What is a patent?

A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office (USPTO) in exchange for public disclosure of the invention. The patent provides the inventor with the right to exclude others from making, using, offering for sale, selling or importing the invention.

What is an Invention Disclosure?

An Invention Disclosure is a confidential document prepared by a researcher(s) containing details of an invention, which is submitted to the Office of Innovation and Economic Development. The submission of an Invention Disclosure will allow the office to review the invention details and make a determination as to whether a patent application should be filled to protect the invention. The Invention Disclosure should be sufficiently detailed as to allow someone skilled in the art to use the invention without undue experimentation. While a scientific manuscript or dissertation may form the basis of an invention disclosure and can be submitted with your Invention Disclosure form, a grant application outlining work to be done is not sufficient.  

The Invention Disclosure form can be found here. 

What is the role of the Office of Innovation and Economic Development?

The Office of IInnovation and Economic Development covers a broad range of responsibilities ranging from negotiation of industry sponsored research agreements and non-financial agreements (e.g. Material Transfer Agreements, Data Use Agreements, and Non-Disclosure Agreements), processing and assessment of invention disclosures, export controls, and other activities related to engaging with industry.

I had a poster presentation on my research last month. Did I lose the patent rights?

Ideally, an invention disclosure should be completed and submitted to the Office of Innovation and Economic Development at least two months prior to any public disclosure of an invention to ensure sufficient time for an assessment of the technology to be completed and the preparation of a patent application (either provisional or non-provisional), if appropriate. Public disclosures include presentation at conferences, publicly available reports to funding sponsors, symposiums, publications, posts on social media, blog posts, posters and discussions with others outside the university without a non-disclosure agreement.

What are the different types of patents?

Patents can be broadly classified into 3 types: Design, Utility and Plant.

• A Design patent protects the unique look/appearance of a functional item (e.g. original bottle for Coca-Cola, appearance of iPhone, Oakley sunglasses).
• A Utility patent covers the creation of a new or improved product, process, or machine which is useful.
• A Plant Patent protects asexually produced distinct plant varieties which cannot be propagated by tuber or discovered in an uncultivated state.

What can and cannot be patented?

What can be patented:

• Process
• Machine
• Article of manufacture -shapes and patterns
• Composition of matter
• Improvement of any of the above
• Asexually reproduced plant varieties
• Newly found seedlings

What cannot be patented:

• Laws of nature
• Physical phenomena
• Abstract ideas
• Literary, dramatic, musical, and artistic works (See information on copyrights)
• Tuber propagated plants

What are the criteria an invention must meet for the USPTO to consider allowing patent claims?

• Novel – an invention must be different from anything that is publicly known.
• Non-obvious – someone skilled in the field of the invention must deem it unexpected.
• Useful – offering practical benefits.
• Enabling – complete description with examples and/or scope of reduction to practice.

Who owns an invention developed at NDSU and any patent that may issue from the invention? 

As per NDSU Policy 190, intellectual property developed by employees of NDSU is assigned to the university.  If a decision is made to protect the intellectual property, NDSU assigns its rights in the intellectual property to the NDSU Research Foundation which coordinates the patent prosecution and markets the IP to potential licensees.

NDSU, as most other universities, follows the tenant that ownership follows inventorship.  In the event that NDSU personnel work with individuals outside the university on an invention, then ownership of the invention will follow inventorship (i.e. anyone with an inventive contribution to a claim in an issued patent (or their assignee) will own an equal, undivided share of the patent rights).  

How long is the patent valid?

In general, a utility patent is valid for 20 years from the date of first filing (Priority Date), a design patent is valid for 14 years from the date of issue, and a plant patent is valid for 20 years from the date of filing.

Why should I file an invention disclosure?

First and foremost, NDSU employees have an obligation to disclose inventions under NDSU Policy 190 and SBHE Policy 611.2.  In addition, most sponsored research agreements contain requirements related to intellectual property that may include requirements to disclose intellectual property to the sponsor, options for licensing inventions developed as part of a sponsored project, and publication review to protect inventions.

What is the Bayh-Dole Act?

