General Technology Transfer
What is technology transfer?
Technology transfer is the formal transfer of rights from UM to another party for the use and commercialization of new discoveries and innovations resulting from UM research. The major steps in the process include the disclosure of research innovations by UM researchers to OTC, filing a patent application to protect the innovation, and licensing the patent rights to industry for commercial development. Technology transfer, however, is much broader than just licensing patent rights. Technology transfer also includes transfer of knowledge through training and educating students, extension and outreach services to existing and startup companies, cooperative education and internships, consulting services, and collaborative research activities.
How do the technology transfer services provided by the Office of Technology Commercialization (OTC) in the Office of Research and Sponsored Programs support UM researchers?
OTC is a research service unit. Our mission is to help UM researchers transfer research outcomes to the private sector for commercialization. We strive to increase the number of technologies licensed to commercial partners and to facilitate the formation of companies based on UM technologies. We are committed to managing an efficient process that is not burdensome and allows researchers to publish while we seek patent protection on inventions with commercial potential. We market technologies to potential licensees and manage the relationship post-licensing. We keep UM inventors involved throughout the patent prosecution and licensing process. We also review the intellectual property sections of collaborative research agreements to ensure UM’s rights are protected.
How does technology transfer promote local economic development?
OTC’s mission is to help commercialize UM technologies by licensing technology to industrial partners and our employee start-ups. We focus our initial marketing efforts on companies and entrepreneurs in the local area. Existing companies may wish to license a technology to improve current operations or to expand product offerings. Local entrepreneurs may wish to establish a company based on a UM technology. Both existing and startup companies have the potential to create high-wage jobs in the local community. Local companies are also more likely to establish long-term collaborations with UM researchers and provide employment opportunities for UM students, keeping the best and brightest in the community.
What is Intellectual Property?
Intellectual property (IP) is a legal concept that includes copyrights, trademarks, patents, and related rights, such as know-how. Under intellectual property law, the IP owner has certain exclusive rights to the covered creative work, commercial symbol, or invention. UM has two policies related to IP: the Patents and Inventions Policy – 2008 and the Copyright Policy. The Office of Technology Commercialization (OTC) is responsible for implementing and managing these IP policies.
What is technology transfer?
Technology transfer is the formal transfer of rights from UM to another party for the use and commercialization of new discoveries and innovations resulting from UM research. The major steps in the process include the disclosure of research innovations by UM researchers to OTC, filing a patent application to protect the innovation, and licensing the patent rights to industry for commercial development. Technology transfer, however, is much broader than just licensing patent rights. Technology transfer also includes transfer of knowledge through training and educating students, extension and outreach services to existing and startup companies, cooperative education and internships, consulting services, and collaborative research activities.
How do the technology transfer services provided by the Office of Technology Commercialization (OTC) in the Office of Research and Sponsored Programs support UM researchers?
OTC is a research service unit. Our mission is to help UM researchers transfer research outcomes to the private sector for commercialization. We strive to increase the number of technologies licensed to commercial partners and to facilitate the formation of companies based on UM technologies. We are committed to managing an efficient process that is not burdensome and allows researchers to publish while we seek patent protection on inventions with commercial potential. We market technologies to potential licensees and manage the relationship post-licensing. We keep UM inventors involved throughout the patent prosecution and licensing process. We also review the intellectual property sections of collaborative research agreements to ensure UM’s rights are protected.
How does technology transfer promote local economic development?
OTC’s mission is to help commercialize UM technologies by licensing technology to industrial partners and our employee start-ups. We focus our initial marketing efforts on companies and entrepreneurs in the local area. Existing companies may wish to license a technology to improve current operations or to expand product offerings. Local entrepreneurs may wish to establish a company based on a UM technology. Both existing and startup companies have the potential to create high-wage jobs in the local community. Local companies are also more likely to establish long-term collaborations with UM researchers and provide employment opportunities for UM students, keeping the best and brightest in the community.
What is Intellectual Property?
Intellectual property (IP) is a legal concept that includes copyrights, trademarks, patents, and related rights, such as know-how. Under intellectual property law, the IP owner has certain exclusive rights to the covered creative work, commercial symbol, or invention. UM has two policies related to IP: the Patents and Inventions Policy – 2008 and the Copyright Policy. The Office of Technology Commercialization (OTC) is responsible for implementing and managing these IP policies.
Technology transfer is the formal transfer of rights from UM to another party for the use and commercialization of new discoveries and innovations resulting from UM research. The major steps in the process include the disclosure of research innovations by UM researchers to OTC, filing a patent application to protect the innovation, and licensing the patent rights to industry for commercial development. Technology transfer, however, is much broader than just licensing patent rights. Technology transfer also includes transfer of knowledge through training and educating students, extension and outreach services to existing and startup companies, cooperative education and internships, consulting services, and collaborative research activities.
How do the technology transfer services provided by the Office of Technology Commercialization (OTC) in the Office of Research and Sponsored Programs support UM researchers?
OTC is a research service unit. Our mission is to help UM researchers transfer research outcomes to the private sector for commercialization. We strive to increase the number of technologies licensed to commercial partners and to facilitate the formation of companies based on UM technologies. We are committed to managing an efficient process that is not burdensome and allows researchers to publish while we seek patent protection on inventions with commercial potential. We market technologies to potential licensees and manage the relationship post-licensing. We keep UM inventors involved throughout the patent prosecution and licensing process. We also review the intellectual property sections of collaborative research agreements to ensure UM’s rights are protected.
How does technology transfer promote local economic development?
OTC’s mission is to help commercialize UM technologies by licensing technology to industrial partners and our employee start-ups. We focus our initial marketing efforts on companies and entrepreneurs in the local area. Existing companies may wish to license a technology to improve current operations or to expand product offerings. Local entrepreneurs may wish to establish a company based on a UM technology. Both existing and startup companies have the potential to create high-wage jobs in the local community. Local companies are also more likely to establish long-term collaborations with UM researchers and provide employment opportunities for UM students, keeping the best and brightest in the community.
What is Intellectual Property?
Intellectual property (IP) is a legal concept that includes copyrights, trademarks, patents, and related rights, such as know-how. Under intellectual property law, the IP owner has certain exclusive rights to the covered creative work, commercial symbol, or invention. UM has two policies related to IP: the Patents and Inventions Policy – 2008 and the Copyright Policy. The Office of Technology Commercialization (OTC) is responsible for implementing and managing these IP policies.
OTC’s mission is to help commercialize UM technologies by licensing technology to industrial partners and our employee start-ups. We focus our initial marketing efforts on companies and entrepreneurs in the local area. Existing companies may wish to license a technology to improve current operations or to expand product offerings. Local entrepreneurs may wish to establish a company based on a UM technology. Both existing and startup companies have the potential to create high-wage jobs in the local community. Local companies are also more likely to establish long-term collaborations with UM researchers and provide employment opportunities for UM students, keeping the best and brightest in the community.
What is Intellectual Property?
Intellectual property (IP) is a legal concept that includes copyrights, trademarks, patents, and related rights, such as know-how. Under intellectual property law, the IP owner has certain exclusive rights to the covered creative work, commercial symbol, or invention. UM has two policies related to IP: the Patents and Inventions Policy – 2008 and the Copyright Policy. The Office of Technology Commercialization (OTC) is responsible for implementing and managing these IP policies.
Inventions and Patents
Whom do I contact at UM about protecting my discovery?
The Office of Technology Commercialization (OTC) within the Office of Research and Sponsored Programs is responsible for managing the university’s Patents and Inventions Policy – 2008. OTC is a small office and we keep each other informed. Feel free to contact Allyson Best (amilhous@olemiss.edu) at any time to discuss your research. It is never too early to talk to OTC; we are a research service unit here to help at any time.
What process does OTC follow once I disclose a possible invention to OTC using the Research Disclosure Form?
OTC typically will meet with you to discuss the Research Disclosure Form to better understand the technology and obtain additional information. OTC may conduct a preliminary patent and/or literature search to supplement information you provided in the disclosure. Once OTC determines the disclosure is ready for review, OTC will initiate a formal review of the disclosure for possible patent filing (OTC Procedure on Filing and Processing Research Disclosures).
Should I publish or file for a patent on the outcomes of my research?
Yes. As long as you work with OTC, seeking a patent to protect a research discovery does not prevent scientific publications or presentations. A draft publication serves as an excellent starting point for drafting a patent application. OTC will work with an outside patent attorney to accommodate planned publishing/presentation dates whenever possible.
What is a patent?
A patent is a time-limited monopoly granted by the government to exclude others from making, using, selling, offering for sale, or importing an invention. In exchange for the monopoly, the patent must teach others how to use the invention to encourage further advances. A patent does not grant the patent owner the right to market an invention. A patent only grants the right to prevent others from marketing the invention without the patent owner’s permission.
What are the criteria for determining if my discovery is a patentable invention?
An invention is patentable if it is novel, has utility, and is not obvious to others who work in the same field. It must be usable by others who are considered skillful in the field of the invention. OTC consults with external patent counsel to assess patentability. Ultimately, a patent examiner in the United States Patent and Trademark Office (and international equivalents) will determine whether an invention satisfies the above requirements.
Is there a difference between a co-author on a publication and an inventor on a patent? If so, how are inventors determined?
Unlike authorship of a publication, inventorship is a matter of law. A patent failing to name the correct inventors may be ruled invalid in court. A lawful inventor is one who makes an inventive contribution to one or more of the claims that are ultimately issued on a patent. Someone whose contribution to the project is limited to providing financial support, or an employee whose contribution to the project is limited to carrying out studies under the direction of an inventor, is not an inventor. (OTC Procedure on Determination of Inventors and Distribution of Licensing Income)
How are inventors kept involved during the patent and licensing process?
Inventor involvement is very important to the entire patent and licensing process. OTC works closely with the inventors and appreciates their expertise. Inventors are kept informed of the evaluation process and the actions taken, and their input is considered in making decisions about the invention’s protection and licensing. However, final responsibility for such decisions rests with OTC and UM administration.
What is the benefit of disclosing a possible invention to OTC?
Disclosing a possible invention to OTC is an important part of protecting the rights to your discovery and ensuring the university’s compliance with federal regulations pertaining to federal grants and contracts. OTC has the expertise to manage the patent prosecution and to execute a commercialization strategy. If the technology is licensed, inventors will receive a share of licensing income in accordance with the Patents and Inventions Policy – 2008. OTC’s marketing efforts often lead to new relationships with industry that could result in sponsored research in your laboratory.
Who owns inventions at UM?
In accordance with the Patents and Inventions Policy – 2008, UM owns any invention made or developed in the course of UM employees’ educational and research activities. UM also owns any invention made or developed outside an employee’s educational and research activities if the employee used substantial UM resources as defined in the policy. UM employees are required to assign all domestic and foreign rights to UM for any inventions owned by UM unless UM releases the rights to the employee (Reference: OTC Procedure on Release of Rights).
I created a possible invention on my own time. Do I need to report it to OTC?
It depends. OTC will need to ask you some questions to determine the underlying facts. If the decision is made by OTC that the invention does not belong to UM, then you will be free to pursue the technology on your own. OTC will not be able to expend resources on an invention not owned by UM. You could, however, discuss the possibility of assigning your rights to the invention to UM if you wish to work with OTC.
I developed an invention or a possible invention before coming to UM. How will the invention be managed and who will own it?
It depends. OTC will need to ask you some questions to determine the underlying facts. In some cases the invention may be owned by your previous employer, in other cases the invention may belong to you and other inventors. OTC will need to know if you plan to continue to work on the invention as a UM employee. If so, OTC may need to negotiate an agreement with your previous employer or the individual inventors.
