IP Frequently Asked Questions

Technology transfer is a term used to describe a formal transferring of new discoveries and innovations resulting from scientific research conducted at universities to the commercial sector. One way that universities transfer technology is through patenting and licensing new innovations. The major steps in this process include: 1) the disclosure of innovations; 2) patenting the innovation concurrent with publication of scientific research; and 3) licensing the rights to innovations to industry for commercial development.

The term "intellectual property" generally relates to four distinct kinds of legal protection: patents, trademarks, copyrights, and trade secrets. Each kind of intellectual property is governed by its own body of federal and/or state law. The kinds of things that are protected by intellectual property law include scientific and engineering inventions (including new methods and apparatus), distinctive marks for identifying products or institutions, computer software, "know-how," and forms of expression that are affixed in tangible form (i.e., books, movies, artistic works of art).

Generally, by federal patent law, federal copyright law, federal trademark law, state trademark law, state laws regarding trade secrets and other laws related to businesses and contracts.

If the intellectual property was developed by an employee of Appalachian or invented at Appalachian facilities under the supervision of Appalachian personnel, the intellectual property is owned by Appalachian. Each inventor must assign his or her rights in the intellectual property to Appalachian. This includes all faculty, staff, and fellows who have an appointment at Appalachian.

Intellectual property should be disclosed early in the development process. Disclosure should be made before any public disclosure (oral or written) of the information is made. In this way, an informed evaluation can be completed for the potential invention and an appropriate protection and marketing strategy developed.

After you publish, present or otherwise publicly disclose your invention, you have one year from the first disclosure date to file a U.S. patent. After this anniversary has passed, you may lose all US patent rights. No grace period exists for foreign patent applications. With very few exceptions, all foreign patent rights will be irrevocably lost once your invention is publicly disclosed.

Inventorship is specifically defined under US law. An inventor is a person who makes an original, significant intellectual contribution leading to the conception of the invention. This concept is significantly different from authorship on an academic publication.

Inventions are disclosed by contacting Research Protections in the Office of Research.

A patent is a legal monopoly that prevents others from making, using, or selling an invention covered by the patent. Patents are granted by governments. Generally, patents may be enforced only in the jurisdiction that has granted them.

For the standard type of patent, called a utility patent, an invention must be either an apparatus, a composition of matter, a process, or an article of manufacture (i.e. an artificial, man-made thing rather than an unprocessed, natural object or material). An improved version of previous technology may be patentable, as well as a new use for an existing technology. To be patentable, the invention or discovery must possess:

  • Utility: The patent statute specifies that an invention must be useful; i.e., it has a real-world application. 
  • Novelty: The patent must be new, i.e., the exact same thing must not have existed or been done before. 
  • Non-Obviousness: Even if novel, the invention must also be different enough from past technology that the average worker in the field would not have come up with the new invention from what was already known. If the invention does not meet this test, it may be rejected as obvious. Remember that the average worker in many scientific fields may be a Ph.D. researcher. In order to meet this requirement, inventors need to be aware of issues related to prior art, barring events, and bar dates. 

There are other legal requirements for patentability that relate to the kind and amount of description, language and supporting data that must be present in the patent application itself.

Prior art is any relevant publication, patent, or event prior to invention that may be considered by the patent office in evaluating patentability of the invention. If a patent application is filed in the US, anything that has been published, used in public, offered for sale or sold by anyone before the inventor(s) made the invention, or more than one year before the application is filed, becomes a part of the prior art for that application.

The provisional patent application is an application that can be filed with the US Patent and Trademark Office (USPTO) that establishes the effective filing date of a patent application. The provisional application is not examined by the USPTO, and may remain pending for one year. At the end of the period, ASU must elect to either drop the filing and allow the information to become public, or convert the provisional application to a regular patent application.

Appalachian pays for all costs associated with the preparation, prosecution, and maintenance of the patent. These costs are deducted from any income from the patent prior to royalty distribution.

Generally speaking, a license is a legally binding written document in which one party, having definable rights in a property, transfers or grants all or some part of those rights to another entity for some type of consideration.

University-industry partnerships are helping to move new discoveries from the laboratory to the marketplace faster and more efficiently than ever before-ensuring that products and services reach the public more quickly and often. The partnership enables a researcher-who made the initial discovery-to participate in the further development of a product or process, which in turn, significantly reduces the time to eventual commercialization.

Royalties earned by academic institutions are used to help advance scientific research and education through reinvestment in the academic enterprise. The royalties are given, in part, to university research departments to provide, among other things, new opportunities for graduate students, buy research equipment, or fund new research. They also are used to help sustain the technology transfer process by paying for a portion of the legal fees associated with patenting and licensing as well as technology management staff. And finally, as the Bayh Dole Act requires, a portion of the revenues is shared with the university inventor.

License negotiations are handled by the University Attorney's Office.

A copyright is the grant of protection by the laws of the United States to the authors of 'original works' including literary, dramatic, musical, artistic, architectural and certain other intellectual works, and is available for both published and unpublished works. An owner has the exclusive right to authorize others to reproduce the work; create derivative works; distribute copies of the work; perform the copyrighted work publicly, display the work publicly, and if it is a sound recording, perform the work publicly. Software may be copyrighted, but may also, in certain circumstances, be protected by a patent.

Copyright protection automatically exists from the moment of creation, and a work is created when it is fixed in a tangible form. Therefore, no publication or registration or other action by the Copyright Office is required to secure a copyright, although certain advantages are retained for registered copyrights, such as the right to seek damages for copyright infringement.

Like any invention, software is an asset that has value to the University and to its author(s). Often even the simplest software function has commercial value simply because of the time invested in writing the code, not to mention the expertise needed to develop the function.

Software should be disclosed early in the development process. Disclosure should be made before any public disclosure (oral or written) of the information is made. In this way, an informed evaluation can be completed for the potential invention and an appropriate protection and marketing strategy developed.

A Material Transfer Agreement (MTA) is an agreement whereas one party agrees to provide another party with there materials. MTAs should always be considered when conducting any outside collaborations with industry or other academic institutions. MTAs are typically used to protect materials that may be proprietary and/or embody a trade secret.

The Bayh-Dole Act, passed by Congress in 1980, created a uniform patent policy among the US federal agencies that fund research in the non-profit and small business sectors. The Act provides recipients of federal research funds with the right to retain ownership of their patents with the underlying tenet that federally funded inventions should be licensed for commercial development in the public interest. This principle is reflected in virtually all university policies whether or not the invention is federally funded.