The Bayh-Dole Act or Patent and Trademark Law Amendments Act (35 U.S.C. § 200-212) was passed in 1980 and is the legal framework that allowed universities and others conducting research with federal funds to acquire ownership of inventions developed with such funding.  This law formed the basis of university technology transfer as it currently exists.

The Act and its implementing regulations (37 C.F.R. § 401) define the rights and obligations associated with the commercialization of inventions developed using federal funding.

What rights to IP developed as part of a research project are available to the industry sponsor?

NDSU has four different IP options available for industry sponsored research:

• The Traditional option includes intellectual property (IP) terms that are consistent with federal policy and prevailing higher education practices.  This model provides sponsors with an option period to assess any technology that is developed in the performance of the research and the right to negotiate an exclusive license to commercialize the technology.
• Non-Exclusive Royalty Free options provides the sponsor with either a
  • Commercial, non-exclusive, royalty-free license in a defined field of use for any invention that is conceived and reduced to practice in the performance of the research with an option to extend the non-exclusive license at commercially reasonable rates after the initial term (Assessment NERF)
  • Commercial, non-exclusive, royalty-free license in a defined field of use for any invention that is conceived and reduced to practice in the performance of the research with an option to convert the original non-exclusive license to an exclusive, royalty-bearing license within six months from its receipt of the initial invention disclosure (Option NERF)
• Advance License option provides the sponsor with the right to an exclusive, commercial license in a defined field of use for any invention that is conceived and reduced to practice in the performance of the research.  The Advance License is royalty-free until annual net sales reach $20M, at which time a royalty rate of 1% of net sales will commence and be payable on an annual basis thereafter.

Additional information about the models and a sample agreement can be found on the Engaging in Research web page.  The PI has the right to determine which model(s) may be appropriate for a given research project. 

If you have any questions about working with industry, please reach out to our team.

What is public disclosure?

A public disclosure of an invention is discussion of an invention that may be considered enabling with individuals outside of NDSU without a non-disclosure or similar agreement in place. This includes oral presentations at conferences, symposiums, publications, social media posts, blog post, poster presentations, or reports to research sponsors that are publicly available.

What is an enabling disclosure?

An enabling disclosure is a disclosure of sufficient detail to allow a person skilled in the field to produce the invention without undue experimentation.

What is prior art?

Prior art is evidence that your invention is already known.  Prior art may be a scientific publication or poster, student dissertation, business plan competition, class presentation, or discussion with a colleague at another institution.  Prior art may be something in your field of study or it may come from a completely different field. 

Do I need a finished product to apply for a patent?

No, to file a patent in the United States the idea has to be conceived and reduced to practice.  From a patent standpoint conceived means that the idea has been developed to the point that someone skilled in the art could implement the invention without undue experimentation.  In the US, a theoretical reduction to practice is sufficient so a working prototype is not necessary as long as sufficient research has been done such that the outcome is assured. A patent application is developed in conjunction with patent attorneys who can insure that any patent application meets at least the minimum requirements for consideration by the US Patent and Trademark Office.  

What is a provisional application?

A provisional patent application establishes a filing date and is generally faster to file as it is not required to include formal patent claims or an oath or declaration. If filed before a public disclosure, a provisional application will protect an invention for the duration of the provisional patent application.  A provisional patent application is valid for only 12 months, cannot be extended, and is not examined by the USPTO. A provisional application provides the means to establish an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention.

To continue protection beyond the original 12-month period, a corresponding nonprovisional application must be filed during the 12-month lifespan of the provisional patent application.  When either converting a provisional application or filing a corresponding non-provisional application, only those concepts covered under the original provisional application can make a claim back to the original filing date.   Hence provisional patent applications should be as thorough as possible and include all research findings and possible claims to offer the best protection for any follow-on applications.

What is the difference between ‘first to invent’ and ‘first to file’?

With the passage of the Leahy-Smith America Invents Act, in 2013 the US patent system transitioned from a “first to invent” to “first to file” system and changed the focus from when an idea was first conceived to the date when an invention was first submitted to the US Patent and Trademark Office as either a provisional or non-provisional patent application.  