Why do I need to list sources of funding on the Research Disclosure Form?
Research activities sponsored by companies, foundations, other universities and government agencies are covered by agreements that detail the ownership of intellectual property rights. OTC will need to review the agreements in order to decide how to protect the intellectual property rights. Regulations require federal government-funded inventions be reported to the federal agency that made the award. OTC reports such inventions to the funding agency and indicates the government’s rights on patent applications.
What rights does the Federal Government have in government-funded inventions?
It depends on the language in the sponsored research agreement as well as the scope of work. OTC will review the agreements and let you know if the government has rights to any inventions.
Who prepares and prosecutes patent applications for UM?
OTC coordinates preparation and prosecution of patents for the university. OTC works with state-approved outside patent attorneys, who are selected based of their technical expertise, to prepare and prosecute patent applications on behalf of UM. OTC manages the interface between the patent attorney and the inventor(s). Although OTC’s goal is to reduce the burden on UM employees, preparing a patent application and responding to questions from patent offices around the world requires a significant amount of work by the inventors. The inventors will typically be asked to prepare a draft manuscript in the format of a publication to supplement the information contained in the Research Disclosure Form. This document serves as the starting point for the outside patent counsel who will convert the document into the style and format of a patent application.
What is the cost of obtaining a patent and who pays for it?
The cost of obtaining a patent depends on many factors, including the complexity of the technology and whether patent protection is being sought internationally or only in the U.S. The costs for prosecuting a U.S. patent application typically range from $15,000 to $50,000. Costs for prosecuting international patent applications in developed countries can add another $100,000 to $200,000. Maintenance fees (paid after a patent issues) add several thousand dollars per patent. UM pays patent expenses for inventions owned by UM unless there is an agreement with a 3rd party to pay the expenses (e.g., in a typical license agreement the company pays patent expenses).
How long does it take to obtain a patent?
The time it takes to obtain a patent depends on a number of factors including the complexity of the technology and the number of researchers active in the same general field. On average you can expect it to take at least 3 to 4 years, often longer, to obtain a patent in the U.S. Patents may issue faster or slower in other countries depending on the technology.
What is public disclosure and what information can I disclose publicly without losing patent rights?
Public disclosure is the transfer of information about your invention, written or oral, into the public domain or to a party not obligated to keep the information confidential. You should not make any kind of public disclosure regarding your potential invention without consulting with OTC. In general, you lose the ability to obtain patent protection in most countries as soon as a public disclosure is made.
How do I protect intellectual property rights before public disclosure?
You should discuss your plans for a public disclosure with OTC. One option could be to disclose the information to the other party under the terms of a confidentiality agreement. OTC will negotiate and execute the appropriate agreement for you. Another option could be to work with OTC to file a provisional patent application before the disclosure. This step requires expenditures of significant UM resources and therefore must be discussed with OTC well in advance of a planned public disclosure.
Is a grant proposal to a federal agency considered a public disclosure?
A grant proposal is not considered public disclosure unless it is available to the general public for review. Since grant applications and reports to federal agencies may be available to the public through the Freedom of Information Act, you should work with a Program Development Specialist in the Office of Research and Sponsored Programs to make sure you follow the agency’s instructions on how to clearly mark confidential information.
What is a provisional patent application?
A provisional patent application is a patent application filed with the US Patent and Trademark Office (USPTO) that establishes an early effective filing date for a patent application. The USPTO does not examine the provisional application, and it remains pending for up to one year. At the end of the provisional period, UM must decide either to drop the provisional application or to convert it into a regular patent application. OTC will consult with the inventors and UM administrators as appropriate to make this decision on behalf of UM.
What happens if the university decides not to prosecute or maintain a patent?
Patents are expensive. UM may decide not to prosecute or maintain a patent for a variety of reasons. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention and take on the responsibility for paying the patent prosecution expenses (OTC Procedure on Release of Rights). UM will retain a non-exclusive license to the invention for research and education purposes.
How are disputes handled?
OTC works closely with UM employees throughout the patent and licensing process to minimize misunderstandings and disagreements. Disputes are handled in accordance with the OTC Procedure on Dispute Resolution.
Whom do I contact at UM about protecting my discovery?
The Office of Technology Commercialization (OTC) within the Office of Research and Sponsored Programs is responsible for managing the university’s Patents and Inventions Policy – 2008. OTC is a small office and we keep each other informed. Feel free to contact Allyson Best (amilhous@olemiss.edu) at any time to discuss your research. It is never too early to talk to OTC; we are a research service unit here to help at any time.
What process does OTC follow once I disclose a possible invention to OTC using the Research Disclosure Form?
OTC typically will meet with you to discuss the Research Disclosure Form to better understand the technology and obtain additional information. OTC may conduct a preliminary patent and/or literature search to supplement information you provided in the disclosure. Once OTC determines the disclosure is ready for review, OTC will initiate a formal review of the disclosure for possible patent filing (OTC Procedure on Filing and Processing Research Disclosures).
Should I publish or file for a patent on the outcomes of my research?
Yes. As long as you work with OTC, seeking a patent to protect a research discovery does not prevent scientific publications or presentations. A draft publication serves as an excellent starting point for drafting a patent application. OTC will work with an outside patent attorney to accommodate planned publishing/presentation dates whenever possible.
What is a patent?
A patent is a time-limited monopoly granted by the government to exclude others from making, using, selling, offering for sale, or importing an invention. In exchange for the monopoly, the patent must teach others how to use the invention to encourage further advances. A patent does not grant the patent owner the right to market an invention. A patent only grants the right to prevent others from marketing the invention without the patent owner’s permission.
What are the criteria for determining if my discovery is a patentable invention?
An invention is patentable if it is novel, has utility, and is not obvious to others who work in the same field. It must be usable by others who are considered skillful in the field of the invention. OTC consults with external patent counsel to assess patentability. Ultimately, a patent examiner in the United States Patent and Trademark Office (and international equivalents) will determine whether an invention satisfies the above requirements.
Is there a difference between a co-author on a publication and an inventor on a patent? If so, how are inventors determined?
Unlike authorship of a publication, inventorship is a matter of law. A patent failing to name the correct inventors may be ruled invalid in court. A lawful inventor is one who makes an inventive contribution to one or more of the claims that are ultimately issued on a patent. Someone whose contribution to the project is limited to providing financial support, or an employee whose contribution to the project is limited to carrying out studies under the direction of an inventor, is not an inventor. (OTC Procedure on Determination of Inventors and Distribution of Licensing Income)
How are inventors kept involved during the patent and licensing process?
Inventor involvement is very important to the entire patent and licensing process. OTC works closely with the inventors and appreciates their expertise. Inventors are kept informed of the evaluation process and the actions taken, and their input is considered in making decisions about the invention’s protection and licensing. However, final responsibility for such decisions rests with OTC and UM administration.
What is the benefit of disclosing a possible invention to OTC?
Disclosing a possible invention to OTC is an important part of protecting the rights to your discovery and ensuring the university’s compliance with federal regulations pertaining to federal grants and contracts. OTC has the expertise to manage the patent prosecution and to execute a commercialization strategy. If the technology is licensed, inventors will receive a share of licensing income in accordance with the Patents and Inventions Policy – 2008. OTC’s marketing efforts often lead to new relationships with industry that could result in sponsored research in your laboratory.
Who owns inventions at UM?
In accordance with the Patents and Inventions Policy – 2008, UM owns any invention made or developed in the course of UM employees’ educational and research activities. UM also owns any invention made or developed outside an employee’s educational and research activities if the employee used substantial UM resources as defined in the policy. UM employees are required to assign all domestic and foreign rights to UM for any inventions owned by UM unless UM releases the rights to the employee (Reference: OTC Procedure on Release of Rights).
I created a possible invention on my own time. Do I need to report it to OTC?
It depends. OTC will need to ask you some questions to determine the underlying facts. If the decision is made by OTC that the invention does not belong to UM, then you will be free to pursue the technology on your own. OTC will not be able to expend resources on an invention not owned by UM. You could, however, discuss the possibility of assigning your rights to the invention to UM if you wish to work with OTC.
I developed an invention or a possible invention before coming to UM. How will the invention be managed and who will own it?
It depends. OTC will need to ask you some questions to determine the underlying facts. In some cases the invention may be owned by your previous employer, in other cases the invention may belong to you and other inventors. OTC will need to know if you plan to continue to work on the invention as a UM employee. If so, OTC may need to negotiate an agreement with your previous employer or the individual inventors.
Why do I need to list sources of funding on the Research Disclosure Form?
Research activities sponsored by companies, foundations, other universities and government agencies are covered by agreements that detail the ownership of intellectual property rights. OTC will need to review the agreements in order to decide how to protect the intellectual property rights. Regulations require federal government-funded inventions be reported to the federal agency that made the award. OTC reports such inventions to the funding agency and indicates the government’s rights on patent applications.
What rights does the Federal Government have in government-funded inventions?
It depends on the language in the sponsored research agreement as well as the scope of work. OTC will review the agreements and let you know if the government has rights to any inventions.
Who prepares and prosecutes patent applications for UM?
OTC coordinates preparation and prosecution of patents for the university. OTC works with state-approved outside patent attorneys, who are selected based of their technical expertise, to prepare and prosecute patent applications on behalf of UM. OTC manages the interface between the patent attorney and the inventor(s). Although OTC’s goal is to reduce the burden on UM employees, preparing a patent application and responding to questions from patent offices around the world requires a significant amount of work by the inventors. The inventors will typically be asked to prepare a draft manuscript in the format of a publication to supplement the information contained in the Research Disclosure Form. This document serves as the starting point for the outside patent counsel who will convert the document into the style and format of a patent application.
What is the cost of obtaining a patent and who pays for it?
The cost of obtaining a patent depends on many factors, including the complexity of the technology and whether patent protection is being sought internationally or only in the U.S. The costs for prosecuting a U.S. patent application typically range from $15,000 to $50,000. Costs for prosecuting international patent applications in developed countries can add another $100,000 to $200,000. Maintenance fees (paid after a patent issues) add several thousand dollars per patent. UM pays patent expenses for inventions owned by UM unless there is an agreement with a 3rd party to pay the expenses (e.g., in a typical license agreement the company pays patent expenses).
How long does it take to obtain a patent?
The time it takes to obtain a patent depends on a number of factors including the complexity of the technology and the number of researchers active in the same general field. On average you can expect it to take at least 3 to 4 years, often longer, to obtain a patent in the U.S. Patents may issue faster or slower in other countries depending on the technology.
What is public disclosure and what information can I disclose publicly without losing patent rights?
Public disclosure is the transfer of information about your invention, written or oral, into the public domain or to a party not obligated to keep the information confidential. You should not make any kind of public disclosure regarding your potential invention without consulting with OTC. In general, you lose the ability to obtain patent protection in most countries as soon as a public disclosure is made.
How do I protect intellectual property rights before public disclosure?
You should discuss your plans for a public disclosure with OTC. One option could be to disclose the information to the other party under the terms of a confidentiality agreement. OTC will negotiate and execute the appropriate agreement for you. Another option could be to work with OTC to file a provisional patent application before the disclosure. This step requires expenditures of significant UM resources and therefore must be discussed with OTC well in advance of a planned public disclosure.
Is a grant proposal to a federal agency considered a public disclosure?
