Protect your ideas

Each case is different, and so is the level of engagement during the technology transfer process (see an overview of the process here). The first step is to contact KUCTC if you think you have discovered or created something that may have value outside of academia. From there, the details of the situation will impact the timing and level of engagement needed. It’s important to maintain communication with our team to ensure we are informed of potential publications, interactions with industry representatives, and communications with potential commercial partners. A high level of collaboration between you and our office will help us stay informed as certain actions can impact our ability to protect intellectual property.

A lab notebook and (other research records) are not just integral parts of high-quality research and scholarship, they also are important to protecting intellectual property. These tools provide legal evidence of the conception and development of an invention or documentation of the creation of a work or software. In the case of a disagreement or dispute, a good laboratory notebook and other well-organized documentation may help in determining inventorship of an invention, authorship of a creative work or software, or ownership of intellectual property.

In the U.S., there is a one-year grace period for filing a patent application. That is, a patent application can be filed up to one year after an enabling public disclosure; after that, patent protection is unavailable. In most foreign countries, however, there is no grace period; once an invention is publicly disclosed, patent protection is lost. Therefore, before publicly disclosing any invention or discovery, researchers should first discuss intellectual property issues with KUCTC.

Generally, the invention will be jointly owned between KU and the other institution or company. Each inventor will assign his or her rights to their employer. KUCTC will work with the other institution to decide on management of the invention. Usually, if the other institution is a university or research institution, we will make an inter-institutional agreement that provides for one of the institutions to take the lead on protecting and licensing the invention, sharing expenses associated with the patenting process, and allocating any licensing revenues. If the co-inventor is employed by a company, then the company and KU jointly own the rights in the invention. In this case, if the company wants exclusive use of the joint invention, it will have to license the university's ownership interest in the invention. However, in the absence of such an agreement, under U.S. law, each co-owner is free to license its rights in the invention independently of the other co-owner(s), without notifying them, seeking their permission, or sharing income with them.

Under U.S. law, an inventor is a person who takes part in the conception of the ideas in the patent claims of a patent application. The law does not recognize individuals as inventors who merely follow someone else's instructions or simply provide lab space, funding and/or equipment. Inventorship of a patent application may change as the patent claims are changed during prosecution of the application. Inventorship is a legal issue and may require an intricate legal determination by the patent attorney prosecuting the application.

Completing an invention disclosure document is the first step for many innovations.  We ask that you provide the most complete information possible even if the questions are unfamiliar. We also now offer additional specialized versions of our form for software, creative works, and research tool inventions. Additionally, all our disclosures were recently updated to make them more approachable and provide improved guidance/instructions (Link to disclosures page).

Completed disclosures (or questions) can be sent to the general KUCTC@KU.edu inbox. Once we receive a disclosure, KUCTC will send you confirmation including a reference number and contact information for your licensing associate.

The federal government (NIH, NSF, DOE, etc.) is the biggest sponsor of research at KU. If federally sponsored research results in the development of an invention, KU has certain obligations back to the federal agency. KUCTC works to report accurately and meet those obligations, so this information is critical. Non-federal sponsors (industry, state, non-profits) can also obligations regarding Inventions and other intellectual property.  What to expect when KUCTC reviews a disclosure

Once submitted, our team completes a short “express” review to identify any missing information or deadlines. After that, a formal invention review report or “IRR” (subject to timing) within 60 days of receipt is conducted. The IRR includes:

• A technical review
• Market information
• A review of existing publications and patents.

This process also often results in additional questions. If that happens, the report is returned to the inventors with those questions and a recommendation for what next steps may be appropriate.