes, formulae, expertise and information, regulatory filings and copies thereof, relevant to the development, manufacture, use or commercialization of and/or which may be useful in studying, testing, development, production or formulation of products, or intermediates for the synthesis thereof.

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 copyright protection.

® 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).

In contrast to registered intellectual property as described above, trade secrets are pieces of intellectual property that are not disclosed to the world. The most important aspect of this type of intellectual property is that of secrecy. The protection will remain in place only as long as the secret information is maintained in confidence. In order to keep protection while a trade secret is being used, it is necessary to bind those individuals having access to the secret by a contractual agreement not to disclose it.  Such agreements are called nondisclosure or confidentiality agreements.  Many other requirements also exist, the description of which go beyond the scope of this document.  Given the complexity with which trade secrets need to be handled, the University does not accept trade secrets from others and does not keep trade secrets itself.

Unlike registered intellectual property, there is no federal trade secret statute. Trade secret laws are determined by the individual states but generally adhere to similar principles. However, once a trade secret is told to someone not bound by any confidentiality provisions, protection for this item is lost.

The recipe for Coca Cola® is perhaps the best-known example of a trade secret.

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.

All innovations developed at Pitt should be disclosed to the Innovation Institute using the electronic invention disclosure form available at https://www.innovation.pitt.edu/invention-disclosure.

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 Innovation Institute can help you with the Invention Disclosure form (https://www.innovation.pitt.edu/invention-disclosure). You can contact the Institute using the contact form at https://www.innovation.pitt.edu/contact/.

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 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.

Guidance on the Conflict of Interest approval process for new licensed startup company formation can be found here: https://www.coi.pitt.edu/outside-activities/licensed-start-companies.

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.

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View the patent process, patent basics, patent FAQs and more on the USPTO’s main website.

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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.

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A Confidential Disclosure Agreement (CDA), also called a Non-Disclosure Agreement (NDA), is a legal agreement that protects non-public information shared between parties. Before disclosing any confidential or proprietary information about your technology to anyone outside the university, you must have a CDA in place. Sharing without one can jeopardize commercialization opportunities and your intellectual property rights.

Where to Start

• Research-related discussions: Contact the Office of Sponsored Programs (OSP), which manages non-financial agreements, including CDAs, Material Transfer Agreements, and Data Use Agreements.
• Commercialization-related discussions: Contact the Innovation Institute for guidance on sharing proprietary information about your university technology that is not yet public through a patent or publication.

Important: Do Not Sign a CDA Yourself

All CDAs must be signed by an authorized university representative to be legally binding. If you sign one yourself, the agreement will not be enforceable and you risk losing rights to your intellectual property.

Contact the Innovation Institute at 412-383-7670 or innovate@pitt.edu with any questions.

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:

https://www.policy.pitt.edu/sites/default/files/Policies/Research-Innovation/Policy_RI_10.pdf

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.

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.

A student owns IP that they create within the normal course of their enrollment.

Students typically will also own the copyrights in their dissertations. However, there may be situations where the University will own software code, patentable subject matter, and other intellectual property described in a student’s dissertation depending on how that work was funded.

The University may only claim ownership of that IP created by students as a result of conducting sponsored activities (such as performing work in a laboratory on a project funded by a third party) or who are bound by other written agreement(s), such as a student hired to perform work for the University.

Yes, it does. The application of this policy to academic visitors is available here: https://visitor.pitt.edu.

All full-time and part-time staff are considered to be University members and are subject to this policy. Any inventions or copyrightable works created in your role at Pitt will follow the ownership rules described in the answer to the above question: Who owns intellectual property created at Pitt?  Generally, given that staff work is performed at the direction of the University for a specific University purpose this intellectual property will in most cases be owned by Pitt.

If your activities during your sabbatical involve IP creation, you should discuss with your Chair and Dean how this policy may apply to you. This is dependent on a number of items (such as if any Pitt resources, funding, or IP will be used during the sabbatical) and can be addressed on a case-by-case basis with your Chair and Dean in consultation with the Innovation Institute.

