Definition of Intellectual Property
Intellectual Property (IP) refers to innovations of the mind that the law protects from unauthorized use by others such as inventions, literary and artistic works, and symbols, names and images used in commerce.
The commercial value of an innovation is typically dependent on the ability of its owner to restrict its use (by competitors), thereby creating a limited monopoly. IP protection is traditionally comprised of four categories: patents, copyrights, trademarks and trade secrets.
IMPORTANT: It is critical to avoid public disclosure of your innovation before filing a patent application.
8. When Pitt researchers share tangible forms of intellectual property information, such as a new cell line, with researchers from other institutions, does Pitt maintain rights in the material that is transferred?
The U.S. Patent and Trademark Office (USPTO) defines an invention as “anything made by the hand of man that is a new, useful, and non-obvious process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…”
Invention: It’s important to note that you can’t patent a new discovery. Discovering a phenomenon in nature, for instance, does not constitute an invention, nor does simply identifying a new plant species or new biochemical pathway. However, if you develop a new innovation around that phenomenon or plant species, or create a new way to manipulate or leverage a biochemical pathway to solve a problem, that would qualify as being “made by the hand of man.” In general, the laws of nature, theories, scientific principles and pure algorithms don’t qualify as inventions and therefore cannot be patented.
New: The invention must be new in that it has to be different and distinguishable from anything that is publicly known or available. In the majority of countries, the invention would not be considered new if it has been described to the public anywhere in the world in a patent, a publication, presentation, product demonstration, etc prior to filing a patent application. In the United States, you are granted one year from the date the invention is first publically revealed to file an application.
Useful: It must be considered useful, at least to the extent that it offers one specific use, which must be stated in the patent application.
Non-obvious: Determining what is obvious with respect to patentability can be complex. In short, the invention cannot be an obvious or trivial extension of another existing invention, as determined by a person “with ordinary skill in the art at the time of the invention.”
Process: A process is a method of manipulating certain materials to produce a given result.
Machine: A machine is limited to a particular apparatus designed to accomplish a certain result by distinctive (new, useful, and non-obvious) means.
Article of manufacture: Quite simply, this is a product.
Composition of matter: This refers to chemical and/or metallurgical compositions and may include specific and unique combinations of ingredients or new compounds.
Inventorship is legally determined. An inventor, according to the USPTO, is anyone who conceives of the new ideas that are actually embodied in the claims of a patent application. If a patent application, for instance, includes 10 claims, and you conceived of even one of those claims, you are considered an inventor of the entire invention. However, if that one claim is removed during the course of the patent reviewer’s evaluation of the invention, you no longer will be considered an inventor on that invention. In general, inventorship is based on your participation, contribution, and value to the invention, as perceived by others. Keep in mind that inventorship does not work like authorship of scientific journal articles, which sometimes include all researchers who conducted the work.
In general, under University policies, the University claims ownership and control over all inventions, patents, patentable developments, certain types of copyright protected material, and related know-how developed by its faculty, staff and, in some cases, students. The answer to this question is dependent on specific circumstances, and one should consult with the Innovation Institute regarding their specific situation.
4. If a Pitt faculty member collaborates on research with faculty from another university, how is the ownership of the resulting innovation determined?
Ownership is determined by the employment relationship of the innovators. Collaboration may result in intellectual property that is jointly owned by both of the collaborators’ employers. Pitt’s Innovation Institute will cooperate with its counterpart at the collaborating institution on management of any jointly owned intellectual property. For example, Pitt has in place a Master Inter-Institutional Agreement with Carnegie Mellon University that provides a framework for cooperation in commercialization.
Submitting an Invention Disclosure is an important first step toward having your invention commercialized, as well as triggering a set of actions related to compliance with reporting requirements of various funding sources. The beginning of the commercialization process often involves obtaining intellectual property (IP) protection and working to identify outside development partners. The Innovation Institute works collaboratively with researchers to navigate this process. Furthermore, when you submit an invention disclosure, we review the reporting requirements of the funding source and work with the innovator to meet these obligations. By submitting an invention disclosure, you enable the Innovation Institute to fulfill these obligations.