What measures should be taken during the year following the filing of a provisional patent application?

The 12-month period following the filing a provisional application is a time to confirm the original findings, generate additional findings to fill in any knowledge gaps, develop working prototypes, or increase the technology readiness level of the invention. You will only have about 8-months to accumulate additional data to support the claims in the provisional application since the patent attorney will need tine to draft the non-provisional containing that data. You should also report any subsequent manuscripts, papers, patents or abstracts related to the invention to IEIP.

Is a provisional patent application confidential?

Yes, provisional patent applications are confidential filings.  Provisional patent applications secure a filing date without incurring all of the expenses associated with the filing and prosecution of a non-provisional patent application.  If a provisional patent application is allowed to expire, it remains a confidential document and is not placed into the public domain.

Will filing a patent application impact my ability to publish?

The only potential impact that filing a patent application will have on publishing research relates to the timing of the submission of a manuscript to a publisher for review.  The goal is to submit a provisional or non-provisional application prior to a public disclosure.  If you are planning to publish, please let our office know and we will work with you to try to expedite the review process

Who decides whether to file the patent application?

IEIP meets with inventors to discuss disclosed inventions, performs prior art searches, and conducts an initial market assessment prior to deciding if filing of a patent application is appropriate.  The initial assessment includes an assessment of patentability and commercial merit of the invention. In the event that prior is art is found related to the technology, inventors are asked to provide input related to the technical similarity of the disclosed invention to the prior art  If there is sufficient reason to file a patent application, NDSU will assign the technology to the NDSU Research Foundation for patent filing and prosecution.  Once a technology is assigned to the NDSU Research Foundation, decisions related to patent prosecution and disposition of the technology reside with the NDSU Research Foundation.

Who covers the cost of filing a patent application?

When NDSU decides to file a patent application based on an invention disclosure, NDSU will assign the technology to the NDSU Research Foundation.  The NDSU Research Foundation manages the patent prosecution and covers the cost filing a patent application and legal fees incurred during the filing and prosecution of patent applications. The NDSU Research Foundation will also market the invention to potential licensees for commercialization of the technology.

How long does it take to get patent approval?

The USPTO website states it takes 22 months to get a verdict on your patent application from the filing date of a utility patent application. Typically, it takes 2-6 years, depending on whether a provisional patent application was filed, the complexity of the application, extent of prior art identified by the patent examiner, the number of pending patent applications at the USPTO, and unanticipated circumstances.

Do the inventors need a Patent Attorney?

No, patent attorneys are hired by the NDSU Research Foundation to develop and prosecute patent applications.  The NDSU Research Foundation regularly works with patent attorneys in different fields of specialization to patent inventions developed at NDSU. The attorneys assist in drafting claims and the application, respond to office actions and other requirements set by the patent examiner and prosecute the patent application.   

What are Restriction Requirements?

A Restriction Requirement is an action from the patent examiner indicating that the patent application consists of two or more distinct inventions.  The Restriction Requirement groups claims into the number of distinct inventions identified by the patent examiner and requires that the applicant identify the first group of claims to be prosecuted.  A Restriction Requirement does not mean anything is wrong with the patent application or that any of the claims are being rejected, it simply means the examiner views the application to contain multiple, independent inventions. 

Responding to a Restriction Requirement means prioritizing the group of claims to pursue first.  This decision is taken after comprehensive discussions with the inventors and patent attorneys.  Many factors weigh into the decision of determining which of group of claims to prosecute first and the patent attorneys will often propose a patent prosecution strategy when they forward the restriction requirement. 

A Restriction Requirement does not limit the scope of a patent application, it simply limits how much of the application is prosecuted at one time.  Groups of claims not chosen at the time of the restriction requirement may be prosecuted at a later date.  In some cases, prosecuting a single group of claims will result in the most important aspects of an invention being protected, negating the need to prosecute the other groups of claims.  In some cases, filing a divisional application at a later date to attempt to broaden the claims will be necessary to gain appropriate levels of protection.  

What is an Office Action?

