FAQS

What is an invention?

According to the U.S. Patent and Trademark Office, an “invention” must fulfill three requirements – it must be new (or “novel”), useful, and unobvious. A solution to a problem, something that satisfies a need, improvements to older technologies, a process, a method, a composition of matter – all of these (and much more) can be inventions.

Who is an inventor?

According to the U.S. Patent and Trademark Office, an “inventor” is one who contributes to the conception of an invention. The patent law of the United States of America requires that the applicant in a patent application must be the inventor. Note: Inventors are commonly referred to as innovators, within Intellectual Property Policy, innovators and inventors are synonymous.

I think I have a new discovery. What should I do?

The first step in securing the rights to your invention is to complete an Invention Disclosure Report Form (IDF) and submit it to the Office of Intellectual Property and Technology Transfer.  Submit your IDF as early as possible and, ideally, before any public disclosure.  Public disclosure can severely limit your patentability options and may hinder your ability to capitalize on the full commercial potential of your invention. Public disclosures include, for example, discussions with a company or investor, presentations, lectures, thesis defense, and posters. Grant applications, journal submissions, and abstracts may also be considered public disclosures, depending on the policies of the sponsor, journal, and/or conference.

How will a publication affect patent rights?

According to the Manual of Patent Examination Procedure: 35 USC. 102(a) – A person shall be entitled to a patent unless (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent. Therefore if you publish your discovery before a patent application is filed; all foreign patent rights will be lost. However, you still have a one year grace period to file for US patent protection.

Does the Office of Intellectual Property and Technology Transfer file for foreign patents on inventions?

We attempt to preserve foreign filing rights by filing an initial U.S. patent, whenever possible, before the first public disclosure. Later foreign patent prosecution is dependent upon the licensing situation.

Why should I patent and license my research?

According to http://www.fedcirc.us, a patent is a form of intellectual rights protection that enables inventors to prevent other people from making use of their ideas. Patents and licenses can be very important, for the individual inventor whose rights are protected, for the inventor’s department and the larger university, and for the national economy. Patent laws can ensure that no one is able to take unfair advantage of the work and ideas of others. Patents can help to ensure that businesses and individuals work to create new ideas, which can help to provide an important boost for the economy by encouraging innovation.

Why Protect Intellectual Property?

According to http://www.fedcirc.us, protecting a new idea for a process or product makes it possible for individuals and businesses to protect their work and investments. Without this kind of protection, it would not be worthwhile for people to invest large amounts of money in new inventions since they would not be able to prevent competitors from immediately making use of their invention.

Why do research institutions care about patents?

  • To move inventions into the commercial realm, IP protection must be in place to ensure exclusivity in the marketplace.
  • To ensure inventions have practical applications and improve quality of life for citizens.
  • Because Federal law (Bayh-Dole Act) requires that results from federally funded research be developed to benefit taxpayers.
  • To attract and retain top faculty.
  • To increase institutional revenues (shared with inventors).
  • To promote economic development for the state.
  • To generate income to promote and support teaching and research.
  • To provide opportunities for more sponsored research

How can my invention be commercialized?

The process of transforming an invention from a novel idea into a viable, successful product is an exciting, arduous task that requires a highly skilled team of inventors, Arrowhead Center IP/Tech Commercialization, and business partners (industry representatives and entrepreneurs).  Arrowhead Center IP/Tech Commercialization facilitates this process by: evaluating the potential

  • patentability and commercial potential of an invention;
  • identifying potential resources and opportunities (inventment) to fully develop the invention to commercial success; and
  • working in collaboration with inventors to market and license inventions to business partners, whether it be an established company or a new business venture

What if one of the inventors is from another institution?

Often research projects involve collaborators from two or more institutions, and so it not uncommon to have co-inventors from different universities, companies or research laboratories.  When such a case does occur, each institution involved in the development of the invention will have unrestricted rights to utilize and capitalize commercially on the technology unless otherwise mentioned in an agreement.  Generally, if the co-inventor is from another university, the lead inventor will generate an Inter-Institutional Agreement that states that it agrees to take the lead in patenting and commercializing of the technology.  In addition, this agreement will define how royalty income will be shared between the institutions.  If the co-inventor is a company, a license agreement will be negotiated to determine the rights of the parties commercializing the technology.