The invention disclosure should be submitted as early as possible. While the invention disclosure itself offers no patent protection for your innovation, early submission will allow the Innovation Institute to act quickly in filing a patent application to the USPTO. That could be important later, in the event that a similar invention is under development elsewhere.
Just as importantly, you need to submit an invention disclosure early if you’re preparing to reveal enabling information about your innovation in a scientific journal article, conference presentation, or any public forum. The invention disclosure will alert the Innovation Institute to expedite the filing of a patent application (when appropriate) to protect against any public disclosure of enabling information that hasn’t yet been patent-protected.
The Innovation Institute will work cooperatively with you, and make every effort to ensure the timing of the patent application meets your publication needs. If you do reveal enabling information to the public without first filing a patent application, you will potentially jeopardize the University’s ability to obtain patent protection for your innovation, especially outside the United States. Keep in mind that some forums for presentation, even though within the university, would be considered public.
When submitting the invention disclosure, be sure to list any imminent or prior public presentations, posters, abstracts, website descriptions, proposals, applications, dissertations/theses, or publications that includes enabling information about the invention.
The safest approach is to file a provisional patent application before the disclosure, which gives you up to one year of protection before a regular patent application must be filed. Sometimes, a non-disclosure agreement can be used to protect your idea; for example, when you will be discussing your idea with a company. However, in many situations, the audience does not need to know how your invention works; investors are most interested in what problem the invention solves. It may be possible for you to structure your presentation such that a person of ordinary skill in the art would not be able to reproduce your invention. It is best to talk to a licensing manager at the Innovation Institute for guidance.
8. When Pitt researchers share tangible forms of intellectual property information, such as a new cell line, with researchers from other institutions, does Pitt maintain rights in the material that is transferred?
The University does assert ownership over such materials. By using a Material Transfer Agreement (MTA), the University’s rights in the materials are preserved. An MTA also assures that the recipient understands any limitations placed on the use of the material. Material Transfer Agreements are processed by the Office of Research.
Altogether, a regular U.S. patent can cost about $25,000 to $50,000 on average.. Internationally, it may cost $40,000 or more per country per application. Also, patent holders must pay certain maintenance fees annually or every few years (depending on the country) to keep the patent valid and enforceable.
The University covers the costs of obtaining patent and copyright protection for University-owned intellectual property. Those costs are recovered through the commercialization process.
11. How much royalty income can Pitt innovators expect from innovations that are licensed by Pitt to industry?
As per University Policy 11-01-02, the inventors, as a group, will receive 30 percent of the net revenue received from any patent licensed by the University. As per University Policy 11-02-02, the creators of copyrighted materials, as a group, will receive 50 percent of such net revenue. In both cases, keep in mind that license revenue will be used first to reimburse the University for unreimbursed expenses associated with the commercialization of the innovation.
The average patent application remains pending for approximately two years after filing, although biotech and computer science patents typically take longer. Then the USPTO will send written notice to the patent attorney indicating whether the application and its claims have been accepted in the form as filed.
Typically, the USPTO rejects the initial application because either certain formalities need to be corrected or the claims are not patentable over the prior art — meaning anything that has been made or publicly disclosed in the past. If the application is rejected, the patent attorney must file a written response, usually within three to six months, amending the claims or explaining why the USPTO’s position is incorrect. This procedure is referred to as patent prosecution.
It may take two rounds or more before the application is resolved and the USPTO agrees to issue a patent. During this process, the patent attorney often needs input from the inventors to clarify the technical aspects of the invention or the prior art cited against the application.
Patent applications are kept confidential for a period of time, but then about 18 months after filing they are published. After a patent application is published, the full application as well as information about prosecution can be found on the patent office website (www.uspto.gov).
Once a U.S. patent has issued, it is generally enforceable for 20 years from the initial filing date, assuming that all USPTO-mandated maintenance fees are paid. There are some exceptions to this general statement, particularly involving pharmaceutical inventions.
13. What is a provisional patent application?
A provisional patent application, sometimes referred to as a preliminary patent application, is typically a low cost way of recording your invention with the patent office and receiving an official filing date. Filing a provisional application initiates a 12-month period for filing the corresponding full (aka non-provisional) application. Provisional patent protection automatically expires after 12 months. Once a provisional application has been filed, subsequent public disclosures of the information included in the application do not count as prior art against the invention. Thus it is possible to solicit feedback about an invention from potential stakeholders after a provisional application has been filed. However, a provisional patent application can only protect the features disclosed in it. It does not protect features not described in it or invented later.
