OREGON STATE UNIVERSITY

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Frequently Asked Questions

FAQ's regarding the recently passed Smith-Leahy Act 

The Smith-Leahy Act, also known as the America Invents Act, was signed by President Obama on Friday, September 16th and will become fully in effect in about 18 months.Importantly, the "first to file" system and the race to the patent office will come in to effect on or around March 15, 2013. Read here for questions and answers related to Smith-Leahy Act (PDF).

I have a potential invention – how do I protect it?

Keep a bound lab book with the current date and research results clearly noted. If you plan to discuss detailed information with, or send unpublished information to anyone outside of the university, contact the Office of Commercialization and Corporate Development (OCCD) to initiate a standard Confidentiality Agreement. Additionally, a Material Transfer Agreement is necessary when sending proprietary samples (e.g., biological materials) to a company. These agreements protect information and materials while allowing foreign patent rights to be preserved.

Submitting a proposal usually will not constitute a disclosure of information, as most funding agencies keep information contained in proposals as confidential. However, once funding is obtained, the abstract becomes published.

What is considered "publication" or "disclosure of information"?

Publications and disclosures include: manuscripts; abstracts of funded proposals; posting on the web; dissertations; and discussions with anyone outside of the Oregon University System, unless a Confidentiality Agreement is in place prior to a discussion.

If I chose to work with the OCCD, will my publications be delayed or discouraged?

The OCCD realizes that publications are not only a key for faculty success, they are also very important for the promotion and acknowledgment of important research at OSU. The OCCD will work within the publication timeframe of the faculty to offer possibilities of protection while publishing. If research results are already published, there still may be time or alternative methods to protect and license your work.

Who owns the intellectual property that I create at OSU?

Officially, the State of Oregon owns intellectual property created by employees at OSU. Section 6.215 of the Oregon University System Internal Management Directives state:

(1) The Board reserves the ownership rights to all institutional work-related inventions, and to educational and professional materials developed with institutional resources, including the right to a free and irrevocable license for usage, and if desired, the licensing for use by others. The foregoing does not preclude an institution employee from granting copyright privileges to the publisher of a scholarly or professional journal when no compensation or royalty is involved. For more detailed information, visit: http://www.ous.edu/about/polipro/files/IMD%201-08.pdf

When should I connect with the OCCD

If you are an employee of the university, you should contact the OCCD anytime you have a question about intellectual property, are interested in protecting your work, or are planning to send or receive materials to another institution, company, or individual. The best time to connect is prior to publication. If publication has already occurred, contact the OCCD anyway: there still may be time or alternative methods to protect and license your work.

Am I considered an "inventor"? How is inventorship determined?

<p">An "inventor" is defined by law generally as one who first invents patentable subject matter. A person must have contributed to the conception of the invention to be an inventor. Co-authors of research may or may not be considered by law to be Co-inventors. It is very important to define inventorship of an invention accurately, otherwise, an issued patent will be invalid. For the purposes of the Invention Disclosure form, list all of those who significantly contributed to the conception of the invention. The OCCD will make distributions to significant contributors even if they are not included on the final patent application as an inventor, if all inventors are in agreement.

What about the costs of patenting and licensing? How are they covered?

The OCCD covers all of the costs associated with patenting and licensing an invention, unless there is an inventor from another institution or company, in which case the expenses would be shared.

How long does the patenting process take?

Depending on the complexity of the invention, the paths chosen in a patent application, and the specific examiner assigned to review the invention in the US Patent and Trademark Office (USPTO), it will generally take between 3-5 years for a patent to issue.

The time commitment necessary from the inventors varies, but it is important for the inventors and the patent attorney/agent to connect frequently during the initial filing, making sure the language captures the invention adequately; a few years later interaction is necessary once the USPTO examines the patent application to respond to questions and provided differentiation over examiner-noted publications and patents.

What is OSU’s royalty-sharing policy?

Oregon State University has one of the most liberal royalty distribution practices in the nation. Following recoupment of expenses, royalty revenue is usually shared based on the following schedule, subject to variation based on OSU’s determination of equities in a given case: 

Royalties OSU Inventor Dept
1st $50,000 30% 40% 30%
2nd $50,000 32.5% 35% 32.5%
$100,000 + 35% 30% 35%

 

Why might the OCCD decide to not protect an invention? What would that mean to me as the inventor?

The OCCD sometimes decides not to move forward on protecting an invention, if a determination is made that an invention has limited patentability or markets, or if the best path to transfer the invention is determined to be through publication. The OCCD will communicate the decision to the inventors. The inventors may request a waiver from the OCCD to obtain a transfer of rights for the invention. The waiver decision will be dependent on various items such as: the funding source used to develop the invention; the amount of patent and promotional expenses incurred up to the date of the waiver request; and potential future research in the area of innovation.

What do I need to know about copyrights?

See Copyrights Principles (PDF) information sheet to help answer your questions regarding copyrights.

More Questions?

Contact the Office of Commercialization and Corporate Development: 541.737.0674