What if my patent was funded under a federal grant?

According to the Bayh-Dole Act, funding received under a federal grant needs to be reported (37 CFR 401) to the granting agency and disclosed in the patent.  The act also states that although the individual or institution may retain rights to the technology and patent, the federal government retains what’s known as “march-in rights” and is free to utilize the patented technology without cost.  Arrowhead IP/Tech Commercialization will handle these issues for you, so that grant funding is not jeopardized.

How do we obtain protection for new plants?

According to the Manual of Patent Examination Procedure, whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated spores, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title. An asexually reproduced plant may alternatively be protected under 35 U.S.C. 101, as the Plant Patent Act (35 U.S.C. 161) is not an exclusive form of protection which conflicts with the granting of utility patents to plants.

What constitutes a publication?

Publication can be defined as anything made public by print (e.g.,  newspaper, magazine, pamphlet, letter, telegram, computer modem or program, poster, brochure or pamphlet), orally, or by broadcast (e.g., radio, television).

Can oral presentations or public disclosure affect patent rights?

Yes.  Any presentation to the community at large in the absence of a non-disclosure agreement, including those made through oral presentations or poster presentations, is considered public disclosure which could cause you to lose your rights to the invention and patent protection.

What is a copyright and what is copyrightable subject matter?

According to the United States Copyright Office, copyright is a form of protection provided by the laws of the United States (title 17, U.S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works.

What protection does a copyright offer?

According to United States Copyright Office, Section 106 of the 1976 Copyright Act generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:

  • reproduce the work in copies or phonorecords
  • prepare derivative works based upon the work
  • distribute copies or phonorecords of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending
  • perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works
  • perform the work publicly (in the case of sound recordings*) by means of a digital audio transmission
  • It is illegal for anyone to violate any of the rights provided by the copyright law to the owner of copyright.

When does my work have copyright protection?

According to the United States Copyright Office, copyright protection exists from the time the work is created in fixed form. The copyright in the work of authorship immediately becomes the property of the author who created the work. Only the author or those deriving their rights through the author can rightfully claim copyright.

What is the duration of copyright rights?

According to United States Copyright Office, a work that was created (fixed in tangible form for the first time) on or after January 1, 1978, is automatically protected from the moment of its creation and is ordinarily given a term enduring for the author’s life plus an additional 70 years after the author’s death. In the case of “a joint work prepared by two or more authors who did not work for hire,” the term lasts for 70 years after the last surviving author’s death.

What if I use materials written by other people?

According to United States Copyright Office, any or all of the copyright owner’s exclusive rights or any

subdivision of those rights may be transferred, but the transfer of exclusive rights is not valid unless that transfer is in writing and signed by the owner of the rights or the owner’s authorized agent. Transfer of a right on a nonexclusive basis does not require a written agreement. A copyright may also be conveyed by operation of law and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.

What is a trademark and why should I consider trademark protection?

According to the United States Patent and Trademark Office, a trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.   Owning a federal trademark registration on the Principal Register provides several advantages, including:

  • Public notice of your claim of ownership of the mark;
  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  • The ability to bring an action concerning the mark in federal court;
  • The use of the U.S. registration as a basis to obtain registration in foreign countries;
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
  • The right to use the federal registration symbol ® and
  • Listing in the United States Patent and Trademark Office’s online databases.

What are the different types of trademarks?

There are four different types of trademarks.  Trademarks are used to distinguish products or goods; service marks are used to distinguish a service.  A trademark may be a Trade Mark and/or a Service Mark concurrently.  Collective marks are used to distinguish goods or services provided by an association or cooperative group.  Certification marks are used to distinguish goods or services that have been certified by an authority as complying with set of standards whose certification is not confined by the members of a group, such as UL or LEED certifications.