14. What is different about a foreign patent application?
Foreign patent protection is subject to the laws of each country, although in a general sense the process works much the same as it does in the United States. One important difference is that in most countries an inventor will lose any patent rights if the invention is publicly disclosed prior to filing the patent application, whereas the U.S. has a one-year grace period for filing a patent application on publicly-disclosed inventions.
Although there is no such thing as an international patent, an international agreement known as the Patent Cooperation Treaty (PCT) provides a streamlined filing procedure for most industrialized nations. Filing a single “international” patent application or PCT application preserves the applicant’s right to seek patent protection for an invention in a large number of countries. Eighteen months after the PCT application is filed, the applicant must choose the specific countries in which to pursue patent protection and file applications in the national patent office of each one. Therefore, the PCT delays the need to file separate foreign applications in each country, providing the applicant with ample time to develop, evaluate, and market the invention before investing in the significant costs of international patent protection.
15. How does IP protection work with software?
With rare exception, source code is protectable by copyright, but not by patent. The exceptions are mainly related to whether the software changes the performance of the underlying computer, or simply takes advantage of the computer’s preexisting functionality to accomplish its objective. Generally, a patent protects an idea and a copyright protects an expression of an idea. In the case of software, copyright protects the source code and the object code – but only protects the code exactly as it is written. A patent conveys the right to prevent others from making, using, selling or importing a program that performs the same function or process as the patented software, even if the code is entirely different from the patented software. It is possible to protect some software under both copyright and patent law.
16. What is a copyright?
Not all Pitt innovations that make their way successfully into the marketplace are patentable inventions. In fact, some of the University’s most successful commercialization efforts in recent years have revolved around specialized editorial content developed by Pitt faculty and staff and formatted into books, papers, CDs, DVDs, databases, etc. While not patentable, such works still are protected via copyrights.
Copyrights protect your original works of authorship. They prevent others from being able to reproduce, distribute, or prepare derivative works without your permission. Once your original work is affixed in a tangible medium – such as an article, book, CD, or PowerPoint presentation – it automatically becomes copyrighted. To remind others, simply affix the copyright symbol, the year you produced the work, and the name of the entity that owns your work (e.g., © 2010 University of Pittsburgh) to the work itself.
All of the following can be copyrighted:
- books, periodicals, and manuscripts
- computer programs
- stage plays and screenplays
- music and motion pictures
- fine art, graphic art, photographs, prints, and artistic reproductions
- maps, globes, and charts
- technical drawings, diagrams, and models
You cannot copyright ideas, facts, titles, names, short phrases, or works consisting entirely of information that is common property and containing no original authorship (e.g., standard calendars, tape measures, rulers, etc.).
17. Should I register my copyright?
While your work becomes copyrighted by virtue of putting it into a fixed medium, you might consider registering your work with the Library of Congress. It’s not required, but it may prove beneficial because it:
- establishes a public record of your copyright claim
- is necessary for filing an infringement suit against someone who violates your copyright
- establishes prima facie evidence of validity if made within five years of publication
- allows statutory damages if you register your work within three months of publication or prior to infringement
18. What is a trademark?
The USPTO defines a trademark as “a word, phrase, symbol, or design, or combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.”
Essentially, a trademark is a brand name or logo. The value of a trademark rests in its brand recognition. Depending on the strength of the trademark, the owner can prevent others from using the same – or a confusingly similar – mark.
Unlike a patent or copyright, a trademark can last indefinitely, as long as it has not been abandoned. Generally, trademarks become legally protectable once they are adopted and used in commerce to identify specific goods or services.
In the U.S., a trademark may be registered at the state or federal level. It is not necessary to register a trademark to have protectable rights, but filing offers several advantages, such as public notice of your ownership, the ability to prevent U.S. customs from importing infringing foreign goods, and building a case for trademark registration in foreign countries.
