Tech transfer FAQs
Inform the KU Center for Technology Commercialization at your earliest convenience by completing the invention disclosure form. Briefly explain what you invented or what software you created, how the work was funded, and if a public disclosure has been scheduled or has occurred.
In order for a patent to be granted for an invention, it must be novel, useful and non-obvious. Be sure to include how your invention meets that criteria. Call KUCTC if you have any questions about the disclosure form.
The KU intellectual property policy and your employment agreement with KU requires that rights to inventions and software developed in the conduct of research at KU or with KU resources be assigned to the university. This applies to IP with an annual value of $10,000 or more. In short, KU becomes the owner of all related patents and copyrights as mandated by federal law for government-funded research.
You can do both. Seeking a patent for a discovery or development does not prevent scientific publication and, in most cases, does not delay publishing. However, to retain the potential for foreign patent protection, a U.S. patent application must be filed before any description of the invention is published in an article, abstract, thesis, presentation on the internet or any other public format. This also includes technical discussions with colleagues from companies or other institutions.
The United States adopted a first-to-file system in 2014, which is widely accepted by most nations. In some cases, a patent application may be filed up to one year after you publicly disclose your invention. In most countries, however, an invention cannot be patented once that has occurred. A software copyright begins the moment the code is affixed to tangible media, creating fewer issues with publishing.
To find out if your discovery should be patented, contact KUCTC. A licensing associate will work with you to accommodate your publishing preferences. To protect your rights, you’ll need to submit a description of the discovery to KUCTC at least three months in advance of the submission of the manuscript or abstract. This allows KUCTC time to review the information, perform prior art search, and engage a patent attorney to draft and file the patent application.
After you’ve filed a patent application, publishing and discussing your work publicly can help generate interest. However, you may still be constrained about disclosing certain information such as the possibility of filing future patent applications. In addition to assisting you with the copyright and patent process, KUCTC can help you determine what to publish and when
The disclosure evaluation at KUCTC may take a week to three months, depending on the complexity of the invention and the target industry. At the end of the evaluation, the decision to move forward with patenting will be made in concert with the inventor. Drafting the patent application with the help of a patent law firm can take up to two months. Once filed with the U.S. Patent Office, claims generally take at least three years to be approved. Licensing and marketing efforts can occur concurrently with the patenting process.
KUCTC rarely files for protection in foreign jurisdictions due to budget limitations. However, there are certain sectors and technologies that warrant such protection. Please discuss with your licensing associate.
The filing and prosecution of patent applications are handled by outside patent firms. A patent attorney is selected on the basis of technical expertise, competence and prior experience in working with similar cases.
A company or an individual who is interested in your new invention may try to learn confidential information pertaining to your patent through conversations or visiting your laboratory. A confidential disclosure agreement protects your rights and allows you to continue your conversations with potential business partners. KUCTC can help you with the contract’s preparation, negotiation and execution.
The execution of a license agreement begins a long-term relationship with the licensee. KUCTC monitors the licensee’s performance for the duration of the agreement. To ensure commercialization of the invention, most license agreements require periodic financial and development reports from the licensees, with special attention to meeting certain milestones or deliverables.
KUCTC will also monitor patent prosecution and maintenance of issued patents. Sometimes it is necessary to re-evaluate a licensing relationship to accommodate changed circumstances or to take into account new situations.
Whether your research project is funded by the federal government, a company, foundation or other nonprofit, it includes an associated research agreement. This agreement addresses many issues and contingencies, including ownership and allocation of intellectual property rights to patents and/or software resulting from your discoveries. The KUCTC Industry Agreements Group provides flexible options to companies for IP rights in the sponsored research agreements.
Revenues generated by the license are distributed to the inventor, the inventor’s department and KU according to the KU revenue sharing policy. The KU policy regarding royalty distribution describes this in detail.