A grant proposal is not considered public disclosure unless it is available to the general public for review. Since grant applications and reports to federal agencies may be available to the public through the Freedom of Information Act, you should work with a Program Development Specialist in the Office of Research and Sponsored Programs to make sure you follow the agency’s instructions on how to clearly mark confidential information.
What is a provisional patent application?
A provisional patent application is a patent application filed with the US Patent and Trademark Office (USPTO) that establishes an early effective filing date for a patent application. The USPTO does not examine the provisional application, and it remains pending for up to one year. At the end of the provisional period, UM must decide either to drop the provisional application or to convert it into a regular patent application. OTC will consult with the inventors and UM administrators as appropriate to make this decision on behalf of UM.
What happens if the university decides not to prosecute or maintain a patent?
Patents are expensive. UM may decide not to prosecute or maintain a patent for a variety of reasons. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention and take on the responsibility for paying the patent prosecution expenses (OTC Procedure on Release of Rights). UM will retain a non-exclusive license to the invention for research and education purposes.
How are disputes handled?
OTC works closely with UM employees throughout the patent and licensing process to minimize misunderstandings and disagreements. Disputes are handled in accordance with the OTC Procedure on Dispute Resolution.
The Office of Technology Commercialization (OTC) within the Office of Research and Sponsored Programs is responsible for managing the university’s Patents and Inventions Policy – 2008. OTC is a small office and we keep each other informed. Feel free to contact Allyson Best (amilhous@olemiss.edu) at any time to discuss your research. It is never too early to talk to OTC; we are a research service unit here to help at any time.
What process does OTC follow once I disclose a possible invention to OTC using the Research Disclosure Form?
OTC typically will meet with you to discuss the Research Disclosure Form to better understand the technology and obtain additional information. OTC may conduct a preliminary patent and/or literature search to supplement information you provided in the disclosure. Once OTC determines the disclosure is ready for review, OTC will initiate a formal review of the disclosure for possible patent filing (OTC Procedure on Filing and Processing Research Disclosures).
Should I publish or file for a patent on the outcomes of my research?
Yes. As long as you work with OTC, seeking a patent to protect a research discovery does not prevent scientific publications or presentations. A draft publication serves as an excellent starting point for drafting a patent application. OTC will work with an outside patent attorney to accommodate planned publishing/presentation dates whenever possible.
What is a patent?
A patent is a time-limited monopoly granted by the government to exclude others from making, using, selling, offering for sale, or importing an invention. In exchange for the monopoly, the patent must teach others how to use the invention to encourage further advances. A patent does not grant the patent owner the right to market an invention. A patent only grants the right to prevent others from marketing the invention without the patent owner’s permission.
What are the criteria for determining if my discovery is a patentable invention?
An invention is patentable if it is novel, has utility, and is not obvious to others who work in the same field. It must be usable by others who are considered skillful in the field of the invention. OTC consults with external patent counsel to assess patentability. Ultimately, a patent examiner in the United States Patent and Trademark Office (and international equivalents) will determine whether an invention satisfies the above requirements.
Is there a difference between a co-author on a publication and an inventor on a patent? If so, how are inventors determined?
Unlike authorship of a publication, inventorship is a matter of law. A patent failing to name the correct inventors may be ruled invalid in court. A lawful inventor is one who makes an inventive contribution to one or more of the claims that are ultimately issued on a patent. Someone whose contribution to the project is limited to providing financial support, or an employee whose contribution to the project is limited to carrying out studies under the direction of an inventor, is not an inventor. (OTC Procedure on Determination of Inventors and Distribution of Licensing Income)
How are inventors kept involved during the patent and licensing process?
Inventor involvement is very important to the entire patent and licensing process. OTC works closely with the inventors and appreciates their expertise. Inventors are kept informed of the evaluation process and the actions taken, and their input is considered in making decisions about the invention’s protection and licensing. However, final responsibility for such decisions rests with OTC and UM administration.
What is the benefit of disclosing a possible invention to OTC?
Disclosing a possible invention to OTC is an important part of protecting the rights to your discovery and ensuring the university’s compliance with federal regulations pertaining to federal grants and contracts. OTC has the expertise to manage the patent prosecution and to execute a commercialization strategy. If the technology is licensed, inventors will receive a share of licensing income in accordance with the Patents and Inventions Policy – 2008. OTC’s marketing efforts often lead to new relationships with industry that could result in sponsored research in your laboratory.
Who owns inventions at UM?
In accordance with the Patents and Inventions Policy – 2008, UM owns any invention made or developed in the course of UM employees’ educational and research activities. UM also owns any invention made or developed outside an employee’s educational and research activities if the employee used substantial UM resources as defined in the policy. UM employees are required to assign all domestic and foreign rights to UM for any inventions owned by UM unless UM releases the rights to the employee (Reference: OTC Procedure on Release of Rights).
I created a possible invention on my own time. Do I need to report it to OTC?
It depends. OTC will need to ask you some questions to determine the underlying facts. If the decision is made by OTC that the invention does not belong to UM, then you will be free to pursue the technology on your own. OTC will not be able to expend resources on an invention not owned by UM. You could, however, discuss the possibility of assigning your rights to the invention to UM if you wish to work with OTC.
I developed an invention or a possible invention before coming to UM. How will the invention be managed and who will own it?
It depends. OTC will need to ask you some questions to determine the underlying facts. In some cases the invention may be owned by your previous employer, in other cases the invention may belong to you and other inventors. OTC will need to know if you plan to continue to work on the invention as a UM employee. If so, OTC may need to negotiate an agreement with your previous employer or the individual inventors.
Why do I need to list sources of funding on the Research Disclosure Form?
Research activities sponsored by companies, foundations, other universities and government agencies are covered by agreements that detail the ownership of intellectual property rights. OTC will need to review the agreements in order to decide how to protect the intellectual property rights. Regulations require federal government-funded inventions be reported to the federal agency that made the award. OTC reports such inventions to the funding agency and indicates the government’s rights on patent applications.
What rights does the Federal Government have in government-funded inventions?
It depends on the language in the sponsored research agreement as well as the scope of work. OTC will review the agreements and let you know if the government has rights to any inventions.
Who prepares and prosecutes patent applications for UM?
OTC coordinates preparation and prosecution of patents for the university. OTC works with state-approved outside patent attorneys, who are selected based of their technical expertise, to prepare and prosecute patent applications on behalf of UM. OTC manages the interface between the patent attorney and the inventor(s). Although OTC’s goal is to reduce the burden on UM employees, preparing a patent application and responding to questions from patent offices around the world requires a significant amount of work by the inventors. The inventors will typically be asked to prepare a draft manuscript in the format of a publication to supplement the information contained in the Research Disclosure Form. This document serves as the starting point for the outside patent counsel who will convert the document into the style and format of a patent application.
What is the cost of obtaining a patent and who pays for it?
The cost of obtaining a patent depends on many factors, including the complexity of the technology and whether patent protection is being sought internationally or only in the U.S. The costs for prosecuting a U.S. patent application typically range from $15,000 to $50,000. Costs for prosecuting international patent applications in developed countries can add another $100,000 to $200,000. Maintenance fees (paid after a patent issues) add several thousand dollars per patent. UM pays patent expenses for inventions owned by UM unless there is an agreement with a 3rd party to pay the expenses (e.g., in a typical license agreement the company pays patent expenses).
How long does it take to obtain a patent?
The time it takes to obtain a patent depends on a number of factors including the complexity of the technology and the number of researchers active in the same general field. On average you can expect it to take at least 3 to 4 years, often longer, to obtain a patent in the U.S. Patents may issue faster or slower in other countries depending on the technology.
What is public disclosure and what information can I disclose publicly without losing patent rights?
Public disclosure is the transfer of information about your invention, written or oral, into the public domain or to a party not obligated to keep the information confidential. You should not make any kind of public disclosure regarding your potential invention without consulting with OTC. In general, you lose the ability to obtain patent protection in most countries as soon as a public disclosure is made.
How do I protect intellectual property rights before public disclosure?
You should discuss your plans for a public disclosure with OTC. One option could be to disclose the information to the other party under the terms of a confidentiality agreement. OTC will negotiate and execute the appropriate agreement for you. Another option could be to work with OTC to file a provisional patent application before the disclosure. This step requires expenditures of significant UM resources and therefore must be discussed with OTC well in advance of a planned public disclosure.
Is a grant proposal to a federal agency considered a public disclosure?
A grant proposal is not considered public disclosure unless it is available to the general public for review. Since grant applications and reports to federal agencies may be available to the public through the Freedom of Information Act, you should work with a Program Development Specialist in the Office of Research and Sponsored Programs to make sure you follow the agency’s instructions on how to clearly mark confidential information.
What is a provisional patent application?
A provisional patent application is a patent application filed with the US Patent and Trademark Office (USPTO) that establishes an early effective filing date for a patent application. The USPTO does not examine the provisional application, and it remains pending for up to one year. At the end of the provisional period, UM must decide either to drop the provisional application or to convert it into a regular patent application. OTC will consult with the inventors and UM administrators as appropriate to make this decision on behalf of UM.
What happens if the university decides not to prosecute or maintain a patent?
Patents are expensive. UM may decide not to prosecute or maintain a patent for a variety of reasons. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention and take on the responsibility for paying the patent prosecution expenses (OTC Procedure on Release of Rights). UM will retain a non-exclusive license to the invention for research and education purposes.
How are disputes handled?
OTC works closely with UM employees throughout the patent and licensing process to minimize misunderstandings and disagreements. Disputes are handled in accordance with the OTC Procedure on Dispute Resolution.
Yes. As long as you work with OTC, seeking a patent to protect a research discovery does not prevent scientific publications or presentations. A draft publication serves as an excellent starting point for drafting a patent application. OTC will work with an outside patent attorney to accommodate planned publishing/presentation dates whenever possible.
What is a patent?
A patent is a time-limited monopoly granted by the government to exclude others from making, using, selling, offering for sale, or importing an invention. In exchange for the monopoly, the patent must teach others how to use the invention to encourage further advances. A patent does not grant the patent owner the right to market an invention. A patent only grants the right to prevent others from marketing the invention without the patent owner’s permission.
What are the criteria for determining if my discovery is a patentable invention?
An invention is patentable if it is novel, has utility, and is not obvious to others who work in the same field. It must be usable by others who are considered skillful in the field of the invention. OTC consults with external patent counsel to assess patentability. Ultimately, a patent examiner in the United States Patent and Trademark Office (and international equivalents) will determine whether an invention satisfies the above requirements.
Is there a difference between a co-author on a publication and an inventor on a patent? If so, how are inventors determined?
Unlike authorship of a publication, inventorship is a matter of law. A patent failing to name the correct inventors may be ruled invalid in court. A lawful inventor is one who makes an inventive contribution to one or more of the claims that are ultimately issued on a patent. Someone whose contribution to the project is limited to providing financial support, or an employee whose contribution to the project is limited to carrying out studies under the direction of an inventor, is not an inventor. (OTC Procedure on Determination of Inventors and Distribution of Licensing Income)
How are inventors kept involved during the patent and licensing process?
Inventor involvement is very important to the entire patent and licensing process. OTC works closely with the inventors and appreciates their expertise. Inventors are kept informed of the evaluation process and the actions taken, and their input is considered in making decisions about the invention’s protection and licensing. However, final responsibility for such decisions rests with OTC and UM administration.
What is the benefit of disclosing a possible invention to OTC?
