IP Frequently Asked Questions
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.
IP FAQs
2. How is inventorship on a patent determined?
3. Does the IP belong to me or the University?
5. Why should I submit an invention disclosure?
6. When should I submit an invention disclosure?
7. How should I protect my idea if I am about to publicly reveal it for feedback?
9. What is the cost of obtaining a patent?
10. Who pays for the cost of the patent preparation, filing and prosecution?
12. What is the patent timeline?
13. What is a provisional patent application?
14. What is different about a foreign patent application?
15. How does IP protection work with software?
17. Should I register my copyright?
1. Is my idea Patentable?
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.
2. How is inventorship on a patent determined?
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.
3. Does the IP belong to me or to the University?
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. See Intellectual Property Policy FAQs for further clarification.
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.
5. Why should I submit an invention disclosure?
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.
6. When should I submit an invention disclosure?
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.
7. How should I protect my idea if I am about to publicly reveal it for feedback?
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 Sponsored Programs.
9. What is the cost of obtaining a patent?
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.
10. Who pays for the cost of patent preparation, filing, and prosecution?
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 RI-10, the inventors, the distribution formula is as follows:
For patents or groups of related patents or technology rights, the following distribution of the net proceed will apply:
- 45% of net proceeds to Creator(s), Inventor(s), or Developer(s), with option to set aside up to 10% to support the research of the Creator(s), Inventor(s), or Developer(s).
- 7% of net proceeds to be divided by the units (typically department, division, institute, or center) that supported the creation of the IP
- 5% of net proceeds to the School of the Inventor.
- 3% of net proceeds to be divided by the Provost and Senior Vice Chancellor and/or Senior Vice Chancellor for Health Sciences.
- 40% of net proceeds to the Senior Vice Chancellor for Research to provide resources to obtain and maintain patents, including to cover administrative expenses associated with those activities.
Note that if the net proceeds exceed $10M, the above distribution may be changed in accordance with a plan approved by the Chancellor of the University, but not so as to reduce the inventor’s share below 45%.
Copyrights:
Where the University has an ownership interest in a work and revenues result from licensing that work, the following distribution of the net proceeds will apply:
- 50% of net proceeds to Creator(s) or Developer(s).
- 15% of net proceeds to be divided by the units (typically department, division, institute, school, or center) that supported the creation of the IP.
- 10% of net proceeds to be divided by the Provost and Senior Vice Chancellor and/or Senior Vice Chancellor for Health Sciences, as appropriate.
- 25% of net proceeds to the Senior Vice Chancellor for Research to provide resources to obtain and maintain copyrights, including to cover administrative expenses associated with those activities.
Where a copyrighted work is also patentable, distributions will be determined as if the work is patented. Similarly, if a licensing agreement contains both patent and copyrights, the distributions will be determined as if the technologies are patented.
See Intellectual Property Policy FAQs for further clarification.
12. What is the patent timeline?
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.
You are always welcome to contact the Innovation Institute to discuss what the patenting process might look like for your particular invention.
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?
- 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:
- books
- articles
- educational coursework
- similar works that are intended to disseminate the results of academic research or scholarly study
- popular fiction or nonfiction works
- poems
- 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.
See Intellectual Property Policy FAQs for further clarification.