Protecting your IP
What is a patent?
A patent gives the holder the right to exclude others from making, using, selling, offering to sell and importing any patented invention. Note, however, that a patent does not provide the holder any affirmative right to practice a technology, since it may fall under a broader patent owned by others; instead, your patent only provides the right to exclude others from practicing it. Patent claims are the legal definition of an inventor’s protectable invention.
Is there a legal definition of an invention?
The United States patent law requires that an invention meet the following three criteria, in order to be eligible for patent protection:
- Novelty: The invention must be demonstrably different from already available ideas, inventions or products (known as “prior art”). This does not mean that every aspect of an invention must be novel. For example, new uses of known processes, machines, compositions of matter and materials are patentable. Incremental improvements on known processes may also be patentable.
- Usefulness: For an invention to be patentable, it must have some utility or application, or be an improvement over the existing products and/or technologies.
- Non-obviousness: The invention cannot be obvious to a person of “ordinary skill” in the field. Non-obviousness usually is demonstrated by showing that practicing the invention yields surprising, unexpected results.
What is a copyright?
- A copyright is a form of protection provided by the laws of the U.S. and other countries to the authors of “original works of authorship.” This includes literary, dramatic, musical, and artistic and certain other intellectual works as well as computer software. This protection is available to both published and unpublished works. The Copyright Act usually gives the owner of copyright the exclusive right to conduct and authorize various acts, including reproduction, public performance and making derivative works. Copyright protection is automatically secured when a work is fixed into a tangible medium such as a book, software code, video, etc. In the United States, copyright protection lasts the lifetime of the author plus 70 years. In some instances, TCS registers copyrights, but generally not until the commercial product is ready for production and distribution/sale. All new software and source code should be disclosed as with any new invention and will be processed and managed by TCS.
How do I represent a copyright notice?
Although copyrightable works do not require a copyright notice, we do recommend that you use one. For works owned by UConn use the following notice: “© 20XX University of Connecticut. All rights reserved.”
What is a trademark or service mark?
A trademark includes any word, name, symbol, device or combination that is used in commerce to identify and distinguish the goods of one manufacturer or seller from those manufactured or sold by others, and also to indicate the source of the goods. In short, a trademark is a brand name.A service mark is any word, name, symbol, device or combination that is used or intended to be used in commerce to identify and distinguish the services of one provider from those of others and to indicate the source of the services. It is not necessary to register a trademark or service mark to prevent others from infringing upon the trademark.
Trademarks generally become protected as soon as they are adopted by an organization and used in commerce (even before registration). With a federal trademark registration, the registrant is presumed to be entitled to use the trademark throughout the U.S. for goods or services for which the trademark is registered. UConn has trademark protection on items such as sports logos, mascots, emblems and images of university events.
Working with industry
What is a Sponsored Research Agreement?
A university/industry research collaboration is formalized by a Sponsored Research Agreement (SRA). The sponsor and faculty member agree on the specifics of the work and a tentative budget. The final budget and all other aspects of the final contract are negotiated via the Sponsored Program Services (SPS) on the Storrs campus or the Office of Research and Sponsored Programs (ORSP) at the Health Center. The contract addresses a variety of issues including amount of funding, scope of work, IP rights, governing law, etc.
What are Licensing Agreements?
A license grants permission by the owner or controller of intellectual property to another party, under a formal agreement, for use of the intellectual property. License agreements describe the rights and responsibilities related to the use and exploitation of intellectual property developed at UConn. University license agreements usually stipulate that the licensee should diligently seek to bring the intellectual property into commercial use for the public good and provide a reasonable return to UConn. Licenses can be exclusive (only one company/group can make use of the technology during the license period) or non-exclusive (technology can be licensed to others without restriction)
A licensee is chosen based on its ability to commercialize the technology for the benefit of the general public. Sometimes an established company with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a startup company is a better option. It is rare for UConn to have multiple potential licensees bidding on an invention.
For more information on Licensing Agreements, contact:
Gregory Gallo, Director of Technology Transfer
Can I share my new idea or invention with industry or other inventors outside of UConn?
Non-Disclosure Agreements (NDAs) or Confidential Disclosure Agreements (CDAs) are used to protect the confidentiality of an invention during evaluation by potential licensees. CDAs/NDAs also protect proprietary information of third parties that UConn researchers need to review in order to conduct research or to evaluate research opportunities. UConn enters into CDAs/NDAs for university proprietary information shared with someone outside of UConn. CDAs/NDAs can be prepared or reviewed and signed by the SPS or TCS.
Can I share and/or accept materials from industry or other researchers outside of UConn?
Yes, but the university must execute a Material Transfer Agreement (MTAs) in each case. MTAs are used for incoming and outgoing materials at UConn, especially for outgoing materials to industry, and are administered by TCS. These agreements describe the terms under which UConn researchers and outside researchers may share materials, typically for research or evaluation purposes. Intellectual property rights can be endangered if materials are used without a proper MTA. Material transfers going out of UConn must be accompanied by a formal agreement that addresses a variety of issues including definition of the materials, ownership, licensing rights, publication, etc. MTAs will be generated, reviewed and negotiated by the SPS or TCS.
Can I accept a contract from a company to provide non-research services that support their development?
Fee for Services Agreements (FSAs) are used in those cases where UConn may perform service-for-a-fee, which is essentially running previously developed tests on a sponsor’s materials, if such work is consistent with a department’s academic mission, and if UConn is uniquely qualified and positioned to do so. Such work is not research, and fee funds cannot be used to conduct research. The material and data provided, as well as those generated, may be proprietary to the sponsor. A pre-agreed Statement of Work is required, and to avoid problems, the Principle Investigator (PI) should not vary from it or any other relevant agreed upon conditions. FSAs are negotiated by the SPS, or the purchasing department of the Health Center.
Can my industry partner have rights to my IP without taking a license?
Yes through an Option Agreement. Option Agreements are entered into with third parties wishing to evaluate the technology prior to entering into a full license agreement. Option clauses within research agreements describe the conditions under which UConn preserves the opportunity for a third party to negotiate a license for intellectual property. Option clauses are often provided in SRAs to corporate research sponsors.