Disclosing a possible invention to OTC is an important part of protecting the rights to your discovery and ensuring the university’s compliance with federal regulations pertaining to federal grants and contracts. OTC has the expertise to manage the patent prosecution and to execute a commercialization strategy. If the technology is licensed, inventors will receive a share of licensing income in accordance with the Patents and Inventions Policy – 2008. OTC’s marketing efforts often lead to new relationships with industry that could result in sponsored research in your laboratory.
Who owns inventions at UM?
In accordance with the Patents and Inventions Policy – 2008, UM owns any invention made or developed in the course of UM employees’ educational and research activities. UM also owns any invention made or developed outside an employee’s educational and research activities if the employee used substantial UM resources as defined in the policy. UM employees are required to assign all domestic and foreign rights to UM for any inventions owned by UM unless UM releases the rights to the employee (Reference: OTC Procedure on Release of Rights).
I created a possible invention on my own time. Do I need to report it to OTC?
It depends. OTC will need to ask you some questions to determine the underlying facts. If the decision is made by OTC that the invention does not belong to UM, then you will be free to pursue the technology on your own. OTC will not be able to expend resources on an invention not owned by UM. You could, however, discuss the possibility of assigning your rights to the invention to UM if you wish to work with OTC.
I developed an invention or a possible invention before coming to UM. How will the invention be managed and who will own it?
It depends. OTC will need to ask you some questions to determine the underlying facts. In some cases the invention may be owned by your previous employer, in other cases the invention may belong to you and other inventors. OTC will need to know if you plan to continue to work on the invention as a UM employee. If so, OTC may need to negotiate an agreement with your previous employer or the individual inventors.
Why do I need to list sources of funding on the Research Disclosure Form?
Research activities sponsored by companies, foundations, other universities and government agencies are covered by agreements that detail the ownership of intellectual property rights. OTC will need to review the agreements in order to decide how to protect the intellectual property rights. Regulations require federal government-funded inventions be reported to the federal agency that made the award. OTC reports such inventions to the funding agency and indicates the government’s rights on patent applications.
What rights does the Federal Government have in government-funded inventions?
It depends on the language in the sponsored research agreement as well as the scope of work. OTC will review the agreements and let you know if the government has rights to any inventions.
Who prepares and prosecutes patent applications for UM?
OTC coordinates preparation and prosecution of patents for the university. OTC works with state-approved outside patent attorneys, who are selected based of their technical expertise, to prepare and prosecute patent applications on behalf of UM. OTC manages the interface between the patent attorney and the inventor(s). Although OTC’s goal is to reduce the burden on UM employees, preparing a patent application and responding to questions from patent offices around the world requires a significant amount of work by the inventors. The inventors will typically be asked to prepare a draft manuscript in the format of a publication to supplement the information contained in the Research Disclosure Form. This document serves as the starting point for the outside patent counsel who will convert the document into the style and format of a patent application.
What is the cost of obtaining a patent and who pays for it?
The cost of obtaining a patent depends on many factors, including the complexity of the technology and whether patent protection is being sought internationally or only in the U.S. The costs for prosecuting a U.S. patent application typically range from $15,000 to $50,000. Costs for prosecuting international patent applications in developed countries can add another $100,000 to $200,000. Maintenance fees (paid after a patent issues) add several thousand dollars per patent. UM pays patent expenses for inventions owned by UM unless there is an agreement with a 3rd party to pay the expenses (e.g., in a typical license agreement the company pays patent expenses).
How long does it take to obtain a patent?
The time it takes to obtain a patent depends on a number of factors including the complexity of the technology and the number of researchers active in the same general field. On average you can expect it to take at least 3 to 4 years, often longer, to obtain a patent in the U.S. Patents may issue faster or slower in other countries depending on the technology.
What is public disclosure and what information can I disclose publicly without losing patent rights?
Public disclosure is the transfer of information about your invention, written or oral, into the public domain or to a party not obligated to keep the information confidential. You should not make any kind of public disclosure regarding your potential invention without consulting with OTC. In general, you lose the ability to obtain patent protection in most countries as soon as a public disclosure is made.
How do I protect intellectual property rights before public disclosure?
You should discuss your plans for a public disclosure with OTC. One option could be to disclose the information to the other party under the terms of a confidentiality agreement. OTC will negotiate and execute the appropriate agreement for you. Another option could be to work with OTC to file a provisional patent application before the disclosure. This step requires expenditures of significant UM resources and therefore must be discussed with OTC well in advance of a planned public disclosure.
Is a grant proposal to a federal agency considered a public disclosure?
A grant proposal is not considered public disclosure unless it is available to the general public for review. Since grant applications and reports to federal agencies may be available to the public through the Freedom of Information Act, you should work with a Program Development Specialist in the Office of Research and Sponsored Programs to make sure you follow the agency’s instructions on how to clearly mark confidential information.
What is a provisional patent application?
A provisional patent application is a patent application filed with the US Patent and Trademark Office (USPTO) that establishes an early effective filing date for a patent application. The USPTO does not examine the provisional application, and it remains pending for up to one year. At the end of the provisional period, UM must decide either to drop the provisional application or to convert it into a regular patent application. OTC will consult with the inventors and UM administrators as appropriate to make this decision on behalf of UM.
What happens if the university decides not to prosecute or maintain a patent?
Patents are expensive. UM may decide not to prosecute or maintain a patent for a variety of reasons. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention and take on the responsibility for paying the patent prosecution expenses (OTC Procedure on Release of Rights). UM will retain a non-exclusive license to the invention for research and education purposes.
How are disputes handled?
OTC works closely with UM employees throughout the patent and licensing process to minimize misunderstandings and disagreements. Disputes are handled in accordance with the OTC Procedure on Dispute Resolution.
An invention is patentable if it is novel, has utility, and is not obvious to others who work in the same field. It must be usable by others who are considered skillful in the field of the invention. OTC consults with external patent counsel to assess patentability. Ultimately, a patent examiner in the United States Patent and Trademark Office (and international equivalents) will determine whether an invention satisfies the above requirements.
Is there a difference between a co-author on a publication and an inventor on a patent? If so, how are inventors determined?
Unlike authorship of a publication, inventorship is a matter of law. A patent failing to name the correct inventors may be ruled invalid in court. A lawful inventor is one who makes an inventive contribution to one or more of the claims that are ultimately issued on a patent. Someone whose contribution to the project is limited to providing financial support, or an employee whose contribution to the project is limited to carrying out studies under the direction of an inventor, is not an inventor. (OTC Procedure on Determination of Inventors and Distribution of Licensing Income)
How are inventors kept involved during the patent and licensing process?
Inventor involvement is very important to the entire patent and licensing process. OTC works closely with the inventors and appreciates their expertise. Inventors are kept informed of the evaluation process and the actions taken, and their input is considered in making decisions about the invention’s protection and licensing. However, final responsibility for such decisions rests with OTC and UM administration.
What is the benefit of disclosing a possible invention to OTC?
Disclosing a possible invention to OTC is an important part of protecting the rights to your discovery and ensuring the university’s compliance with federal regulations pertaining to federal grants and contracts. OTC has the expertise to manage the patent prosecution and to execute a commercialization strategy. If the technology is licensed, inventors will receive a share of licensing income in accordance with the Patents and Inventions Policy – 2008. OTC’s marketing efforts often lead to new relationships with industry that could result in sponsored research in your laboratory.
Who owns inventions at UM?
In accordance with the Patents and Inventions Policy – 2008, UM owns any invention made or developed in the course of UM employees’ educational and research activities. UM also owns any invention made or developed outside an employee’s educational and research activities if the employee used substantial UM resources as defined in the policy. UM employees are required to assign all domestic and foreign rights to UM for any inventions owned by UM unless UM releases the rights to the employee (Reference: OTC Procedure on Release of Rights).
I created a possible invention on my own time. Do I need to report it to OTC?
It depends. OTC will need to ask you some questions to determine the underlying facts. If the decision is made by OTC that the invention does not belong to UM, then you will be free to pursue the technology on your own. OTC will not be able to expend resources on an invention not owned by UM. You could, however, discuss the possibility of assigning your rights to the invention to UM if you wish to work with OTC.
I developed an invention or a possible invention before coming to UM. How will the invention be managed and who will own it?
It depends. OTC will need to ask you some questions to determine the underlying facts. In some cases the invention may be owned by your previous employer, in other cases the invention may belong to you and other inventors. OTC will need to know if you plan to continue to work on the invention as a UM employee. If so, OTC may need to negotiate an agreement with your previous employer or the individual inventors.
Why do I need to list sources of funding on the Research Disclosure Form?
Research activities sponsored by companies, foundations, other universities and government agencies are covered by agreements that detail the ownership of intellectual property rights. OTC will need to review the agreements in order to decide how to protect the intellectual property rights. Regulations require federal government-funded inventions be reported to the federal agency that made the award. OTC reports such inventions to the funding agency and indicates the government’s rights on patent applications.
What rights does the Federal Government have in government-funded inventions?
It depends on the language in the sponsored research agreement as well as the scope of work. OTC will review the agreements and let you know if the government has rights to any inventions.
Who prepares and prosecutes patent applications for UM?
OTC coordinates preparation and prosecution of patents for the university. OTC works with state-approved outside patent attorneys, who are selected based of their technical expertise, to prepare and prosecute patent applications on behalf of UM. OTC manages the interface between the patent attorney and the inventor(s). Although OTC’s goal is to reduce the burden on UM employees, preparing a patent application and responding to questions from patent offices around the world requires a significant amount of work by the inventors. The inventors will typically be asked to prepare a draft manuscript in the format of a publication to supplement the information contained in the Research Disclosure Form. This document serves as the starting point for the outside patent counsel who will convert the document into the style and format of a patent application.
What is the cost of obtaining a patent and who pays for it?
The cost of obtaining a patent depends on many factors, including the complexity of the technology and whether patent protection is being sought internationally or only in the U.S. The costs for prosecuting a U.S. patent application typically range from $15,000 to $50,000. Costs for prosecuting international patent applications in developed countries can add another $100,000 to $200,000. Maintenance fees (paid after a patent issues) add several thousand dollars per patent. UM pays patent expenses for inventions owned by UM unless there is an agreement with a 3rd party to pay the expenses (e.g., in a typical license agreement the company pays patent expenses).
How long does it take to obtain a patent?
The time it takes to obtain a patent depends on a number of factors including the complexity of the technology and the number of researchers active in the same general field. On average you can expect it to take at least 3 to 4 years, often longer, to obtain a patent in the U.S. Patents may issue faster or slower in other countries depending on the technology.
What is public disclosure and what information can I disclose publicly without losing patent rights?
Public disclosure is the transfer of information about your invention, written or oral, into the public domain or to a party not obligated to keep the information confidential. You should not make any kind of public disclosure regarding your potential invention without consulting with OTC. In general, you lose the ability to obtain patent protection in most countries as soon as a public disclosure is made.
How do I protect intellectual property rights before public disclosure?
You should discuss your plans for a public disclosure with OTC. One option could be to disclose the information to the other party under the terms of a confidentiality agreement. OTC will negotiate and execute the appropriate agreement for you. Another option could be to work with OTC to file a provisional patent application before the disclosure. This step requires expenditures of significant UM resources and therefore must be discussed with OTC well in advance of a planned public disclosure.
Is a grant proposal to a federal agency considered a public disclosure?
A grant proposal is not considered public disclosure unless it is available to the general public for review. Since grant applications and reports to federal agencies may be available to the public through the Freedom of Information Act, you should work with a Program Development Specialist in the Office of Research and Sponsored Programs to make sure you follow the agency’s instructions on how to clearly mark confidential information.
What is a provisional patent application?
