Technology Transfer Resources
A company wants to talk with me about my work. What should I do?
Are there special rules for patenting and licensing federally funded research?
- Universities must report inventions arising from federally funded projects
- Universities must share revenues with inventors
- Universities have constraints on how technology is commercialized
- the intellectual property must be licensed to a company that will exploit it to the advantage of the public
- preference for licensing to U.S. companies
- preference for licensing to small companies
Do I have to wait until a patent issues to publish my research?
Doesn't patenting contribute to an air of secrecy and impede the free-flow of scientific information?
I want to publish an article. How can I avoid loss of patent rights?
What constitutes public disclosure? What can I tell my colleagues and still retain my patent rights?
If you discuss your invention with personnel inside Mines, it is not a public disclosure. If you want to discuss it with colleagues outside of Mines, we can put a confidentiality or non-disclosure agreement in place, which will allow you to share the details of your invention without damaging your patent rights.
Why should research institutions and researchers care about patents?
- To move inventions into the commercial realm, IP protection must be in place to enable companies to retain exclusivity in the marketplace.
- To provide companies sponsoring research – they must be able to recoup their investments in the technologies.
- 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
Who owns the inventions?
How do I know if my idea is worth protecting?
How do I disclose my results to the OTT?
Who is an inventor?
NOT AN INVENTOR – A person who:
- contributes to an obvious element of the invention
- merely suggests an idea
- simply follows instruction
- explains how or why an invention works
- adopts information derived from another
- need not have physically worked together or at the same time
- need not make an equal contribution
- need not contribute to the subject matter of every claim
It is important that a US patent application name the correct inventors. Failure to name the proper inventors or including people who are not inventors could invalidate your patent. You can recognize contributors who are not inventors by sharing licensing revenues with them. Inventorship is a legal determination that we ask our patent attorneys to make.
What does the OTT do once it receives a technology disclosure?
What is a patent and what does it do?
What are the criteria for obtaining a patent?
Novelty means that one cannot patent something that is already known. If the invention is described or sold anywhere in the world, or if it is sold anywhere in the world, it is not novel.
Non-obvious means that the invention could not have been conceived by someone “having ordinary skill in the art” without undue experimentation. In other words, if someone puts two pieces of prior art together that anyone in the field could do and it is potentially not patentable. This is a legal determination made by the patent examiner and can be contested if so desired.
Utility means that an invention must perform some function, be operable, and must be beneficial to society.
How do I obtain a patent?
How do I search for inventions that are similar to mine?
How should I keep my lab notes?
How much time and effort do the researchers have to put into patenting and commercialization?
What special considerations are associated with industry-sponsored research?
- Ownership – As a state institution, Mines owns all intellectual property developed by its employees. However, the sponsor may have an exclusive option to any intellectual property developed. The sponsor may exercise that option for a exclusive or non-exclusive license, depending on their preference.
- Pre-valuing intellectual property – Because the intellectual property has not been developed at the time of the signing of a research agreement, assigning a value to that intellectual property is impossible. As such, Mines agrees to negotiate in good faith the value of the intellectual property, once its created and the sponsor has determined they wish to pursue a license agreement.
- Maintaining publication and research rights – Mines must always retain the ability to use the results of sponsored research in publications (subject to a short review by the sponsor) and for further research and educational purposes.
What is a confidential disclosure agreement (CDA) and what do I need to know about them?
What is a material transfer agreement (MTA) and what do I need to know about them?
Send materials to colleagues outside of Mines
- Receive materials from colleagues outside of Mines
- When you want to bring materials from another institution to Mines
- When you want to take materials to another institution from Mines
MTAs protect researchers at Mines by:
- Defining the material
- Setting the rules about how the materials will be used and distributed
- Defining any intellectual property and publication rights
If you need an MTA please contact the OTT or the Office of Research Administration. Under no circumstances should a researcher sign a MTA.
So You Want to Form a Start-Up?
Does it make sense?
So You Still Want to Form a Start-Up?
Development Plan submission
Business Plan submission
Business problem technology solves and how it solves it
- Competitive advantage of the technology
- Management team
- Production/Manufacturing plan
- Marketing plan
- Market/Opportunity size
- Intellectual Property plan
- Fiscal projections
Conflict of Interest plan
Facilities Use Agreement
Associations and Organizations
- American Intellectual Propety Law Association
- Association of University Related Research Parks (AURP)
- European Association of Research Managers and Administers (EARMA)
- Association of University Technology Managers (AUTM)
- Licensing Executives Society (USA & Canada) (LES)
- National Association of College and University Attorneys (NACUA)
- National Association of College and University Business Officers (NACUBO)
- National Collegiate Inventors and Innovators Alliance (NCIIA)
- National Council of University Research Administrators (NCURA)
- Society of Research Administrators (SRA)
- State Science and Technology Institute
- American Bar Association Section of Intellectual Property Law
- Delphion Intellectual Property Network
- EDUCAUSE (Guide to Evaluating Technology on Campus)
- Electronic Frontier Foundation
- R&D Magazine Online
- United States Patent and Trademark Office
- United States Patent and Trademark Office Search Page
- United State Copyright Office
- European Patent Office
- Japanese Patent Office
- World Intellectual Property Office
- Patent Lens
- Google Patents
U.S. Government and Related Governmental Agency Science and Technology Resources
- Biotechnology Industry Organization
- Biotechnology Information Institute
- Defense Technical Information Center
- Environmental Protection Agency (EPA)
- Federal Communications Commission (FCC)
- Federal Laboratory Consortium for Technology Transfer
- Federal Technology Transfer Offices on the Internet
- Los Alamos National Laboratory
- National Aeronautical Space Administration (NASA)
- National Institute of Standards and Technology (NIST)
- National Institute of Health (NIH)
- National Oceanic and Atmospheric Administration (NOAA)
- National Science Foundation (NSF)
- National Technology Transfer Center
- National Renewable Energy Laboratory (NREL)
- Oak Ridge National Laboratory
- Sandia National Laboratories
- U.S. Food and Drug Administration (FDA)
- U.S. Naval Research Laboratory (NRL)
- U.S. Technology Administration