An office action is an official written correspondence from a patent examiner with respect to the patent application that requires a response in order for prosecution of the application to continue.   An office action may include a restriction requirement, point out errors in the drafting of the patent application, reject certain claims based on existing prior art, or raise other issues related to a patent application. Clerical and legal arguments made in the office actions are completely handled by the patent attorney. If an office action relates to a technical matter or prior art, input is typically requested from the inventors to detail what differentiates the 'new' invention from the prior art or to provide insight into technical workings of the invention.

What is a divisional patent application?

A divisional patent application is a separate patent that includes non-elected/dropped claims or any new claims from subsequent research findings. It can be filed any time prior to the parent patent application being issued. The divisional patent application maintains the filing date of the parent application.

What other types of intellectual property are there besides patents?

• Copyright. A copyright protects any form of written expression. It covers music, books, graphics and any other form of creative expression in published works. Copyright protection can last up to 70 years after the inventor’s death.  For works made for hire, copyright protection generally lasts for 95 years from publication or 120 years from creation, whichever is shorter. Scientific examples would be software, videos, clinical protocols, etc.
  
  
• Trademark: A trademark protects designation of the source of goods. A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.
  
  
• Trade Secrets: These are concepts that are not known to the public. Trade secrets can include a formula, pattern, compilation, program, device, method, technique or process. Protection of NDSU developed inventions is not commonly managed through trade secret. 

I have developed new software, is it patentable?

In general, software qualifies for copyright protection.  In some cases, software can be patented if it improves “computer functionality” (e.g. improving computing speed, reducing computing resources to complete a function, or allows the computer to complete a computing task in an unconventional way).  In 2014, the U.S. Supreme Court handed down a decision in the Alice Corp. v. CLS Bank that included a two-part standard for patenting software implemented invention.  This standard has significantly affected software patents, as the Court of Appeals for the Federal Circuit has invalidated most software-implemented patents since this ruling.  

A company is interested in getting more information about my research. Can I share it?

You can always share information that is either in the public domain or non-confidential in nature. In the event a company wants to discuss research results that have not been published, detailed discussions should only take place after a Confidentiality Agreement or Non-disclosure Agreement is in place.  Additional information about Confidentiality Agreements and the steps to to obtain one an agreement from NDSU can be found on the Research Agreement page.

In the event that a company is interested in obtaining more detailed information about a technology that has been disclosed to NDSU and there is patent application pending, the NDSU Research Foundation will execute an agreement with the company.  Please contact the NDSU Research Foundation if your receive any commercial interest in a patented or patent pending technology.  

Once the patent has published (approximately 18 months after the filing of a non-provisional patent application) everything contained in the published patent application can be discussed. Although care must be taken to not disclose new or additional information that is not included in the patent or was generated after the filing of the application.  

What is a license agreement?

A patent grants the patent owner the right to exclude others from making, using, selling, or importing the invention.  A license agreement is a formal agreement between the patent owner and a third party that grants the third-party the rights to make, use, and sell the invention. Licenses can be exclusive (only one party can make use of the technology during the license period) or non-exclusive (technology can be licensed to many different parties without restriction)

Who will receive the royalties?

Royalties are revenues generated as a direct result of IP licensing.  The inventors are entitled to a ‘share’ of the Net Royalties as determined by the NDSU policy (Policy 190) in effect at the time an invention was disclosed. The NDSU intellectual property policy also determines how the ‘inventor’s share’ of royalties is split between multiple inventors.   

What if NDSU declines my invention?

Inventors rights regarding intellectual property are outlined in the NDSU policy on intellectual property (NDSU Policy 190).

Is a US Patent valid in other countries?

No, patents are limited to the specific territory that granted such, meaning that a US patent is only enforceable in the United States. Additionally, US patents restrict export of the invention and the subsequent commercialized product to other countries.

Patent protection may be obtained in other countries through the filing of a Patent Cooperation Treaty (PCT) application or through direct filing of patent applications in the countries of interest.  In general, the NDSU Research Foundation will only file a PCT application or other foreign filing when a licensee commits to cover the patent costs.