When you create IP while engaged in approved outside activities with no more than an incidental use of University resources, the ownership rights will belong to you, as long as:

1. the IP does not constitute or infringe upon any IP (or any associated modifications or derivative works) that is owned in whole or in part by the University;
2. the IP is not made, conceived, reverse engineered, or reduced to practice using any of the University’s IP or any University resources; and
3. the IP is not the subject of a research agreement between a third party and the University.

Incidental use is defined in the University Conflict of Interest Policy for Research (Policy #11-01-03) 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.

Please contact Pitt’s Conflict of Interest Office for any questions regarding such consulting activities.

In general, you have the ownership rights for any scholarly work that you’ve created in the normal course of your research, scholarship, teaching, or other academic responsibilities.

In the case of scholarly work that was created for a sponsored activity or directed by a third-party contract, grant, or cooperative agreement, the ownership is subject to the terms of the activity or agreement.

Course materials created in the course of teaching responsibilities at the University are owned by the innovator(s).

The University receives a royalty-free, world-wide, non-exclusive, irrevocable license to use the course materials for educational or administrative purposes consistent with the University’s educational mission and academic norms. This license does not include the right to sub-license course materials.

This means that while the University may use the material in courses, they cannot sell it or repackage it to be sold.

Although most software methods are not eligible for patenting, certain technical software innovations and computer-implemented processes are still patentable.

In general, software is owned by the developer(s) unless the software:

• results from a sponsored activity paid for by a third party (such as a research grant from a federal agency or foundation)
• is directed by a contract, grant, or cooperative agreement with a third party
• is supported by anything more than an incidental use of University resources
• relies upon preexisting Pitt-owned IP
• 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 (Policy #11-01-03) 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.

There may be situations where the University will own software code described in a student’s dissertation depending on how that work was funded.

The Innovation Institute can work with an innovator (faculty, staff, student, or collaborator of the University) to help determine the ownership of any intellectual property.

To contact the Innovation Institute, you can email innovate@pitt.edu. For immediate assistance, you can call (412) 383-7670.

There are times when the transfer of IP from the University to the innovator makes sense. For example, transferring ownership can allow the innovator(s) to protect or commercialize the IP when the University has decided not to do so.

In such situations, the innovator(s) may request that the University release IP ownership and assign it back to them. Transfer requests must be made in writing to the Senior Vice Chancellor for Research. Keep in mind that the University’s ability to make the transfer may be subject to the rights of any third party involved (such as the federal government).

Innovation Institute staff will provide guidance on the transfer process, which differs based on the nature of the obligations to third parties. Upon transfer, the innovator will be responsible for all costs going forward and for any reporting obligations associated with that invention by the funder.

Note that for federally funded projects, the federal government must approve this transfer (which may take an extended period of time beyond the University’s control). Also, the subsequent reporting obligations to these agencies may be extensive and persist for an extended period of time.

If proceeds are obtained from IP licensing activities, the proceeds will be distributed to the innovator(s) as specified in the Pitt IP policy. The distribution formula for patented and copyrighted IP is described in questions below.

Pitt may obtain equity as part of a licensing transaction for intellectual property. If the company has a liquidity event, Pitt will distribute these proceeds to the innovators/authors according to the distribution formula in the IP policy.

A liquidity event can include, for example, the sale of the company, an IPO, or the dissolution of the company via an asset sale.

Yes. The proceeds from licensing of intellectual property rights are distributed to innovators according to the appropriate distribution formula in the IP policy.

Revenue received by the University is first used to recover any outstanding administrative, patent prosecution, and legal fees.

Second, any financial support received from a University Development Fund may need to be reimbursed if this was originally specified.

After these financial requirements are met, these net proceeds are distributed to the various parties according to the distribution formula in the IP policy. The distribution may include innovators, units (typically the department, division, institute, or center), Schools, Provost, Senior Vice Chancellor for Health Sciences, and Senior Vice Chancellor for Research.

Where the University has an ownership interest in patents (or groups of related patents or technology rights) and revenue results from licensing that work, the following distribution of the net proceeds will apply per the IP policy:

Where the University has an ownership interest in a copyright and revenue results from licensing that work, the following distribution of the net proceeds will apply per the IP policy:

In this case, revenue will be distributed according to the patent distribution formula.