19. What is a trade secret?
The Uniform Trade Secrets Act defines a trade secret as information, including a formula, pattern, compilation, program, device, method, technique, or process, that:
- derives independent economic value, actual or potential, from not being generally known to or readily ascertainable through appropriate means by other persons who might obtain economic value from its disclosure or use
- is the subject of efforts that are reasonable under the circumstances to maintain its secrecy
Essentially, a trade secret is information of commercial value that is not generally known to others and is not readily determinable by proper means. For example, many companies choose to protect process technology by trade secret when it is not possible to determine, from examination of finished product, what process was used to create it.
20. When a Pitt faculty member writes a scholarly book, does the University have any right to the work?
- Under University Policy and 11-02-02, the University affirms that, except as specifically exempted, faculty and students are entitled to claim copyright ownership, including worldwide rights, in the following works authored by them:
- educational coursework
- similar works that are intended to disseminate the results of academic research or scholarly study
- popular fiction or nonfiction works
- musical compositions
- other works of artistic imagination
- If the copyrighted work was produced in the course of their University employment, under the supervision and control of the University as “works made for hire,” in connection with a funded research or other outside agreement, and in other circumstances as outlined in 11-02-02, the copyrighted interests in such works automatically vest in the University.
The Bayh-Dole Act, also known as the Patent and Trademark Act Amendments of 1980, is a federal law that enables universities, nonprofit research institutions, and small businesses to own, patent, and commercialize inventions developed under federally funded research programs within their organizations. The Bayh-Dole Act created a uniform patent policy among the federal agencies that fund research to enable the movement of valuable technologies from the lab to market.
The University is entitled to retain ownership of any inventions created as a result of federal funding, unless the funding agency informs the University up front that the agency will retain title to inventions derived from the funded projects because of specifically identified “exceptional circumstances” or other specified conditions.
- When a University innovator discloses the creation of an invention derived from federally funded research, the University has two months from that date to disclose that information to the appropriate federal agency. The University also must patent all inventions it elects to own and commercialize.
- The University must attempt to develop and commercialize the invention. If an attempt is not made, the federal government retains the right to take control of the invention. The government also may take control of the invention for other reasons, such as a need to alleviate health or safety concerns. This provision is referred to in the law as the government’s “march-in” rights.
- The University must provide the U.S. government with a nontransferable, irrevocable, paid-up, nonexclusive license (“confirmatory license”) to use the invention.
- In granting a license to use the invention, the University also generally must give priority to small businesses, while maintaining the fair-market value of the invention.
- When granting an exclusive license, the University must ensure that the invention will be “manufactured substantially” in the United States.
- Excess revenue must support research and education.
- The University must share a portion of the royalties with the inventor(s).
Public Disclosure of Intellectual Property
Your innovation commercialization journey begins at the Innovation Institute with the process of protecting your innovation, typically with a provisional patent application, where applicable, submitted to the U.S. Patent and Trademark Office.
But such a journey can end abruptly and without success if your innovation is publicly disclosed before the provisional patent application is filed.
IMPORTANT: After an innovation becomes public, it may no longer be eligible for patent protection. Therefore, it is critical to avoid public disclosure before filing a patent application, where possible.
What constitutes a public disclosure of your intellectual property? In short, more than you might imagine. Here is a list of activities to consider avoiding prior to working with the Innovation Institute to seek patent protection for your innovation:
- Publishing anything — abstract or journal article, for instance.
- Giving a talk or a poster presentation at an “open” meeting.
- Sharing the content of a patent application or any description of the innovation with someone outside of the university.
- Talking with external parties about the innovation without the use of a confidentiality agreement.
- Transfer of scientific materials with the use of a material transfer agreement.
- Posting messages on a Web site, public news group or blog that describe your innovation.
- Grant progress reports — for the same reason as above.
- Student theses (under some circumstances) — even if nobody ever actually reads them.
- Classroom presentations — including distribution of handouts.
- Department seminars.
Not all activities are considered public disclosures of your innovation. The following activities will not jeopardize any potential patent rights:
- Lab meetings— as long as they are attended only by University employees.
- Faculty meetings — again, as long as they are attended only by University employees.
- Confidential submissions for manuscript publications — but only prior to acceptance and on-line or print publications of the manuscript.
- Unfunded government grant applications — proposals submitted to government agencies that have not yet been accepted for funding.
