Intellectual Property Office

Patents, trademarks, copyrights, know-how, and trade secrets are all examples of intellectual property.

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.

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.

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.

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 Policies and 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.

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.

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%

The first step is to file an Invention Disclosure Form with the Intellectual Property Office. Also read the guidelines for completing an Invention Disclosure Form and what happens after the submission of an Invention Disclosure Form? All of these materials can be found on our disclosure and agreements forms page.

The Intellectual Property Office manages and promotes software developed at the University. Submit a Software Disclosure Form to initiate the process.

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.

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.

Forming a company is a demanding and challenging undertaking requiring a significant commitment of both time and money. While forming a company can be a positive and rewarding experience, it is not for everyone. If you are considering becoming involved in a start-up company, please review this document carefully and then schedule a meeting with the Intellectual Property Office to discuss the process.

• The Penn State Intellectual Property Office (IPO) negotiates license and option agreements on behalf of the Penn State Research Foundation (PSRF), which is responsible for administering the financial and business aspects of technology transfer for Penn State University.
  
• Faculty are required to be highly cognizant of, and address any conflict of interest issues that arise due to their involvement in companies, and to be particularly sensitive to issues surrounding human effects inventions. Strict compliance with the conflict of interest policies delineated in the following is essential:
• RA05 - Significant Financial Interest Disclosure for Sponsored Project's Investigators
• RA12 - Technology Transfer and Entrepreneurial Activity (Faculty Research)
• RA20 - Individual Conflict of Interest Policy
• RA21 - Institutional Conflict of Interest in Sponsored Projects, Dedicated Gifts, Research, Scholarship and Technology Transfer
• HR91 - Conflict of Interest
• Universities are obligated by federal law to find the best possible route to commercialization for their technologies. Therefore, the IPO must consider and evaluate all reasonable licensees. Companies sponsoring research will be considered as likely successful commercial outlets because of their demonstrated resources and interest in the work.
• Negotiations will be conducted impartially and objectively. Faculty companies cannot receive any preferential treatment on licensing terms. Agreements with companies in which faculty are involved will receive the same level of review and scrutiny as would any other agreement. It is highly recommended that faculty not directly participate in negotiations with IPO.
• The IPO is responsible for protecting the interests of the University and University inventors who are not participating in the company to whom the technology is being licensed.
• There are extensive resources available in the Technology Transfer Office in addition to the IPO to support and assist companies formed from University technology. It is the responsibility of the companies to avail themselves of those resources.
• University inventors who are principals, founders, or participants in the company being licensed must realize that their business interests may not completely align with the University's and as such, are responsible for all aspects of their own interests including financial and legal implications of stock ownership. Separate legal counsel and financial advice is recommended. Founders are responsible for the legal expenses associated with forming a company. It is advisable to obtain estimates of these expenses in advance.

• Professional operating management of the company at the level of CEO/COO. Faculty should not attempt to manage start-up companies. Although positions such as Chief Technical Officer may be appropriate, most venture capital firms will not invest in start-ups that have faculty members as operating management. Faculty need to be cognizant of the highly competitive and complex nature of the business world and the level of effort and commitment which will be required for a company to be successful.
• A thorough and comprehensive business plan. Typical business plans address the following:
• Mission statement and strategy
• Objectives
• Service/Product description
• Market analysis
• Competitive analysis
• Key management
• Financial projections
• Capitalization schedul
• Projected profit and loss
• Exit strategies
• A reasonable level of capitalization to support the initial operations of the company and a plan for approaches to subsequent financing.
• Ability and commitment to reimburse all current and future patent expenses. It is not unusual for patenting costs for domestic and international filings to quickly exceed $100,000. The IPO maintains records of current patent expenses and will estimate future patent expenses based on defined patent protection strategies upon request.

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 .

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.

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 .

YThe 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.

DO(s)

• Use bound notebooks and make entries on consecutively numbered pages.
• Entries in ink.
• Draw a line through blank spaces on the page.
• Sign and date all entries at the time they are made and have them signed and dated by a witness ASAP.
  • It is the witness's date that determines the date of invention for patent protection purposes.
• Include language: "Read and Understood" below witness signature line.
• Permanently fix loose notes, emails in lab notebook.
• Avoid Electronic Records.

DON'T(s)

• Erase errors. Instead, draw a single, thin line through entries intended to be deleted.
• Remove pages from the notebook.
• Use words like "obvious" and "abandoned".
• Backdate an entry, inventor signature or witness signature.