Note: The following is an introduction to patents, copyrights, and technology transfer at SIU Carbondale. Print copies of "Intellectual Property and Technology Transfer," a brochure containing this information, are available from the Office of Sponsored Projects Administration (453-4540). All faculty and staff should familiarize themselves with the university's Intellectual Property Policy, which is the legal document governing these issues at SIU Carbondale.
- What IP/tech transfer services does the university provide?
- What is intellectual property (IP)?
- I've created a copyrightable work—now what?
- I've developed a potentially patentable product or process—now what?
- What intellectual property must I disclose to the university?
- How do I make an intellectual property disclosure?
- What happens after disclosure?
- What is the patent process like?
- What does licensing entail?
- What happens once my technology is licensed?
- Who profits?
- What about spin-off businesses?
SIU Carbondale's Technology Transfer Program (TTP) works with SIU Carbondale faculty and staff to protect their intellectual property and to transfer new technologies to the marketplace. The TTP can assist you in many ways. Our services include:
- negotiating materials transfer agreements.
- working with industry on applied research collaborations.
- negotiating grant/contract agreements that protect your intellectual property rights.
- assessing the impact of publication or other public disclosures on your intellectual property rights.
- evaluating the patentability and marketability of your new technology.
- acting as liaison between you and the University Intellectual Property Committee after you've filed an intellectual property disclosure.
- working with attorneys to file patent applications.
- finding prospective licensees for your new technology.
- negotiating licensing agreements with industry.
- assisting with spin-off business start-ups.
Intellectual property refers to certain tangible and intangible products of University research and other activities—principally copyrightable works and patentable ideas or products.
Patentable works include, but are not limited to, inventions/
products, processes, discoveries, materials, plant varieties, and
sometimes computer software. Copyrightable works include,
but are not limited to, writings of all kinds (published or
unpublished), classroom materials, educational courseware,
television/radio programs, films and videos, musical compositions,
dramatic works, and artwork.
See the full definition of intellectual property in section II.A of the university's Intellectual Property Policy (click here for inventions disclosed prior to November 2004). See the sections below for a discussion of ownership and disclosure of intellectual property, including the difference between public and university disclosure and why timing can be crucial.
Technology transfer refers to the process of commercializing the products of research for economic and social benefit.
SIU Carbondale's Intellectual Property Policy governs the disclosure and disposition of intellectual property generated with University support. The Technology Transfer Program works with University faculty and staff to protect their intellectual property and to transfer new technologies to the marketplace.
The university does not claim ownership of copyrightable works by faculty or staff, except in the following cases:
- the work was produced as an expected part of employment with the university; or
- the work was produced with significant university support or resources (see the definition in section II.G. of the Intellectual Property Policy).
If these cases do not apply, and if you did not produce the work as part of an agreement with a third party as a work made for hire, then you own the copyright.
Copyright is an automatic consequence of authorship or artistic production. A work need not be registered with the U.S. Copyright Office or even carry the copyright mark to be considered copyrighted. Since copyright is automatic, why register your copyrights with the Copyright Office? Having the copyright registered, which is a simple process, puts you in a much stronger position to defend against copyright infringement.
For a detailed discussion of copyright issues, see Copyright FAQs. Contact Jeff Myers, ORDA's tech transfer specialist, if you have questions about copyright or copyright registration.
Potentially patentable intellectual property created with university support must be disclosed to SIU Carbondale (see following section). Even if you're not sure how patentable the intellectual property is, it's best to disclose it anyway.
Timing is key when it comes to protecting potential patent rights. To preserve U.S. patent rights, a patent application must be filed within one year of any public disclosure of the patentable idea. To preserve international patent rights, the patent application must be filed before any public disclosure has occurred. Filing for a patent can be a time-consuming and expensive proposition. Research must establish the patentability and potential marketability of the invention, and a detailed patent application must be filed.
Consequently, we urge you to disclose potentially patentable inventions to the university in a timely way. See the following section. (Disclosure to the university is not considered public disclosure.) We also urge you to consult ORDA's technology transfer specialist before presenting the relevant work at a conference, submitting an article to a journal, or speaking with journalists. Such things are considered public disclosure, and they usually "start the clock running" on patent rights.
If you think your research may lead to potentially patentable results, contact ORDA even if you are not yet at the disclosure stage. We can advise you as to how publication or other public disclosures could affect your intellectual property rights. There also are specific steps you should take to safeguard and preserve your data. See the links to recordkeeping advice in Managing Your Intellectual Property.
You must disclose:
- Patentable inventions, products, processes, discoveries, or plant varieties created with university support.
