General Technology Transfer Questions
What is technology transfer?
A. Technology transfer is the formal transfer of rights from UM to another party for the use and commercialization of new discoveries and innovations resulting from UM research. The major steps in the process include the disclosure of research innovations by UM researchers to DTM, filing a patent application to protect the innovation, and licensing the patent rights to industry for commercial development. Technology transfer, however, is much broader than just licensing patent rights. Technology transfer also includes transfer of knowledge through training and educating students, extension and outreach services to existing and startup companies, cooperative education and internships, consulting services, and collaborative research activities.
How do the technology transfer services provided by the Division of Technology Management (DTM) in the Office of Research and Sponsored Programs support UM researchers?
A. DTM is a research service unit. Our mission is to help UM researchers transfer research outcomes to the private sector for commercialization. We strive to increase the number of technologies licensed to commercial partners and to facilitate the formation of companies based on UM technologies. We are committed to managing an efficient process that is not burdensome and allows researchers to publish while we seek patent protection on inventions with commercial potential. We market technologies to potential licensees and manage the relationship post-licensing. We keep UM inventors involved throughout the patent prosecution and licensing process. We also review the intellectual property sections of collaborative research agreements to ensure UM’s rights are protected.
How does technology transfer promote local economic development?
A. DTM’s mission is to help commercialize UM technologies by licensing technology to industrial partners. We focus our initial marketing efforts on companies and entrepreneurs in the local area. Existing companies may wish to license a technology to improve current operations or to expand product offerings. Local entrepreneurs may wish to establish a company based on a UM technology. Both existing and startup companies have the potential to create high-wage jobs in the local community. Local companies are also more likely to establish long-term collaborations with UM researchers and provide employment opportunities for UM students, keeping the best and brightest in the community.
What is Intellectual Property?
A. Intellectual property (IP) is a legal concept that includes copyrights, trademarks, patents, and related rights, such as know-how. Under intellectual property law, the IP owner has certain exclusive rights to the covered creative work, commercial symbol, or invention. UM has two policies related to IP: the Patents and Inventions Policy - 2008 and the Copyright Policy. The Division of Technology Management (DTM) is responsible for implementing and managing these IP policies.
Inventions and Patents
Whom do I contact at UM about protecting my discovery?
A. The Division of Technology Management (DTM) within the Office of Research and Sponsored Programs is responsible for managing the university’s Patents and Inventions Policy - 2008. DTM is a small office and we keep each other informed. Feel free to contact Allyson Best (firstname.lastname@example.org) or Walt Chambliss (email@example.com) at any time to discuss your research. It is never too early to talk to DTM; we are a research service unit here to help at any time.
What process does DTM follow once I disclose a possible invention to DTM using the Research Disclosure Form?
A. DTM typically will meet with you to discuss the Research Disclosure Form to better understand the technology and obtain additional information. DTM may conduct a preliminary patent and/or literature search to supplement information you provided in the disclosure. Once DTM determines the disclosure is ready for review, DTM will initiate a formal review of the disclosure for possible patent filing (DTM Procedure on Filing and Processing Research Disclosures).
Should I publish or file for a patent on the outcomes of my research?
A. Yes. As long as you work with DTM, seeking a patent to protect a research discovery does not prevent scientific publications or presentations. A draft publication serves as an excellent starting point for drafting a patent application. DTM will work with an outside patent attorney to accommodate planned publishing/presentation dates whenever possible.
What is a patent?
A. A patent is a time-limited monopoly granted by the government to exclude others from making, using, selling, offering for sale, or importing an invention. In exchange for the monopoly, the patent must teach others how to use the invention to encourage further advances. A patent does not grant the patent owner the right to market an invention. A patent only grants the right to prevent others from marketing the invention without the patent owner’s permission.
What are the criteria for determining if my discovery is a patentable invention?
A. An invention is patentable if it is novel, has utility, and is not obvious to others who work in the same field. It must be usable by others who are considered skillful in the field of the invention. DTM consults with external patent counsel to assess patentability. Ultimately, a patent examiner in the United States Patent and Trademark Office (and international equivalents) will determine whether an invention satisfies the above requirements.
Is there a difference between a co-author on a publication and an inventor on a patent? If so, how are inventors determined?
Unlike authorship of a publication, inventorship is a matter of law. A patent failing to name the correct inventors may be ruled invalid in court. A lawful inventor is one who makes an inventive contribution to one or more of the claims that are ultimately issued on a patent. Someone whose contribution to the project is limited to providing financial support, or an employee whose contribution to the project is limited to carrying out studies under the direction of an inventor, is not an inventor. ( DTM Procedure on Determination of Inventors and Distribution of Licensing Income )
How are inventors kept involved during the patent and licensing process?