A provisional patent application is a patent application filed with the US Patent and Trademark Office (USPTO) that establishes an early effective filing date for a patent application. The USPTO does not examine the provisional application, and it remains pending for up to one year. At the end of the provisional period, UM must decide either to drop the provisional application or to convert it into a regular patent application. OTC will consult with the inventors and UM administrators as appropriate to make this decision on behalf of UM.
What happens if the university decides not to prosecute or maintain a patent?
Patents are expensive. UM may decide not to prosecute or maintain a patent for a variety of reasons. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention and take on the responsibility for paying the patent prosecution expenses (OTC Procedure on Release of Rights). UM will retain a non-exclusive license to the invention for research and education purposes.
How are disputes handled?
OTC works closely with UM employees throughout the patent and licensing process to minimize misunderstandings and disagreements. Disputes are handled in accordance with the OTC Procedure on Dispute Resolution.
Inventor involvement is very important to the entire patent and licensing process. OTC works closely with the inventors and appreciates their expertise. Inventors are kept informed of the evaluation process and the actions taken, and their input is considered in making decisions about the invention’s protection and licensing. However, final responsibility for such decisions rests with OTC and UM administration.
What is the benefit of disclosing a possible invention to OTC?
Disclosing a possible invention to OTC is an important part of protecting the rights to your discovery and ensuring the university’s compliance with federal regulations pertaining to federal grants and contracts. OTC has the expertise to manage the patent prosecution and to execute a commercialization strategy. If the technology is licensed, inventors will receive a share of licensing income in accordance with the Patents and Inventions Policy – 2008. OTC’s marketing efforts often lead to new relationships with industry that could result in sponsored research in your laboratory.
Who owns inventions at UM?
In accordance with the Patents and Inventions Policy – 2008, UM owns any invention made or developed in the course of UM employees’ educational and research activities. UM also owns any invention made or developed outside an employee’s educational and research activities if the employee used substantial UM resources as defined in the policy. UM employees are required to assign all domestic and foreign rights to UM for any inventions owned by UM unless UM releases the rights to the employee (Reference: OTC Procedure on Release of Rights).
I created a possible invention on my own time. Do I need to report it to OTC?
It depends. OTC will need to ask you some questions to determine the underlying facts. If the decision is made by OTC that the invention does not belong to UM, then you will be free to pursue the technology on your own. OTC will not be able to expend resources on an invention not owned by UM. You could, however, discuss the possibility of assigning your rights to the invention to UM if you wish to work with OTC.
I developed an invention or a possible invention before coming to UM. How will the invention be managed and who will own it?
It depends. OTC will need to ask you some questions to determine the underlying facts. In some cases the invention may be owned by your previous employer, in other cases the invention may belong to you and other inventors. OTC will need to know if you plan to continue to work on the invention as a UM employee. If so, OTC may need to negotiate an agreement with your previous employer or the individual inventors.
Why do I need to list sources of funding on the Research Disclosure Form?
Research activities sponsored by companies, foundations, other universities and government agencies are covered by agreements that detail the ownership of intellectual property rights. OTC will need to review the agreements in order to decide how to protect the intellectual property rights. Regulations require federal government-funded inventions be reported to the federal agency that made the award. OTC reports such inventions to the funding agency and indicates the government’s rights on patent applications.
What rights does the Federal Government have in government-funded inventions?
It depends on the language in the sponsored research agreement as well as the scope of work. OTC will review the agreements and let you know if the government has rights to any inventions.
Who prepares and prosecutes patent applications for UM?
OTC coordinates preparation and prosecution of patents for the university. OTC works with state-approved outside patent attorneys, who are selected based of their technical expertise, to prepare and prosecute patent applications on behalf of UM. OTC manages the interface between the patent attorney and the inventor(s). Although OTC’s goal is to reduce the burden on UM employees, preparing a patent application and responding to questions from patent offices around the world requires a significant amount of work by the inventors. The inventors will typically be asked to prepare a draft manuscript in the format of a publication to supplement the information contained in the Research Disclosure Form. This document serves as the starting point for the outside patent counsel who will convert the document into the style and format of a patent application.
What is the cost of obtaining a patent and who pays for it?
The cost of obtaining a patent depends on many factors, including the complexity of the technology and whether patent protection is being sought internationally or only in the U.S. The costs for prosecuting a U.S. patent application typically range from $15,000 to $50,000. Costs for prosecuting international patent applications in developed countries can add another $100,000 to $200,000. Maintenance fees (paid after a patent issues) add several thousand dollars per patent. UM pays patent expenses for inventions owned by UM unless there is an agreement with a 3rd party to pay the expenses (e.g., in a typical license agreement the company pays patent expenses).
How long does it take to obtain a patent?
The time it takes to obtain a patent depends on a number of factors including the complexity of the technology and the number of researchers active in the same general field. On average you can expect it to take at least 3 to 4 years, often longer, to obtain a patent in the U.S. Patents may issue faster or slower in other countries depending on the technology.
What is public disclosure and what information can I disclose publicly without losing patent rights?
Public disclosure is the transfer of information about your invention, written or oral, into the public domain or to a party not obligated to keep the information confidential. You should not make any kind of public disclosure regarding your potential invention without consulting with OTC. In general, you lose the ability to obtain patent protection in most countries as soon as a public disclosure is made.
How do I protect intellectual property rights before public disclosure?
You should discuss your plans for a public disclosure with OTC. One option could be to disclose the information to the other party under the terms of a confidentiality agreement. OTC will negotiate and execute the appropriate agreement for you. Another option could be to work with OTC to file a provisional patent application before the disclosure. This step requires expenditures of significant UM resources and therefore must be discussed with OTC well in advance of a planned public disclosure.
Is a grant proposal to a federal agency considered a public disclosure?
A grant proposal is not considered public disclosure unless it is available to the general public for review. Since grant applications and reports to federal agencies may be available to the public through the Freedom of Information Act, you should work with a Program Development Specialist in the Office of Research and Sponsored Programs to make sure you follow the agency’s instructions on how to clearly mark confidential information.
What is a provisional patent application?
A provisional patent application is a patent application filed with the US Patent and Trademark Office (USPTO) that establishes an early effective filing date for a patent application. The USPTO does not examine the provisional application, and it remains pending for up to one year. At the end of the provisional period, UM must decide either to drop the provisional application or to convert it into a regular patent application. OTC will consult with the inventors and UM administrators as appropriate to make this decision on behalf of UM.
What happens if the university decides not to prosecute or maintain a patent?
Patents are expensive. UM may decide not to prosecute or maintain a patent for a variety of reasons. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention and take on the responsibility for paying the patent prosecution expenses (OTC Procedure on Release of Rights). UM will retain a non-exclusive license to the invention for research and education purposes.
How are disputes handled?
OTC works closely with UM employees throughout the patent and licensing process to minimize misunderstandings and disagreements. Disputes are handled in accordance with the OTC Procedure on Dispute Resolution.
In accordance with the Patents and Inventions Policy – 2008, UM owns any invention made or developed in the course of UM employees’ educational and research activities. UM also owns any invention made or developed outside an employee’s educational and research activities if the employee used substantial UM resources as defined in the policy. UM employees are required to assign all domestic and foreign rights to UM for any inventions owned by UM unless UM releases the rights to the employee (Reference: OTC Procedure on Release of Rights).
I created a possible invention on my own time. Do I need to report it to OTC?
It depends. OTC will need to ask you some questions to determine the underlying facts. If the decision is made by OTC that the invention does not belong to UM, then you will be free to pursue the technology on your own. OTC will not be able to expend resources on an invention not owned by UM. You could, however, discuss the possibility of assigning your rights to the invention to UM if you wish to work with OTC.
I developed an invention or a possible invention before coming to UM. How will the invention be managed and who will own it?
It depends. OTC will need to ask you some questions to determine the underlying facts. In some cases the invention may be owned by your previous employer, in other cases the invention may belong to you and other inventors. OTC will need to know if you plan to continue to work on the invention as a UM employee. If so, OTC may need to negotiate an agreement with your previous employer or the individual inventors.
Why do I need to list sources of funding on the Research Disclosure Form?
Research activities sponsored by companies, foundations, other universities and government agencies are covered by agreements that detail the ownership of intellectual property rights. OTC will need to review the agreements in order to decide how to protect the intellectual property rights. Regulations require federal government-funded inventions be reported to the federal agency that made the award. OTC reports such inventions to the funding agency and indicates the government’s rights on patent applications.
What rights does the Federal Government have in government-funded inventions?
It depends on the language in the sponsored research agreement as well as the scope of work. OTC will review the agreements and let you know if the government has rights to any inventions.
Who prepares and prosecutes patent applications for UM?
OTC coordinates preparation and prosecution of patents for the university. OTC works with state-approved outside patent attorneys, who are selected based of their technical expertise, to prepare and prosecute patent applications on behalf of UM. OTC manages the interface between the patent attorney and the inventor(s). Although OTC’s goal is to reduce the burden on UM employees, preparing a patent application and responding to questions from patent offices around the world requires a significant amount of work by the inventors. The inventors will typically be asked to prepare a draft manuscript in the format of a publication to supplement the information contained in the Research Disclosure Form. This document serves as the starting point for the outside patent counsel who will convert the document into the style and format of a patent application.
What is the cost of obtaining a patent and who pays for it?
The cost of obtaining a patent depends on many factors, including the complexity of the technology and whether patent protection is being sought internationally or only in the U.S. The costs for prosecuting a U.S. patent application typically range from $15,000 to $50,000. Costs for prosecuting international patent applications in developed countries can add another $100,000 to $200,000. Maintenance fees (paid after a patent issues) add several thousand dollars per patent. UM pays patent expenses for inventions owned by UM unless there is an agreement with a 3rd party to pay the expenses (e.g., in a typical license agreement the company pays patent expenses).
How long does it take to obtain a patent?
The time it takes to obtain a patent depends on a number of factors including the complexity of the technology and the number of researchers active in the same general field. On average you can expect it to take at least 3 to 4 years, often longer, to obtain a patent in the U.S. Patents may issue faster or slower in other countries depending on the technology.
What is public disclosure and what information can I disclose publicly without losing patent rights?
Public disclosure is the transfer of information about your invention, written or oral, into the public domain or to a party not obligated to keep the information confidential. You should not make any kind of public disclosure regarding your potential invention without consulting with OTC. In general, you lose the ability to obtain patent protection in most countries as soon as a public disclosure is made.
How do I protect intellectual property rights before public disclosure?
You should discuss your plans for a public disclosure with OTC. One option could be to disclose the information to the other party under the terms of a confidentiality agreement. OTC will negotiate and execute the appropriate agreement for you. Another option could be to work with OTC to file a provisional patent application before the disclosure. This step requires expenditures of significant UM resources and therefore must be discussed with OTC well in advance of a planned public disclosure.
Is a grant proposal to a federal agency considered a public disclosure?
A grant proposal is not considered public disclosure unless it is available to the general public for review. Since grant applications and reports to federal agencies may be available to the public through the Freedom of Information Act, you should work with a Program Development Specialist in the Office of Research and Sponsored Programs to make sure you follow the agency’s instructions on how to clearly mark confidential information.
What is a provisional patent application?
A provisional patent application is a patent application filed with the US Patent and Trademark Office (USPTO) that establishes an early effective filing date for a patent application. The USPTO does not examine the provisional application, and it remains pending for up to one year. At the end of the provisional period, UM must decide either to drop the provisional application or to convert it into a regular patent application. OTC will consult with the inventors and UM administrators as appropriate to make this decision on behalf of UM.