- Materials including DNA libraries, bacterial strains, chemicals, and other compositions of matter created with university support.
- Copyrightable works created with "significant university support" (see the definition of this phrase in section II.G. of the Intellectual Property Policy).
- Any intellectual property required to be disclosed as part of the terms of a third-party agreement with the university, such as a grant or contract.
These types of intellectual property belong jointly to the university and the creator (unless a grant agreement stipulates otherwise), but the university controls their disposition. See the university's Intellectual Property Policy for full details.
Grants and contracts: The terms of most sponsored project award agreements set forth the ownership of any intellectual property arising from the grant/contract project and the subsequent obligations of the university and the funding agency. If the agreement doesn't address this issue, any intellectual property arising from the grant or contract is subject to university policy. You must disclose any intellectual property ensuing from a sponsored project that either university policy or the sponsored project agreement requires to be disclosed.
Disclosures are made in writing to the University Intellectual Property Committee through Jeff Myers, senior technology transfer specialist. Disclosure forms are available online, and should be filled out, signed and dated by the inventor(s), and forwarded to the Technology Transfer Program office at Woody Hall. Call or contact Jeff Myers, (618) 453-4543, or Amy McMorrow Hunter at (618) 453-4556. Please refer to the university's Intellectual Property Policy for more information.
Upon receipt, your Invention Disclosure is assigned a technology ID number and flagged for the next step of the process: the Initial Review. Together with the Inventor, the assigned Technology Transfer Specialist prepares an Initial Review which includes concise information about the invention's stage of development, novelty, market potential, possible licensees, and inventor intentions. The Initial Review and Invention Disclosure are forwarded to the University Intellectual Property Committee (UIPC).
The Inventor presents the invention to the UIPC with respect to the discovery/invention's merit and potential importance, commercial possibilities, and so forth. The UIPC may recommend 1) to send the invention back to the lab for more research/data, 2) to release the invention to the Inventor, 3) to license it to a research sponsor for development, or 4) for SIU to pursue a patent. This process should take no longer than four months from the submission of the ID to TTP, depending on TTP and Inventor workload.
The committee's recommendation as to the disposition of the intellectual property is reviewed by the Vice Chancellor for Research, who makes the final decision in the matter.
Filing for a patent can be a time-consuming and expensive proposition. Research must establish the patentability and potential marketability of the invention, and a detailed patent application must be filed. The Inventor and the TTP work closely with a patent law firm to file all the necessary documents in a timely manner, and in order to optimize the patent position. This process can take as long as five years or more. For an excellent diagram of the process, visit the US Patent and Trademark website.
Taking into consideration the Assessment and IP development, marketing will be undertaken to result in licensing either to 1) industry or 2) a start-up company. Assistance at this stage is provided by the TTP and other university programs as appropriate. This process can take from months to years, depending on the invention and the stage of development of the technology and market. Technology Transfer will assist you with finding prospective licensees for your new technology and negotiating licensing agreements with industry.
Licensing strategy performance is monitored by TTP for adherence to minimum license payments or performance requirements. Non-performing licenses are re-evaluated as necessary. Inventor may serve in consulting role to licensee, or as equity holder or manager in a spin-off, or simply collect royalties. Proceeds are distributed to the inventor, SIU and the Inventor's college or department, according to the SIU Intellectual Property Policy.
Who benefits financially when the university pursues a patent or licensing agreement, or when the university retains some stake in a copyright? What is your share of the eventual profits?
If rights are released to you as the creator and you choose to pursue a patent or or otherwise commercialize your work, you will bear all the costs and reap all the profits.
If SIU Carbondale decides to pursue the development of the intellectual property, it is agreeing to devote resources to pursue an appropriate commercialization strategy. The technology transfer specialist will work with you and with patent attorneys to protect your intellectual property and/or identify potential industry licensees.
Before profits are distributed, the university deducts its expenditures in patenting, licensing, and/or marketing the product. The university's Intellectual Property Policy establishes a sliding scale for splitting net income between the inventor/author ("creator") and the university. For example, the first $50,000 of net income is split 50:50 between these two parties. As income increases, the portion allotted to the creator gradually drops to 35%, with additional shares going to the creator's department and college. Licensing and royalty income allows SIU Carbondale to reinvest in its technology transfer activities and to support research endeavors at the university.
The public also benefits financially, and in other ways, from the technology transfer process. As a public institution, SIU Carbondale has an obligation to see that research fulfills its promise of helping society and fueling the economy.
In addition to licensing technology to existing companies, the technology transfer office, along with the Office of Economic and Regional Development and the Southern Illinois Research Park, can assist researchers in starting their own businesses to commercialize their patentable inventions.