Please consider that you can still talk about your innovation. There will also be ways to talk about your innovation without revealing details of the innovation itself and how it works. Please contact the Innovation Institute for further guidance and advice on protecting your innovation.
Protecting your innovation from public disclosure.
You can protect your innovation from public disclosure with a provisional patent application and/or by using a Confidentiality Agreement or Confidential Disclosure Agreement (CDA). As early as possible, work with the Innovation Institute to submit an Invention Disclosure form, which alerts the Innovation Institute to the existence of your innovation and provides the Innovation Institute with the necessary information to evaluate your innovation for patent protection at the earliest opportunity. Check with your Licensing Manger to learn whether a provisional patent has been filed before making a public disclosure.
IMPORTANT: An Invention Disclosure form is an administrative document and does not provide any legal protection for your innovation.
- CDAs — This agreement should be signed by outside parties prior to discussion of your innovation. A sample CDA can be found on the Innovation Institute Web site. Please contact the Innovation Institute to initiate the CDA process with interested outside parties.
Best Practices for Laboratory Notebooks
n the United States, if two or more patent applications are filed on the same invention, the patent will be awarded to the applicant with the earliest date of invention. In the rest of the world, in a similar situation, the patent would be awarded to the first person to file a patent application on the invention. The United States is thus known as having a “first to invent” patent system and other countries use a “first to file” system.
In a first-to-invent system, if a dispute or question arises as to which of two inventions was invented first, the patent generally will be awarded to the inventor who can prove the date when he or she conceived the invention. Proof must be in the form of documentary evidence, not merely a statement by the inventors based on their recollection of events. The best form of documentary evidence, of course, is a laboratory notebook.
Keeping good notebooks — The purpose of your laboratory notebook is to document how and when your inventions have occurred and show what steps have been taken, and by whom. It is important to keep these records in case a question ever arises about inventive contributions or date of the invention. Questions don’t occur in every patent application, but this issue is not uncommon. Lack of documentation could result in a loss of your patent if the dates or inventors are challenged. Therefore, develop good practices for keeping records regarding your inventions.
What to include — Your notebook should include a description of the problem that you’re studying, a description of your research approach, and any initial ideas or approaches under consideration. Create your notebook entries as you form your ideas and conduct your experiments. Perhaps most importantly, record the conception of any new ideas, particularly if they seem to represent an important scientific breakthrough.
Ideas, theories, lines of inquiry — It is important for you to be able to prove when and how you made your invention. Inventions are considered to have two major development steps: conception and reduction to practice. Conception occurs when an you have a complete idea for a solution to a problem. This must be more than an idea for a line of study, however. You should fully describe your concept in your notebook — in sufficient detail that someone skilled in the field could understand your invention. The date that you first conceive your invention is extremely important, so ensure that your entry is complete, signed, dated, and witnessed. Record any additional ideas and improvements on your Iinvention as they occur, including notes from laboratory group meetings if the work is discussed, and note what contributions or suggestions are made and by whom.
The date that you first conceive your invention is extremely important, so ensure that your entry is complete, signed, dated, and witnessed.
Experimental results and data – Make sure you record data about any experiments in sufficient detail so they could be reproduced. Include information regarding equipment, materials, times, conditions and methods used. Your invention is considered to be reduced to practice when your idea can be made or exhibited to achieve the desired result. Include all data in your notebook, either by directly recording it in the book or by stapling photocopies of the data into the book with sufficient explanation written in the notebook to illustrate that the data is genuine.
How to record information – How you record the information is almost as important as the information itself. Make regular entries in your notebook as you perform experiments and collect data. Ideally this should be done on a daily basis, but this is not always practical. Consider the following six guidelines for best practices:
- Use a bound notebook. Choose a bound book so that no pages can be added, deleted, or placed in a different order.
- Include the names of all research investigators. The first page of your notebook should include the name of the principal investigator, the names of all other investigators involved (both Pitt researchers and external collaborators), the title of the research project, and information about the funding for the project.
- Sign and date every page. Record all Information as it occurs, and make sure that all research collaborators sign and date every page of the notebook. Include the dates of the experiments, and document what the results show. Notations should be objective and factual.