What happens if the university decides not to prosecute or maintain a patent?
Patents are expensive. UM may decide not to prosecute or maintain a patent for a variety of reasons. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention and take on the responsibility for paying the patent prosecution expenses (OTC Procedure on Release of Rights). UM will retain a non-exclusive license to the invention for research and education purposes.
How are disputes handled?
OTC works closely with UM employees throughout the patent and licensing process to minimize misunderstandings and disagreements. Disputes are handled in accordance with the OTC Procedure on Dispute Resolution.
It depends. OTC will need to ask you some questions to determine the underlying facts. In some cases the invention may be owned by your previous employer, in other cases the invention may belong to you and other inventors. OTC will need to know if you plan to continue to work on the invention as a UM employee. If so, OTC may need to negotiate an agreement with your previous employer or the individual inventors.
Why do I need to list sources of funding on the Research Disclosure Form?
Research activities sponsored by companies, foundations, other universities and government agencies are covered by agreements that detail the ownership of intellectual property rights. OTC will need to review the agreements in order to decide how to protect the intellectual property rights. Regulations require federal government-funded inventions be reported to the federal agency that made the award. OTC reports such inventions to the funding agency and indicates the government’s rights on patent applications.
What rights does the Federal Government have in government-funded inventions?
It depends on the language in the sponsored research agreement as well as the scope of work. OTC will review the agreements and let you know if the government has rights to any inventions.
Who prepares and prosecutes patent applications for UM?
OTC coordinates preparation and prosecution of patents for the university. OTC works with state-approved outside patent attorneys, who are selected based of their technical expertise, to prepare and prosecute patent applications on behalf of UM. OTC manages the interface between the patent attorney and the inventor(s). Although OTC’s goal is to reduce the burden on UM employees, preparing a patent application and responding to questions from patent offices around the world requires a significant amount of work by the inventors. The inventors will typically be asked to prepare a draft manuscript in the format of a publication to supplement the information contained in the Research Disclosure Form. This document serves as the starting point for the outside patent counsel who will convert the document into the style and format of a patent application.
What is the cost of obtaining a patent and who pays for it?
The cost of obtaining a patent depends on many factors, including the complexity of the technology and whether patent protection is being sought internationally or only in the U.S. The costs for prosecuting a U.S. patent application typically range from $15,000 to $50,000. Costs for prosecuting international patent applications in developed countries can add another $100,000 to $200,000. Maintenance fees (paid after a patent issues) add several thousand dollars per patent. UM pays patent expenses for inventions owned by UM unless there is an agreement with a 3rd party to pay the expenses (e.g., in a typical license agreement the company pays patent expenses).
How long does it take to obtain a patent?
The time it takes to obtain a patent depends on a number of factors including the complexity of the technology and the number of researchers active in the same general field. On average you can expect it to take at least 3 to 4 years, often longer, to obtain a patent in the U.S. Patents may issue faster or slower in other countries depending on the technology.
What is public disclosure and what information can I disclose publicly without losing patent rights?
Public disclosure is the transfer of information about your invention, written or oral, into the public domain or to a party not obligated to keep the information confidential. You should not make any kind of public disclosure regarding your potential invention without consulting with OTC. In general, you lose the ability to obtain patent protection in most countries as soon as a public disclosure is made.
How do I protect intellectual property rights before public disclosure?
You should discuss your plans for a public disclosure with OTC. One option could be to disclose the information to the other party under the terms of a confidentiality agreement. OTC will negotiate and execute the appropriate agreement for you. Another option could be to work with OTC to file a provisional patent application before the disclosure. This step requires expenditures of significant UM resources and therefore must be discussed with OTC well in advance of a planned public disclosure.
Is a grant proposal to a federal agency considered a public disclosure?
A grant proposal is not considered public disclosure unless it is available to the general public for review. Since grant applications and reports to federal agencies may be available to the public through the Freedom of Information Act, you should work with a Program Development Specialist in the Office of Research and Sponsored Programs to make sure you follow the agency’s instructions on how to clearly mark confidential information.
What is a provisional patent application?
A provisional patent application is a patent application filed with the US Patent and Trademark Office (USPTO) that establishes an early effective filing date for a patent application. The USPTO does not examine the provisional application, and it remains pending for up to one year. At the end of the provisional period, UM must decide either to drop the provisional application or to convert it into a regular patent application. OTC will consult with the inventors and UM administrators as appropriate to make this decision on behalf of UM.
What happens if the university decides not to prosecute or maintain a patent?
Patents are expensive. UM may decide not to prosecute or maintain a patent for a variety of reasons. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention and take on the responsibility for paying the patent prosecution expenses (OTC Procedure on Release of Rights). UM will retain a non-exclusive license to the invention for research and education purposes.
How are disputes handled?
OTC works closely with UM employees throughout the patent and licensing process to minimize misunderstandings and disagreements. Disputes are handled in accordance with the OTC Procedure on Dispute Resolution.
It depends on the language in the sponsored research agreement as well as the scope of work. OTC will review the agreements and let you know if the government has rights to any inventions.
Who prepares and prosecutes patent applications for UM?
OTC coordinates preparation and prosecution of patents for the university. OTC works with state-approved outside patent attorneys, who are selected based of their technical expertise, to prepare and prosecute patent applications on behalf of UM. OTC manages the interface between the patent attorney and the inventor(s). Although OTC’s goal is to reduce the burden on UM employees, preparing a patent application and responding to questions from patent offices around the world requires a significant amount of work by the inventors. The inventors will typically be asked to prepare a draft manuscript in the format of a publication to supplement the information contained in the Research Disclosure Form. This document serves as the starting point for the outside patent counsel who will convert the document into the style and format of a patent application.
What is the cost of obtaining a patent and who pays for it?
The cost of obtaining a patent depends on many factors, including the complexity of the technology and whether patent protection is being sought internationally or only in the U.S. The costs for prosecuting a U.S. patent application typically range from $15,000 to $50,000. Costs for prosecuting international patent applications in developed countries can add another $100,000 to $200,000. Maintenance fees (paid after a patent issues) add several thousand dollars per patent. UM pays patent expenses for inventions owned by UM unless there is an agreement with a 3rd party to pay the expenses (e.g., in a typical license agreement the company pays patent expenses).
How long does it take to obtain a patent?
The time it takes to obtain a patent depends on a number of factors including the complexity of the technology and the number of researchers active in the same general field. On average you can expect it to take at least 3 to 4 years, often longer, to obtain a patent in the U.S. Patents may issue faster or slower in other countries depending on the technology.
What is public disclosure and what information can I disclose publicly without losing patent rights?
Public disclosure is the transfer of information about your invention, written or oral, into the public domain or to a party not obligated to keep the information confidential. You should not make any kind of public disclosure regarding your potential invention without consulting with OTC. In general, you lose the ability to obtain patent protection in most countries as soon as a public disclosure is made.
How do I protect intellectual property rights before public disclosure?
You should discuss your plans for a public disclosure with OTC. One option could be to disclose the information to the other party under the terms of a confidentiality agreement. OTC will negotiate and execute the appropriate agreement for you. Another option could be to work with OTC to file a provisional patent application before the disclosure. This step requires expenditures of significant UM resources and therefore must be discussed with OTC well in advance of a planned public disclosure.
Is a grant proposal to a federal agency considered a public disclosure?
A grant proposal is not considered public disclosure unless it is available to the general public for review. Since grant applications and reports to federal agencies may be available to the public through the Freedom of Information Act, you should work with a Program Development Specialist in the Office of Research and Sponsored Programs to make sure you follow the agency’s instructions on how to clearly mark confidential information.
What is a provisional patent application?
A provisional patent application is a patent application filed with the US Patent and Trademark Office (USPTO) that establishes an early effective filing date for a patent application. The USPTO does not examine the provisional application, and it remains pending for up to one year. At the end of the provisional period, UM must decide either to drop the provisional application or to convert it into a regular patent application. OTC will consult with the inventors and UM administrators as appropriate to make this decision on behalf of UM.
What happens if the university decides not to prosecute or maintain a patent?
Patents are expensive. UM may decide not to prosecute or maintain a patent for a variety of reasons. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention and take on the responsibility for paying the patent prosecution expenses (OTC Procedure on Release of Rights). UM will retain a non-exclusive license to the invention for research and education purposes.
How are disputes handled?
OTC works closely with UM employees throughout the patent and licensing process to minimize misunderstandings and disagreements. Disputes are handled in accordance with the OTC Procedure on Dispute Resolution.
The cost of obtaining a patent depends on many factors, including the complexity of the technology and whether patent protection is being sought internationally or only in the U.S. The costs for prosecuting a U.S. patent application typically range from $15,000 to $50,000. Costs for prosecuting international patent applications in developed countries can add another $100,000 to $200,000. Maintenance fees (paid after a patent issues) add several thousand dollars per patent. UM pays patent expenses for inventions owned by UM unless there is an agreement with a 3rd party to pay the expenses (e.g., in a typical license agreement the company pays patent expenses).
How long does it take to obtain a patent?
The time it takes to obtain a patent depends on a number of factors including the complexity of the technology and the number of researchers active in the same general field. On average you can expect it to take at least 3 to 4 years, often longer, to obtain a patent in the U.S. Patents may issue faster or slower in other countries depending on the technology.
What is public disclosure and what information can I disclose publicly without losing patent rights?
Public disclosure is the transfer of information about your invention, written or oral, into the public domain or to a party not obligated to keep the information confidential. You should not make any kind of public disclosure regarding your potential invention without consulting with OTC. In general, you lose the ability to obtain patent protection in most countries as soon as a public disclosure is made.
How do I protect intellectual property rights before public disclosure?
You should discuss your plans for a public disclosure with OTC. One option could be to disclose the information to the other party under the terms of a confidentiality agreement. OTC will negotiate and execute the appropriate agreement for you. Another option could be to work with OTC to file a provisional patent application before the disclosure. This step requires expenditures of significant UM resources and therefore must be discussed with OTC well in advance of a planned public disclosure.
Is a grant proposal to a federal agency considered a public disclosure?
A grant proposal is not considered public disclosure unless it is available to the general public for review. Since grant applications and reports to federal agencies may be available to the public through the Freedom of Information Act, you should work with a Program Development Specialist in the Office of Research and Sponsored Programs to make sure you follow the agency’s instructions on how to clearly mark confidential information.
What is a provisional patent application?
A provisional patent application is a patent application filed with the US Patent and Trademark Office (USPTO) that establishes an early effective filing date for a patent application. The USPTO does not examine the provisional application, and it remains pending for up to one year. At the end of the provisional period, UM must decide either to drop the provisional application or to convert it into a regular patent application. OTC will consult with the inventors and UM administrators as appropriate to make this decision on behalf of UM.
What happens if the university decides not to prosecute or maintain a patent?
Patents are expensive. UM may decide not to prosecute or maintain a patent for a variety of reasons. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention and take on the responsibility for paying the patent prosecution expenses (OTC Procedure on Release of Rights). UM will retain a non-exclusive license to the invention for research and education purposes.
How are disputes handled?
OTC works closely with UM employees throughout the patent and licensing process to minimize misunderstandings and disagreements. Disputes are handled in accordance with the OTC Procedure on Dispute Resolution.
Public disclosure is the transfer of information about your invention, written or oral, into the public domain or to a party not obligated to keep the information confidential. You should not make any kind of public disclosure regarding your potential invention without consulting with OTC. In general, you lose the ability to obtain patent protection in most countries as soon as a public disclosure is made.