A. Inventor involvement is very important to the entire patent and licensing process. DTM works closely with the inventors and appreciates their expertise. Inventors are kept informed of the evaluation process and the actions taken, and their input is considered in making decisions about the invention’s protection and licensing. However, final responsibility for such decisions rests with DTM and UM administration.
What is the benefit of disclosing a possible invention to DTM?
A. Disclosing a possible invention to DTM is an important part of protecting the rights to your discovery and ensuring the university’s compliance with federal regulations pertaining to federal grants and contracts. DTM has the expertise to manage the patent prosecution and to execute a commercialization strategy. If the technology is licensed, inventors will receive a share of licensing income in accordance with the Patents and Inventions Policy - 2008. DTM’s marketing efforts often lead to new relationships with industry that could result in sponsored research in your laboratory.
Who owns inventions at UM?
A. In accordance with the Patents and Inventions Policy - 2008, UM owns any invention made or developed in the course of UM employees’ educational and research activities. UM also owns any invention made or developed outside an employee’s educational and research activities if the employee used substantial UM resources as defined in the policy. UM employees are required to assign all domestic and foreign rights to UM for any inventions owned by UM unless UM releases the rights to the employee (Reference: DTM Procedure on Release of Rights).
I created a possible invention on my own time. Do I need to report it to DTM?
A. It depends. DTM will need to ask you some questions to determine the underlying facts. If the decision is made by DTM that the invention does not belong to UM, then you will be free to pursue the technology on your own. DTM will not be able to expend resources on an invention not owned by UM. You could, however, discuss the possibility of assigning your rights to the invention to UM if you wish to work with DTM.
I developed an invention or a possible invention before coming to UM. How will the invention be managed and who will own it?
A. It depends. DTM will need to ask you some questions to determine the underlying facts. In some cases the invention may be owned by your previous employer, in other cases the invention may belong to you and other inventors. DTM will need to know if you plan to continue to work on the invention as a UM employee. If so, DTM may need to negotiate an agreement with your previous employer or the individual inventors.
Why do I need to list sources of funding on the Research Disclosure Form?
A. Research activities sponsored by companies, foundations, other universities and government agencies are covered by agreements that detail the ownership of intellectual property rights. DTM will need to review the agreements in order to decide how to protect the intellectual property rights. Regulations require federal government-funded inventions be reported to the federal agency that made the award. DTM reports such inventions to the funding agency and indicates the government’s rights on patent applications.
What rights does the Federal Government have in government-funded inventions?
A. It depends on the language in the sponsored research agreement as well as the scope of work. DTM will review the agreements and let you know if the government has rights to any inventions.
Who prepares and prosecutes patent applications for UM?
A. DTM coordinates preparation and prosecution of patents for the university. DTM works with state-approved outside patent attorneys, who are selected based of their technical expertise, to prepare and prosecute patent applications on behalf of UM. DTM manages the interface between the patent attorney and the inventor(s). Although DTM’s goal is to reduce the burden on UM employees, preparing a patent application and responding to questions from patent offices around the world requires a significant amount of work by the inventors. The inventors will typically be asked to prepare a draft manuscript in the format of a publication to supplement the information contained in the Research Disclosure Form. This document serves as the starting point for the outside patent counsel who will convert the document into the style and format of a patent application.
What is the cost of obtaining a patent and who pays for it?
A. The cost of obtaining a patent depends on many factors, including the complexity of the technology and whether patent protection is being sought internationally or only in the U.S. The costs for prosecuting a U.S. patent application typically range from $15,000 to $50,000. Costs for prosecuting international patent applications in developed countries can add another $100,000 to $200,000. Maintenance fees (paid after a patent issues) add several thousand dollars per patent. UM pays patent expenses for inventions owned by UM unless there is an agreement with a 3rd party to pay the expenses (e.g., in a typical license agreement the company pays patent expenses).
How long does it take to obtain a patent?
A. The time it takes to obtain a patent depends on a number of factors including the complexity of the technology and the number of researchers active in the same general field. On average you can expect it to take at least 3 to 4 years, often longer, to obtain a patent in the U.S. Patents may issue faster or slower in other countries depending on the technology.
What is public disclosure and what information can I disclose publicly without losing patent rights?
A. Public disclosure is transfer of information about your invention, written or oral, into the public domain or to a party not obligated to keep the information confidential. You should not make any kind of public disclosure regarding your potential invention without consulting with DTM. In general, you lose the ability to obtain patent protection in most countries as soon as a public disclosure is made.
How do I protect intellectual property rights before public disclosure?
A. You should discuss your plans for a public disclosure with DTM. One option could be to disclose the information to the other party under the terms of a confidentiality agreement. DTM will negotiate and execute the appropriate agreement for you. Another option could be to work with DTM to file a provisional patent application before the disclosure. This step requires expenditures of significant UM resources and therefore must be discussed with DTM well in advance of a planned public disclosure.