When is it appropriate to file for federal trademark registration?

Generally, you can file for a federal trademark at any time when the mark is “in use” or you “intend to use” the mark (which is slightly more difficult to get registered).  According to the United States Patent and Trademark Office, the application must specify your basis for filing. Most U.S. applicants base their application on either their current use of the mark in commerce or their intent to use the mark in commerce in the future.

How do we obtain Trade Secret protection (for biological materials)?

Trade Secret Protection is information that is kept secret to gain and maintain an advantage over competitors.  Universities do not normally seek trade secret protection because academia’s mission is to further the pursuit of knowledge and promote free discussions of its work.  However, for certain biological materials such as hybridomas, other unique cell lines, and transgenic animals and plants, trade secret protection can be applied.  Although there is an obligation to make novel biological materials freely available to others so that they can replicate your work, some aspects can still be kept as a trade secret.

How do I copyright software?

Copyrighting computer software is very similar to protecting any other form of copyrightable material.  Like literature, music, drama and art, as soon as the software is created and is recorded in a tangible form, the work will automatically be subject to copyright.

What is a patent?

According to the United States Patent and Trademark Office, a patent is an intellectual property right granted by the U.S. government to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

What can be patented?

According to the United States Patent and Trademark Office, a patent may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.

How long does it take to obtain a patent?

According to the World Intellectual Property Organization, the time required for a patent to be granted will depend on the registration procedure and a number of other factors that will vary from country to country. In the United States, where the patent office conducts a thorough substantial examination to check whether the patent meets the patentability criteria of novelty, inventive step and industrial applicability, the entire procedure from application to grant will generally take a few years minimum.

Is software patentable?

This idea has been under debate; however, according to Section2106 of the Manual of Patent Examination Procedure, the claimed invention as a whole must be useful and accomplish a practical application. That is, it must produce a “useful, concrete and tangible result.”  Under these guidelines computer software is fully patentable if the applicant can demonstrate its usefulness and benefit to society.

What can prevent obtaining a patent?

According to the United States Patent and Trademark Office,  an invention cannot be patented if: “(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States . . .”

How do I search for prior patents?

A patent search is a search for prior art, which is any body of knowledge that relates to the subject matter.  Prior art includes previous patents, journals, articles, any publications, public disclosures and use or sale of the subject matter anywhere in the world.  You (or someone you hire) will search multiple different databases to see if there are any identical, similar or partially similar inventions to yours and then based on these results will determine if the invention is able to protected under a patent. Google Patents and the U.S.P.T.O database are commonly used for prior art searches.

What is a provisional patent application?

A provisional application for patent is a U.S. national application filed in the USPTO under 35 U.S.C. §111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a later filed non-provisional patent application filed under 35 U.S.C. §111(a). It also allows the term “Patent Pending” to be applied in connection with the description of the invention.  A provisional application for patent has a pendency lasting 12 months from the date the provisional application is filed.

How long is a patent valid?

Provided required maintenance fees are paid, a patent will expire 20 years from the filing date of the earliest U.S. application to which priority is claimed (excluding provisional applications). Note: By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months (www.uspto.gov). In the case of a Design patent, the term will be 14 years from filing date.

What is a license?

In regards to intellectual property, a license is a written agreement where the assignee of the subject matter transfers rights of the protected work to another party. Licenses are written with a number of provisions, including, but not limited to: exclusive or non-exclusive, license fee, royalties, sublicensing, and termination. Revenue received through license fees and royalties are paid to the inventors of the licensed work per NMSU Policy for Royalty Distribution.

Does the University sell intellectual property rights?

No, intellectual property rights are assigned and or licensed.

How does TTO find licensees?

Arrowhead IP Tech/Commercialization uses technology commercialization associates and creative strategies to identify potential licensees and to market inventions.  In many situations, previously existing relationships of the inventors, Arrowhead IP staff and other researchers are used in order to market a particular product.