How do I protect intellectual property rights before public disclosure?
You should discuss your plans for a public disclosure with OTC. One option could be to disclose the information to the other party under the terms of a confidentiality agreement. OTC will negotiate and execute the appropriate agreement for you. Another option could be to work with OTC to file a provisional patent application before the disclosure. This step requires expenditures of significant UM resources and therefore must be discussed with OTC well in advance of a planned public disclosure.
Is a grant proposal to a federal agency considered a public disclosure?
A grant proposal is not considered public disclosure unless it is available to the general public for review. Since grant applications and reports to federal agencies may be available to the public through the Freedom of Information Act, you should work with a Program Development Specialist in the Office of Research and Sponsored Programs to make sure you follow the agency’s instructions on how to clearly mark confidential information.
What is a provisional patent application?
A provisional patent application is a patent application filed with the US Patent and Trademark Office (USPTO) that establishes an early effective filing date for a patent application. The USPTO does not examine the provisional application, and it remains pending for up to one year. At the end of the provisional period, UM must decide either to drop the provisional application or to convert it into a regular patent application. OTC will consult with the inventors and UM administrators as appropriate to make this decision on behalf of UM.
What happens if the university decides not to prosecute or maintain a patent?
Patents are expensive. UM may decide not to prosecute or maintain a patent for a variety of reasons. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention and take on the responsibility for paying the patent prosecution expenses (OTC Procedure on Release of Rights). UM will retain a non-exclusive license to the invention for research and education purposes.
How are disputes handled?
OTC works closely with UM employees throughout the patent and licensing process to minimize misunderstandings and disagreements. Disputes are handled in accordance with the OTC Procedure on Dispute Resolution.
A grant proposal is not considered public disclosure unless it is available to the general public for review. Since grant applications and reports to federal agencies may be available to the public through the Freedom of Information Act, you should work with a Program Development Specialist in the Office of Research and Sponsored Programs to make sure you follow the agency’s instructions on how to clearly mark confidential information.
What is a provisional patent application?
A provisional patent application is a patent application filed with the US Patent and Trademark Office (USPTO) that establishes an early effective filing date for a patent application. The USPTO does not examine the provisional application, and it remains pending for up to one year. At the end of the provisional period, UM must decide either to drop the provisional application or to convert it into a regular patent application. OTC will consult with the inventors and UM administrators as appropriate to make this decision on behalf of UM.
What happens if the university decides not to prosecute or maintain a patent?
Patents are expensive. UM may decide not to prosecute or maintain a patent for a variety of reasons. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention and take on the responsibility for paying the patent prosecution expenses (OTC Procedure on Release of Rights). UM will retain a non-exclusive license to the invention for research and education purposes.
How are disputes handled?
OTC works closely with UM employees throughout the patent and licensing process to minimize misunderstandings and disagreements. Disputes are handled in accordance with the OTC Procedure on Dispute Resolution.
Patents are expensive. UM may decide not to prosecute or maintain a patent for a variety of reasons. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention and take on the responsibility for paying the patent prosecution expenses (OTC Procedure on Release of Rights). UM will retain a non-exclusive license to the invention for research and education purposes.
How are disputes handled?
OTC works closely with UM employees throughout the patent and licensing process to minimize misunderstandings and disagreements. Disputes are handled in accordance with the OTC Procedure on Dispute Resolution.
Marketing and Licensing of UM Inventions
How does the Office of Technology Commercialization (OTC) market technologies?
OTC maintains a list of technologies available for licensing on the OTC Website. OTC prepares 1- to 2-page non-confidential summaries of each technology for use in initial discussions with potential licensees. OTC also prepares brief confidential summaries and technical dossiers for review by potential licensees under a confidentiality agreement. Inventors will be asked to review these documents for accuracy.
Who negotiates and signs license agreements for UM?
The Vice Chancellor for Research and Sponsored Programs is authorized to sign license agreements. The principal investigator involved in the technology will be asked to acknowledge the agreement. OTC is responsible for negotiating and executing license agreements. An express license agreement for potential industrial partners is available.
How is income from licensing an invention distributed?
In accordance with the Patents and Inventions Policy – 2008, net licensing income for inventions disclosed to OTC under the current policy is distributed as follows:
- 30% to Inventor(s)
- 10% to support Inventor(s) research program
- 15% to the Inventor(s) Department or Center
- 5% to the Inventor(s) Dean’s Office
- 40% to the Office of Research and Sponsored Programs
Multiple inventors will share net licensing income equally unless a different distribution arrangement is agreed upon in writing by all the inventors (OTC Procedure on Determination of Inventors and Distribution of Licensing Income).
Distribution of proceeds derived from liquidating equity will be determined according to the specific circumstances of the equity arrangement (OTC Procedure on Distribution of Equity).
What happens if an inventor leaves UM?
If an inventor leaves UM, the inventor is still entitled to the inventor’s personal share of net license income disbursement. The inventor should provide new contact information to OTC. If the inventor intends to continue to work on the technology at his/her new place of employment, OTC may need to negotiate an agreement with the new employer.
How does the Office of Technology Commercialization (OTC) market technologies?
OTC maintains a list of technologies available for licensing on the OTC Website. OTC prepares 1- to 2-page non-confidential summaries of each technology for use in initial discussions with potential licensees. OTC also prepares brief confidential summaries and technical dossiers for review by potential licensees under a confidentiality agreement. Inventors will be asked to review these documents for accuracy.
Who negotiates and signs license agreements for UM?
The Vice Chancellor for Research and Sponsored Programs is authorized to sign license agreements. The principal investigator involved in the technology will be asked to acknowledge the agreement. OTC is responsible for negotiating and executing license agreements. An express license agreement for potential industrial partners is available.
How is income from licensing an invention distributed?
In accordance with the Patents and Inventions Policy – 2008, net licensing income for inventions disclosed to OTC under the current policy is distributed as follows:
- 30% to Inventor(s)
- 10% to support Inventor(s) research program
- 15% to the Inventor(s) Department or Center
- 5% to the Inventor(s) Dean’s Office
- 40% to the Office of Research and Sponsored Programs
Multiple inventors will share net licensing income equally unless a different distribution arrangement is agreed upon in writing by all the inventors (OTC Procedure on Determination of Inventors and Distribution of Licensing Income).
Distribution of proceeds derived from liquidating equity will be determined according to the specific circumstances of the equity arrangement (OTC Procedure on Distribution of Equity).
What happens if an inventor leaves UM?
If an inventor leaves UM, the inventor is still entitled to the inventor’s personal share of net license income disbursement. The inventor should provide new contact information to OTC. If the inventor intends to continue to work on the technology at his/her new place of employment, OTC may need to negotiate an agreement with the new employer.
OTC maintains a list of technologies available for licensing on the OTC Website. OTC prepares 1- to 2-page non-confidential summaries of each technology for use in initial discussions with potential licensees. OTC also prepares brief confidential summaries and technical dossiers for review by potential licensees under a confidentiality agreement. Inventors will be asked to review these documents for accuracy.
Who negotiates and signs license agreements for UM?
The Vice Chancellor for Research and Sponsored Programs is authorized to sign license agreements. The principal investigator involved in the technology will be asked to acknowledge the agreement. OTC is responsible for negotiating and executing license agreements. An express license agreement for potential industrial partners is available.
How is income from licensing an invention distributed?
In accordance with the Patents and Inventions Policy – 2008, net licensing income for inventions disclosed to OTC under the current policy is distributed as follows:
- 30% to Inventor(s)
- 10% to support Inventor(s) research program
- 15% to the Inventor(s) Department or Center
- 5% to the Inventor(s) Dean’s Office
- 40% to the Office of Research and Sponsored Programs
Multiple inventors will share net licensing income equally unless a different distribution arrangement is agreed upon in writing by all the inventors (OTC Procedure on Determination of Inventors and Distribution of Licensing Income).
Distribution of proceeds derived from liquidating equity will be determined according to the specific circumstances of the equity arrangement (OTC Procedure on Distribution of Equity).
What happens if an inventor leaves UM?
If an inventor leaves UM, the inventor is still entitled to the inventor’s personal share of net license income disbursement. The inventor should provide new contact information to OTC. If the inventor intends to continue to work on the technology at his/her new place of employment, OTC may need to negotiate an agreement with the new employer.
In accordance with the Patents and Inventions Policy – 2008, net licensing income for inventions disclosed to OTC under the current policy is distributed as follows:
- 30% to Inventor(s)
- 10% to support Inventor(s) research program
- 15% to the Inventor(s) Department or Center
- 5% to the Inventor(s) Dean’s Office
- 40% to the Office of Research and Sponsored Programs
Multiple inventors will share net licensing income equally unless a different distribution arrangement is agreed upon in writing by all the inventors (OTC Procedure on Determination of Inventors and Distribution of Licensing Income).
Distribution of proceeds derived from liquidating equity will be determined according to the specific circumstances of the equity arrangement (OTC Procedure on Distribution of Equity).
What happens if an inventor leaves UM?
If an inventor leaves UM, the inventor is still entitled to the inventor’s personal share of net license income disbursement. The inventor should provide new contact information to OTC. If the inventor intends to continue to work on the technology at his/her new place of employment, OTC may need to negotiate an agreement with the new employer.
Material Transfer Agreements
What should I do if I want to send/receive research materials to/from researchers outside UM?
Transfer of most research materials is handled under the terms of a Material Transfer Agreement (“MTA”).
The University of Mississippi Office of Sponsored Research Administration (ORSP-SPA) manages MTAs.
Please see the following link to complete your request:
Sponsored Programs Action Notification (SPAN) Form.
Instructions for requesting NDAs and MTAs (incoming or outgoing) in the SPAN form.
Under the following fields please select:
- Sponsored Programs Action Type
- Select: Other Sponsored Program Action
- Is this a grant, contract, or other agreement?
- Select: Contract or Other Agreement
- Type of Contract or Other Agreement
- Select: Nondisclosure Agreement or
- Select: Material Transfer Agreement or
- Select: Material Transfer Research Agreement
- File Upload
- If you have been sent a draft agreement, please submit the document here
- Sponsored Research Administrator
- Select: Norman Morris
Why do I need a Material Transfer Agreement?
A Material Transfer Agreement (MTA) is a legal contract that designates the terms to be followed for the transfer of experimental materials (biological, mechanical, electronic, etc.) coming into or going out of UM. All MTAs for UM are negotiated through the ORSP Office of Technology Commercialization (OTC Website). There are several reasons why MTAs are needed, including:
Liability – The Vice Chancellor for Research and Sponsored Programs is UM’s signatory agent for research-related agreements. If a UM employee, on his or her own, makes arrangements with a third party to receive or send research materials (with or without a written agreement) that individual may be held personally liable for damages.
Benefit sharing with countries of origin – UM has an extensive number of international collaborations, often involving collection of another country’s natural resources for shipment to UM researchers. It is imperative that government officials who have authority over the protection of their country’s natural resources agree that the materials may be collected and shipped to UM for research purposes. In addition, the MTA contains benefit-sharing provisions in the event UM is able to commercialize a technology originating from research on the materials.
Required for licensing – Companies will not license a UM technology without assurances that UM has clear ownership rights to the intellectual property.
UM’s ownership rights – An MTA protects UM’s existing intellectual property rights and details how any new intellectual property created with the transferred materials will be handled.
Research plan – An MTA includes a plan that specifies what each party will do and sets up parameters for use of the materials by both parties to ensure that they are not used for any other purpose outside the scope of the agreement.