Is a grant proposal to a federal agency considered a public disclosure?
A. A grant proposal is not considered public disclosure unless it is available to the general public for review. Since grant applications and reports to federal agencies may be available to the public through the Freedom of Information Act, you should work with a Program Development Specialist in the Office of Research and Sponsored Programs to make sure you follow the agency’s instructions on how to clearly mark confidential information.
What is a provisional patent application?
A. A provisional patent application is a patent application filed with the US Patent and Trademark Office (USPTO) that establishes an early effective filing date for a patent application. The USPTO does not examine the provisional application, and it remains pending for up to one year. At the end of the provisional period, UM must decide either to drop the provisional application or to convert it into a regular patent application. DTM will consult with the inventors and UM administrators as appropriate to make this decision on behalf of UM.
What happens if the university decides not to prosecute or maintain a patent?
A. Patents are expensive. UM may decide not to prosecute or maintain a patent for a variety of reasons. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention and take on the responsibility for paying the patent prosecution expenses (DTM Procedure on Release of Rights). UM will retain a non-exclusive license to the invention for research and education purposes.
How are disputes handled?
A. DTM works closely with UM employees throughout the patent and licensing process to minimize misunderstandings and disagreements. Disputes are handled in accordance with the DTM Procedure on Dispute Resolution.
Marketing and Licensing of UM Inventions
How does the Division of Technology Management (DTM) market technologies?
A. DTM maintains a list of technologies available for licensing on the DTM Website. DTM prepares 1- to 2-page non-confidential summaries of each technology for use in initial discussions with potential licensees. DTM also prepares brief confidential summaries and technical dossiers for review by potential licensees under a confidentiality agreement. Inventors will be asked to review these documents for accuracy.
Who negotiates and signs license agreements for UM?
A. The Vice Chancellor for Research and Sponsored Programs is authorized to sign license agreements. The principal investigator involved in the technology will be asked to acknowledge the agreement. DTM is responsible for negotiating and executing license agreements. An express license agreement for potential industrial partners is available on the DTM Website.
How is income from licensing an invention distributed?
A. In accordance with the Patents and Inventions Policy - 2008, net licensing income for inventions disclosed to DTM under the current policy is distributed as follows:
- 30% to Inventor(s)
- 10% to support Inventor(s) research program
- 15% to the Inventor(s) Department or Center
- 5% to the Inventor(s) Dean’s Office
- 40% to the Office of Research and Sponsored Programs
Distribution of proceeds derived from liquidating equity will be determined according to the specific circumstances of the equity arrangement (DTM Procedure on Distribution of Equity).
What happens if an inventor leaves UM?
A. If an inventor leaves UM, the inventor is still entitled to the inventor's personal share of net license income disbursement. The inventor should provide new contact information to DTM. If the inventor intends to continue to work on the technology at his/her new place of employement, DTM may need to negotiate an agreement with the new employer.
Material Transfer Agreements
What should I do if I want to send/receive research materials to/from researchers outside UM?
A. Transfer of most research materials is handled under the terms of a Material Transfer Agreement (“MTA”). A completed Request for a MTA form should be sent to DTM to start the process. DTM will negotiate and execute the MTA with the 3rd party. Express MTAs for review by the other party are available on the DTM Website. The UM researcher closest to the project will be asked to acknowledge the agreement and discuss terms/conditions with other researchers.
Why do I need a Material Transfer Agreement?
A. A Material Transfer Agreement (MTA) is a legal contract that designates the terms to be followed for the transfer of experimental materials (biological, mechanical, electronic, etc.) coming into or going out of UM. All MTAs for UM are negotiated through the ORSP Division of Technology Management (DTM Website). There are several reasons why MTAs are needed, including:
- Liability – The Vice Chancellor for Research and Sponsored Programs is UM's signatory agent for research-related agreements. If a UM employee, on his or her own, makes arrangements with a third party to receive or send research materials (with or without a written agreement) that individual may be held personally liable for damages.
- Benefit sharing with countries of origin – UM has an extensive number of international collaborations, often involving collection of another country’s natural resources for shipment to UM researchers. It is imperative that government officials who have authority over the protection of their country’s natural resources agree that the materials may be collected and shipped to UM for research purposes. In addition, the MTA contains benefit-sharing provisions in the event UM is able to commercialize a technology originating from research on the materials.
- Required for licensing – Companies will not license a UM technology without assurances that UM has clear ownership rights to the intellectual property.
- UM’s ownership rights – An MTA protects UM’s existing intellectual property rights and details how any new intellectual property created with the transferred materials will be handled.
