Patenting & Licensing
As a guide for faculty, staff, and students involved in research activities at New Mexico State University (NMSU), this section will discuss
- the nature of intellectual property
- general information on NMSU’s policies concerning intellectual property
- the responsibilities of the Intellectual Property Office and the Arrowhead Center in administering these policies, and
- how intellectual property is put to economic benefit
What is Intellectual Property?
Intellectual property consists of, but is not limited to, books, articles, plays, films, video tapes, works of art, musical compositions,
laboratory manuals, demonstration devices, computer programs, chemical compounds, new materials or processes, and instruments.
What is an Invention?
During the course of research, an invention may be developed. An invention can be defined as anything new, unobvious, and useful.
It can be a potential solution to a problem, something that may satisfy a need, or an improvement to an old invention. It can be a product,
a process, a composition of matter, or an end use; a new plant variety, a new method for testing lead in blood, or a new method of detecting
cracks in bridges. Computer software may also be classified as an invention.
What is the Role of the Intellectual Property Office and the Arrowhead
Center?
The university’s Intellectual Property Office is responsible for managing, protecting, and commercializing inventions arising at
the University through the Arrowhead Center. This office assists faculty, staff, and students in understanding the technology
transfer process and complying with its requirements and creates the
appropriate forms and procedures for disclosing inventions.
In addition to reviewing invention disclosures and evaluating their potential for legal protection,
this office, along with the inventor(s), will attempt
to license the invention through the Arrowhead Center and will assist in license negotiations.
Authority to enter into agreements for the commercialization of university technology resides only with the Intellectual Property Office and the
Vice President for economic development. All faculty, staff, and students dealing with outside companies expressing interest in commercialization
of university technology should refer such companies to the Intellectual Property Office or
the Arrowhead Center. No commercialization agreement
with outside companies can be honored by the University without prior
approval of the Vice President for Economic Development and the Arrowhead
Center.
What to do When an Invention Occurs.
Inventions are important. They may lead to new products and processes that benefit the inventor, the
University, industry, or the general
public. To ensure your invention is properly protected, please inform the Intellectual Property Office as soon as possible at (505) 646-2481.
Next, prepare an Invention Disclosure Form immediately before publishing findings, describing them in an oral presentation, or completing a
thesis based on the research. Timelines is important--prior publication of a discovery will bar patent protection in most of the
world. The Office of Intellectual Property and the Arrowhead Center can protect the rights of the inventor by making sure a patent
application is filed before public disclosure.
The purpose of an invention disclosure is to define the invention so that it can be considered for patenting in the United States and
possible foreign countries. Patents not only establish the inventor’s claim to the intellectual property, but make it possible to
attract potential licensees, who may invest in developing and marketing the invention.
Please note the information in a disclosure form is confidential. Copies of the disclosure form should not be sent to others,
even to the sponsors of research. The respective Research Centers are responsible for notifying the sponsors of the occurrence of
inventions under a research contract.
The Intellectual Property Office and the Arrowhead Center work with inventors to license their technologies. Companies interested
in the technologies should be referred to the Intellectual Property Office or
the Arrowhead Center. If the legal process for protection
of the intellectual property has not been completed, a Confidentiality Agreement will be prepared which will allow the inventor to discuss
the technical aspects of the technology with scientists at the interested companies.
What to do after Invention Disclosure.
After Incubation disclosure, the Intellectual Property Office collects all the relevant documents. Sponsored research agreements are reviewed to determine who has
rights to the invention. Dates of any publications are checked to determine if legal protection needs to be expedited. Copies of all
relevant documents are transmitted to outside patent counsel for a brief review of the technology and a preliminary opinion as to
patentability. If the invention appears to be patentable, a patent application will be filed.
How does the Licensing and Commercialization Process Work?
The Intellectual Property Office works with the inventors to locate potential licensees. As a public educational and research entity,
the University is prohibited from engaging in commerce. By a Board of Regents’ Resolution, the
University assigns all rights and title
of inventions to the Arrowhead Center for commercialization.
Commercialization by the Arrowhead Center is normally through a license agreement, which is a contract whereby
the Arrowhead Center retains ownership of the patent or copyright, and a private company obtains the right to use the patent or copyright to make and sell
products or services. However, other types of commercialization partnerships are possible.
The Arrowhead Center shares in the commercialization process by charging an
- up-front licensing fee, and
- running royalties linked to actual sales of the products or services, and/or equity in the licensing company.
These funds are used to pay inventors’ earnings, department and college earnings, and other research expenditures through the Vice President for Research.