The proceeds from jointly owned IP are distributed first with a portion going to the partner institution as defined in the inter-institutional agreement between Pitt and the partner institution and then according to the appropriate distribution formula per the IP policy.

The first step in calculating the split of proceeds amongst innovators is the completion of a Proceeds Distribution Agreement, or PDA, which is required for any distribution.

The PDA is a written document that defines how the innovator portion of proceeds (i.e., the 45% due to the innovators under the patent distribution formula or the 50% due to the innovators under the copyright distribution formula) is to be split among the innovator group.

The innovators themselves decide how to split the proceeds. While the PDA is routed to the lead innovator listed on the licensed intellectual property, all innovators must sign off on the agreed-upon split.

In the template PDA that is initially routed to the lead innovator, the innovator share is divided equally among all innovators. However, this is for template starting purposes only and the innovator group can agree in writing to a different distribution if circumstances warrant a revised allocation.

A PDA is generally executed once a license agreement is signed (and not at the option agreement stage). This is the stage when net proceeds are typically at levels that exceed the internal investments required for outstanding administrative, patent prosecution, and legal fees in addition to any financial support received from a University Development Fund that may need to be reimbursed.

Further, if the license agreement provides for an “installment payment schedule” for the licensee to reimburse the University for past patent expenses over time, the PDA is executed only after all these installments have been paid by the licensee, again reflecting the point at which net proceeds are likely to be positive.

If this innovator is entitled to receive proceeds, such payments will continue to be paid to the individual’s estate and subsequently to those parties lawfully granted such rights in a court-approved proceeding.

These innovators will not share in any commercialization proceeds unless a contract, grant, or agreement specifies a distribution, which is not something that typically occurs.

If an innovator entitled to proceeds leaves the University, either voluntarily or involuntarily, they will continue to remain entitled to receive payments as an innovator, but they will not be entitled directly or indirectly to continue to receive or transfer any other rights or benefits to the unit of the innovator.

Proceeds that would otherwise be paid to the research of that innovator will instead be divided by the units, departments, centers, or institutes that supported the creation of the IP. This approach is also taken with the proceeds intended for the units, departments, centers, or institutes when the innovator dies.

In this case, the innovator must provide a disclaimer that is in writing, irrevocable, and in perpetuity, and the disclaimer must be signed prior to any licensing event.

The innovator should consult with their personal legal counsel and/or tax accountant before executing such a disclaimer. After such a disclaimer, the innovator cannot then control or dictate how the proceeds will be distributed. Rather, the proceeds the innovator has disclaimed will be split pro-rata among the remaining pools for distribution.

In this case, the amounts distributed to the department, division, institute, or center will continue to be distributed as agreed to in the original PDA since they were the locations that supported the development of the original innovation.

If net proceeds exceed $10M, the distribution formula may be changed in accordance with a plan approved by the Chancellor of the University but in no event will this potential change reduce the innovator’s share below 45%.

Pitt may obtain equity as part of a licensing transaction for intellectual property. If the company has a liquidity event, Pitt will distribute these proceeds to the innovators/authors according to the distribution formula in the IP policy.

A liquidity event can include the sale of the company, an IPO, or the dissolution of the company via an asset sale.

Download the IP Rights Assignment pdf.

Download the VA and Pitt Dual Rights Assignment pdf.

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.

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

1^st Floor Gardner Steel Conference Center (GSCC)
130 Thackeray Avenue
Pittsburgh, PA  15260

A scanned, signed copy should also be emailed to IPAssignmentform@innovation.pitt.edu.

A copy should be retained by your school/department as part of its IP Assignment agreement compliance process.

You may also send a request to IPAssignmentform@innovation.pitt.edu to complete an IP Assignment through DocuSign.

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 related to the IP assignment agreement submission process should be addressed to IPAssignmentform@innovation.pitt.edu.

Questions about these FAQs, suggestions for additions to these FAQs, or questions about IP in general should be addressed to IPQuestions@pitt.edu.

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.