- Research plan – An MTA includes a plan that specifies what each party will do and sets up parameters for use of the materials by both parties to ensure that they are not used for any other purpose outside the scope of the agreement.
- Publication – The terms by which researchers may publish results of testing on the materials are contained in the MTA. If proper agreements are not in place to clearly define the parameters for publication, your freedom to publish may be limited.
- Confidentiality – An MTA contains confidentiality provisions relevant to a project. Disclosure of a patentable idea without a proper confidentiality agreement can negate patent filing rights.
- Patent law – If the research collaboration involving transferred materials results in an invention owned jointly by UM and the outside party, U.S. patent law requires an agreement to be in place tying the co-owners together.
What should I do if I want to discuss confidential information with someone outside the university?
A. Confidential discussions with parties outside UM should be handled under the terms of a Confidential Disclosure Agreement (also known by many other names such as a CDA, NDA, PIA, Secrecy Agreement, Nondisclosure Agreement, Proprietary Agreement). Send DTM a completed Request for a CDA Request Form to start the process. DTM will negotiate and execute the CDA with the other party. Express CDAs for review by the other party are available on the DTM Website. The UM researcher closest to the project will be asked to acknowledge the CDA and discuss terms/conditions with other researchers.
What should I do if I am asked by a 3rd party to sign a confidentiality agreement?
A. You should not sign a confidentiality agreement presented to you by a 3rd party. Only the Vice Chancellor for Research and Sponsored Programs is authorized to sign confidentiality agreements for UM. Confidentiality agreements may contain language that puts your personal assets at risk if you sign as an individual. You should refer anyone asking you to sign a confidentiality agreement as a UM employee to the Division of Technology Management.
What is a copyright?
A. A copyright is the grant of protection under U.S. laws to the authors of 'original works,' including, for example, literary, dramatic, musical, artistic, and architectural works, and is available for both published and unpublished works. A copyright owner has the exclusive right to authorize users to (among other things): reproduce the work, create derivative works, distribute copies of the work, perform the copyrighted work publicly, and display the work publicly. Software may be copyrighted and/or patented depending on the circumstances.
Do you have to apply to the government for copyright protection?
A. No. Copyright protection automatically exists at the moment of creation. A work is created when it is fixed in a tangible form. It is not necessary to register the copyright with the U.S. Copyright Office, although registration of the copyright is useful in certain litigation situations. Contact the Division of Technology Management with copyright questions.
Who owns a copyright at UM?
A. It is traditional at UM and other universities, for copyrightable works of a faculty member to be deemed the property of the creator, who is considered to be entitled to determine how the works are to be disseminated and to keep any income they produce. This tradition reflects UM's commitment to encouraging members of the UM community to write and to publish what they wish. In this spirit, UM created a Copyright Policy (Policy RSP.TM.400.001) under which UM disclaims any ownership interest in the copyright of works created by faculty, staff, postdoctoral fellows and postdoctoral associates and students, whether in traditional or nontraditional forms, except if the work is defined under the Copyright Policy (Policy RSP.TM.400.001) as being a supervised work or a supported work. In the case of externally sponsored works, copyright ownership will be determined by the applicable terms of the funding agreement.
How are copyright disputes at UM managed?
The University Copyright Committee considers and investigates disputes among administrators, faculty, or staff and recommends appropriate solutions to the Provost. The Committee's responsibilities include, but are not limited to, disputes concerning:
- Whether Substantial Use of University Resources has occurred;
- Ownership of works which may be supervised, supported or externally sponsored works;
- Distribution of royalties, including determination of the amount of reimbursement to the university in cases of Substantial Use.
Employee Owned Startup Companies
What should I do if I want to start a company to develop a UM technology?
A. As part of its mission to commercialize UM technologies, DTM will discuss the possibility of forming a startup company with inventors. Some technologies are appropriate for a startup; others are not. The first step in starting a technology based company is meeting with DTM to discuss your business idea. DTM will discuss potential conflict of interest issues and outline the technology licensing process. A key consideration in the formation of a company by a UM employee is the potential for a conflict of interest. Interested individuals should discuss their company plans with DTM early in the process and should review the following policies:
- The University of Mississippi Objectivity in Research Policy (RSP.VC.100.002)
- Employee Conflict of Interest Policy (HRO.EM.300.300)
- Non-Institutional Employment Practices (Outside Employment) (HRO.EM.300.310)
- Use of University Facilities for a Private Enterprise (HRO.EM.300.370)
- Faculty Consulting Policy (ACA.FG.300.005)
DTM will introduce you to resources on and off campus that provide services to startup companies. At the appropriate time DTM will help you complete a MURA Form, explain the MURA approval process and prepare appropriate documents to support your licensing of UM technologies.
What service providers are available to UM employee started companies?