Frequently
Asked Questions:
What is
intellectual property? (Top)
Patents, trademarks, copyrights, know-how, and trade secrets are
all examples of intellectual property.
What
is a patentable invention? (Top)
An invention is the physical embodiment of a discovery. For an invention
to qualify for a U.S. patent it must be novel, non-obvious, and
useful. It can be: a device, a manufacturable article, a machine,
a composition of matter, a process or method, or a new, useful improvement.
Who is
the inventor? (Top)
Inventorship is distinct from authorship and ownership. Inventorship
is a legal issue that is determined by a patent attorney. An inventor
is one who conceives and either personally or through someone else
reduces the invention to practice. The conception of an invention
is complete if the inventor is able to make a disclosure that would
enable someone skilled in the art to make the invention without
extensive research or experimentation. Someone who constructs the
invention based on the inventor’'s conception is not an inventor.
Failure to name the correct inventors can result in invalidation
of the patent.
Who owns
my invention? (Top)
All Penn State employees, including faculty, staff, and graduate
students, sign an Intellectual
Property Agreement at the start of their employment. With this
agreement, employees assign their inventions, discoveries and any
resulting patents developed with significant use of University facilities
or resources, or in their field of expertise, or within the scope
of employment responsibilities to Penn State. This agreement is
similar to those used at other universities and companies.
What are
my rights and responsibilities as a student regarding intellectual
property? As a faculty member what do I need to know about student
intellectual property rights? (Top)
Undergraduate students, professional
students (such as law and medical students), and others who are
not Penn State employees are not required to sign the Intellectual
Property Agreement. They own any intellectual property that
they create.
However, situations may occur in
certain courses or special projects where students are presented
with the opportunity to participate in projects or activities in
which the ownership of any resulting intellectual property must
be assigned either to the University or to a sponsoring entity as
a condition of the student's participation. Special
Student Intellectual Property Agreement Forms are available
to deal with all of the situations requiring assignment, or notification
of the sponsors of the research. Faculty
Guidance on Student Intellectual Property Rights are also available.
Who
pays for the patent? (Top)
If an invention is patentable, the University may pay for the cost
of filing a patent or may seek an industrial partner to pay for
it. Initial patent filing costs are typically in the range of $8,000
to $15,000. The University also pays for the costs of marketing
the invention.
How
are royalties and fees distributed? (Top)
After recovery of any direct patent or copyright prosecution, maintenance,
or infringement litigation costs incurred by the University, royalties
and fees are distributed as follows:
- Inventor(s) 40%
- Administrative Unit 20%
- Penn State Research Foundation
40%
How
do inventors initiate the process of protecting (Top)
intellectual property? (T
The first step is to file an Invention
Disclosure with the Intellectual Property Office. What
happens after the submission of an Invention Disclosure Form?
What about
software? (Top)
The Intellectual Property Office manages and promotes software developed
at the University. Submit a Software
Disclosure Form to initiate the process.
What
about publishing? (Top)
Any public disclosure, such as a publication, presentation, thesis
and thesis defense, has an impact on patenting. By keeping the IPO
well informed of upcoming public disclosures, IPO can formulate
an appropriate patent strategy that minimally impacts publications
and presentations.
What are
Penn State's official policies on intellectual property? (Top)
The relevant Penn State policies are patents
and copyrights (Policy RA11), technology
transfer (RA12), and coauthorship
(RA13). These can be found on GURU, Penn State's General University
Reference Utility. Also refer to the Intellectual Property, Technology
Transfer & Entrepreneurial Activity Policies & Procedures handbook,
sometimes referred to as the blue book. Copies are available from
IPO upon request.
When
were Penn State's intellectual property policies last reviewed?
(Top)
In January 1999, the University appointed a task force to review
the existing intellectual property policies. The task force was
asked to consider current and emerging issues and strategies for
intellectual property administration, to benchmark with other leading
universities, and to provide recommendations on a wide range of
related issues. For more information, see the
Intercom story.
Where
can I learn more about patents, copyrights, and trademarks?(Top)
You can find good general information on patents,
copyrights,
and trademarks
on the websites of the US Patent and Trademark Office and the US
Copyright Office.
Who can help
me do a patent search? (Top)
Contact the Intellectual Property Office. You can try your own preliminary
patent search on such sites as the U.S Patent and Trademark Office's
Web
Patent Database or at the Delphion
Intellectual Property Network.
Who receives
an Inventor Incentive Award (IIA)?
(Top)
The University pays PSU inventors a $1,000.00 Inventor
Incentive Award at the time a U.S. patent application is filed for
an invention. The IIA is paid only on the initial filing of a patent
application and is not paid on divisional, continuation or CIP applications.
An IIA is also paid on a PCT that is nationalized and a U.S. application
is filed.
At the time the U.S. application is filed, a distribution
memo is sent to the inventors to determine the percentage of the
IIA each inventor is entitled to. This decision should be determined
among the inventors. Only inventors who were Penn State employees
at the time the invention is made are entitled to a share of the
Inventor Incentive Award.
If you have additional questions,
please send e-mail to the
Intellectual Property Office or contact a member of our staff.