- Don’t erase or tear out pages. Enter all information into the notebook in ink. Do not erase or delete anything from the notebook. Cross out information that is not relevant, but ensure that all notes are legible.
- Don’t skip pages. Any blank space on a page or an empty page should be marked with an ‘x’ or diagonal line through it to clearly indicate that no information was added to the record at a later date.
- Obtain witnesses. This is the most important step in the process. It is extremely important to have someone who is not an inventor record that he or she has read the entries and understands the work. This ensures that the record of any invention is not based solely on the word of the inventors, but rather strengthens the validity of the documentation should there be a question regarding when or how the invention occurred.
The University of Pittsburgh claims ownership and control of the worldwide patent and intellectual property rights which result from activities of its faculty, staff, and students in accordance with University of Pittsburgh Policy 11-02-01.
Ownership of publications and other copyright materials
In the course of teaching, research and other scholarly and administrative activities at the University, faculty, staff, postdoctoral associates, students and others may create works that are protected by copyright. Federal Copyright Law provides protection for original works of authorship automatically at the time those works are fixed in a tangible medium. It is the policy of the University that the copyright in all materials created by University faculty, postdoctoral associates, or students (hereinafter “University Authors”) in the course of their academic responsibilities resides in the University Authors, subject to the following exceptions*:
- Assigned Tasks
- Outside Agreements
- Patentable Works
- Institutional Works
- Recording, Transmission, and Related Classroom Technology
* in accordance with University Policy 11-02-02
Collaboration with faculty from another university
When IP is created by employees of multiple universities (or other third parties), the IP may be jointly owned by those multiple universities (or other third parties). In such instances, the Innovation Institute will work with other co-owning organizations on the protection, maintenance, and commercialization of the jointly owned IP, and negotiate any contracts necessary to this effect.
For example, Pitt has in place a Master Inter-Institutional Agreement with Carnegie Mellon University that provides a framework for cooperation in commercialization.
Collaboration with industry partners or other parties
Jointly held IP provides full ownership rights to all owners; that is, each party owns 100% rights to the IP. As a result, each party can use, license, or sell the IP without consulting the other owner(s). This is a significant matter because the value of IP is often determined by the ability to create a commercial monopoly. Therefore, collaboration with a partner outside of an IP agreement may result in their full ownership of the IP and thus no need for them to license it. Remember that IP of a collaborator is typically owned by their employer.
Sponsored Research Funding
In accordance with elements of the Bayh-Dole Act, the University is entitled to elect ownership of any invention developed in the course of federally funded research contracts. If the University does not elect to retain title to such invention, then control of that invention passes to the Federal agency that funded the research. The University’s Office of Research is responsible for managing such research contracts.
Industry sponsored research
In accordance with University of Pittsburgh Policies 11-02-01 and 11-02-02, the University claims ownership and control of IP developed under research contracts by its faculty, staff and students. Industry sponsored research contracts, as well as some foundation funding agreements may contain licensing rights for IP arising under such agreements. Industry sponsored research agreements and foundation funding agreements are negotiated and managed through the University’s Office of Research. The Innovation Institute will work with you on such arising IP and any licensing obligations to the sponsors of your research.
Transfer of tangible materials
Transfer of tangible material such as research reagents, cell lines, chemical compounds, physical hardware or other materials to outside third parties can compromise the University’s rights to IP contained therein. By using a Material Transfer Agreement (“MTA”; a form that is available on the Office of Research Web site), the University’s rights in the material are preserved, including rights in any progeny or derivatives of the transferred materials. An MTA also assures that the recipient understands any limitations placed on the use of the material.
Inventors’ share of license revenues
Under University Policy 11-02-01, the balance of proceeds from any license or other amounts derived from the transfer of patent rights or unpatented intellectual property (excluding copyrights) will be distributed as follows:
– 30% to the inventor(s);
– 30% to the Patent Rights Fund;
– 10% to a University Development Fund;
– 15% to the department of the inventor; and
– 15% to the Innovation Institute.
Under University Policy 11-02-02, the balance of proceeds from royalties or disposition will be distributed as follows:
– 50% to the creator(s) or developer(s);
– 25% to the department or school of the creator/developer; and
– 25% to the University Copyright Development Fund.