Publication – The terms by which researchers may publish results of testing on the materials are contained in the MTA. If proper agreements are not in place to clearly define the parameters for publication, your freedom to publish may be limited.
Confidentiality – An MTA contains confidentiality provisions relevant to a project. Disclosure of a patentable idea without a proper confidentiality agreement can negate patent filing rights.
Patent law – If the research collaboration involving transferred materials results in an invention owned jointly by UM and the outside party, U.S. patent law requires an agreement to be in place tying the co-owners together.
What should I do if I want to send/receive research materials to/from researchers outside UM?
Transfer of most research materials is handled under the terms of a Material Transfer Agreement (“MTA”).
The University of Mississippi Office of Sponsored Research Administration (ORSP-SPA) manages MTAs.
Please see the following link to complete your request:
Sponsored Programs Action Notification (SPAN) Form.
Instructions for requesting NDAs and MTAs (incoming or outgoing) in the SPAN form.
Under the following fields please select:
- Sponsored Programs Action Type
- Select: Other Sponsored Program Action
- Is this a grant, contract, or other agreement?
- Select: Contract or Other Agreement
- Type of Contract or Other Agreement
- Select: Nondisclosure Agreement or
- Select: Material Transfer Agreement or
- Select: Material Transfer Research Agreement
- File Upload
- If you have been sent a draft agreement, please submit the document here
- Sponsored Research Administrator
- Select: Norman Morris
Why do I need a Material Transfer Agreement?
A Material Transfer Agreement (MTA) is a legal contract that designates the terms to be followed for the transfer of experimental materials (biological, mechanical, electronic, etc.) coming into or going out of UM. All MTAs for UM are negotiated through the ORSP Office of Technology Commercialization (OTC Website). There are several reasons why MTAs are needed, including:
Liability – The Vice Chancellor for Research and Sponsored Programs is UM’s signatory agent for research-related agreements. If a UM employee, on his or her own, makes arrangements with a third party to receive or send research materials (with or without a written agreement) that individual may be held personally liable for damages.
Benefit sharing with countries of origin – UM has an extensive number of international collaborations, often involving collection of another country’s natural resources for shipment to UM researchers. It is imperative that government officials who have authority over the protection of their country’s natural resources agree that the materials may be collected and shipped to UM for research purposes. In addition, the MTA contains benefit-sharing provisions in the event UM is able to commercialize a technology originating from research on the materials.
Required for licensing – Companies will not license a UM technology without assurances that UM has clear ownership rights to the intellectual property.
UM’s ownership rights – An MTA protects UM’s existing intellectual property rights and details how any new intellectual property created with the transferred materials will be handled.
Research plan – An MTA includes a plan that specifies what each party will do and sets up parameters for use of the materials by both parties to ensure that they are not used for any other purpose outside the scope of the agreement.
Publication – The terms by which researchers may publish results of testing on the materials are contained in the MTA. If proper agreements are not in place to clearly define the parameters for publication, your freedom to publish may be limited.
Confidentiality – An MTA contains confidentiality provisions relevant to a project. Disclosure of a patentable idea without a proper confidentiality agreement can negate patent filing rights.
Patent law – If the research collaboration involving transferred materials results in an invention owned jointly by UM and the outside party, U.S. patent law requires an agreement to be in place tying the co-owners together.
Transfer of most research materials is handled under the terms of a Material Transfer Agreement (“MTA”).
The University of Mississippi Office of Sponsored Research Administration (ORSP-SPA) manages MTAs.
Please see the following link to complete your request:
Sponsored Programs Action Notification (SPAN) Form.
Instructions for requesting NDAs and MTAs (incoming or outgoing) in the SPAN form.
Under the following fields please select:
- Sponsored Programs Action Type
- Select: Other Sponsored Program Action
- Is this a grant, contract, or other agreement?
- Select: Contract or Other Agreement
- Type of Contract or Other Agreement
- Select: Nondisclosure Agreement or
- Select: Material Transfer Agreement or
- Select: Material Transfer Research Agreement
- File Upload
- If you have been sent a draft agreement, please submit the document here
- Sponsored Research Administrator
- Select: Norman Morris
Why do I need a Material Transfer Agreement?
A Material Transfer Agreement (MTA) is a legal contract that designates the terms to be followed for the transfer of experimental materials (biological, mechanical, electronic, etc.) coming into or going out of UM. All MTAs for UM are negotiated through the ORSP Office of Technology Commercialization (OTC Website). There are several reasons why MTAs are needed, including:
Liability – The Vice Chancellor for Research and Sponsored Programs is UM’s signatory agent for research-related agreements. If a UM employee, on his or her own, makes arrangements with a third party to receive or send research materials (with or without a written agreement) that individual may be held personally liable for damages.
Benefit sharing with countries of origin – UM has an extensive number of international collaborations, often involving collection of another country’s natural resources for shipment to UM researchers. It is imperative that government officials who have authority over the protection of their country’s natural resources agree that the materials may be collected and shipped to UM for research purposes. In addition, the MTA contains benefit-sharing provisions in the event UM is able to commercialize a technology originating from research on the materials.
Required for licensing – Companies will not license a UM technology without assurances that UM has clear ownership rights to the intellectual property.
UM’s ownership rights – An MTA protects UM’s existing intellectual property rights and details how any new intellectual property created with the transferred materials will be handled.
Research plan – An MTA includes a plan that specifies what each party will do and sets up parameters for use of the materials by both parties to ensure that they are not used for any other purpose outside the scope of the agreement.
Publication – The terms by which researchers may publish results of testing on the materials are contained in the MTA. If proper agreements are not in place to clearly define the parameters for publication, your freedom to publish may be limited.
Confidentiality – An MTA contains confidentiality provisions relevant to a project. Disclosure of a patentable idea without a proper confidentiality agreement can negate patent filing rights.
Patent law – If the research collaboration involving transferred materials results in an invention owned jointly by UM and the outside party, U.S. patent law requires an agreement to be in place tying the co-owners together.
Confidentiality Agreements
What should I do if I want to discuss confidential information with someone outside the university?
The University of Mississippi Office of Sponsored Research Administration (ORSP-SPA) manages NDAs/CDAs.
Please see the following link to complete your request:
Sponsored Programs Action Notification (SPAN) Form.
Instructions for requesting NDAs and MTAs (incoming or outgoing) in the SPAN form.
Under the following fields please select:
- Sponsored Programs Action Type
- Select: Other Sponsored Program Action
- Is this a grant, contract, or other agreement?
- Select: Contract or Other Agreement
- Type of Contract or Other Agreement
- Select: Nondisclosure Agreement or
- Select: Material Transfer Agreement or
- Select: Material Transfer Research Agreement
- File Upload
- If you have been sent a draft agreement, please submit the document here
- Sponsored Research Administrator
- Select: Norman Morris
What should I do if I am asked by a 3rd party to sign a confidentiality agreement?
You should not sign a confidentiality agreement presented to you by a 3rd party. Only the Vice Chancellor for Research and Sponsored Programs is authorized to sign confidentiality agreements for UM. Confidentiality agreements may contain language that puts your personal assets at risk if you sign as an individual. You should refer anyone asking you to sign a confidentiality agreement as a UM employee to the Office of Technology Commercialization.
What should I do if I want to discuss confidential information with someone outside the university?
The University of Mississippi Office of Sponsored Research Administration (ORSP-SPA) manages NDAs/CDAs.
Please see the following link to complete your request:
Sponsored Programs Action Notification (SPAN) Form.
Instructions for requesting NDAs and MTAs (incoming or outgoing) in the SPAN form.
Under the following fields please select:
- Sponsored Programs Action Type
- Select: Other Sponsored Program Action
- Is this a grant, contract, or other agreement?
- Select: Contract or Other Agreement
- Type of Contract or Other Agreement
- Select: Nondisclosure Agreement or
- Select: Material Transfer Agreement or
- Select: Material Transfer Research Agreement
- File Upload
- If you have been sent a draft agreement, please submit the document here
- Sponsored Research Administrator
- Select: Norman Morris
What should I do if I am asked by a 3rd party to sign a confidentiality agreement?
You should not sign a confidentiality agreement presented to you by a 3rd party. Only the Vice Chancellor for Research and Sponsored Programs is authorized to sign confidentiality agreements for UM. Confidentiality agreements may contain language that puts your personal assets at risk if you sign as an individual. You should refer anyone asking you to sign a confidentiality agreement as a UM employee to the Office of Technology Commercialization.
The University of Mississippi Office of Sponsored Research Administration (ORSP-SPA) manages NDAs/CDAs.
Please see the following link to complete your request:
Sponsored Programs Action Notification (SPAN) Form.
Instructions for requesting NDAs and MTAs (incoming or outgoing) in the SPAN form.
Under the following fields please select:
- Sponsored Programs Action Type
- Select: Other Sponsored Program Action
- Is this a grant, contract, or other agreement?
- Select: Contract or Other Agreement
- Type of Contract or Other Agreement
- Select: Nondisclosure Agreement or
- Select: Material Transfer Agreement or
- Select: Material Transfer Research Agreement
- File Upload
- If you have been sent a draft agreement, please submit the document here
- Sponsored Research Administrator
- Select: Norman Morris
What should I do if I am asked by a 3rd party to sign a confidentiality agreement?
You should not sign a confidentiality agreement presented to you by a 3rd party. Only the Vice Chancellor for Research and Sponsored Programs is authorized to sign confidentiality agreements for UM. Confidentiality agreements may contain language that puts your personal assets at risk if you sign as an individual. You should refer anyone asking you to sign a confidentiality agreement as a UM employee to the Office of Technology Commercialization.
Copyright
What is a copyright?
A copyright is the grant of protection under U.S. laws to the authors of ‘original works,’ including, for example, literary, dramatic, musical, artistic, and architectural works, and is available for both published and unpublished works. A copyright owner has the exclusive right to authorize users to (among other things): reproduce the work, create derivative works, distribute copies of the work, perform the copyrighted work publicly, and display the work publicly. Software may be copyrighted and/or patented depending on the circumstances.
Do you have to apply to the government for copyright protection?
No. Copyright protection automatically exists at the moment of creation. A work is created when it is fixed in a tangible form. It is not necessary to register the copyright with the U.S. Copyright Office, although registration of the copyright is useful in certain litigation situations. Contact the Office of Technology Commercialization with copyright questions.
Who owns a copyright at UM?
It is traditional at UM and other universities, for copyrightable works of a faculty member to be deemed the property of the creator, who is considered to be entitled to determine how the works are to be disseminated and to keep any income they produce. This tradition reflects UM’s commitment to encouraging members of the UM community to write and to publish what they wish. In this spirit, UM created a Copyright Policy (Policy RSP.TM.400.001) under which UM disclaims any ownership interest in the copyright of works created by faculty, staff, postdoctoral fellows and postdoctoral associates and students, whether in traditional or nontraditional forms, except if the work is defined under the Copyright Policy (Policy RSP.TM.400.001) as being a supervised work or a supported work. In the case of externally sponsored works, copyright ownership will be determined by the applicable terms of the funding agreement.
How are copyright disputes at UM managed?
The University Copyright Committee considers and investigates disputes among administrators, faculty, or staff and recommends appropriate solutions to the Provost. The Committee’s responsibilities include, but are not limited to, disputes concerning:
- Whether Substantial Use of University Resources has occurred;
- Ownership of works which may be supervised, supported or externally sponsored works;
- Distribution of royalties, including determination of the amount of reimbursement to the university in cases of Substantial Use.
What is a copyright?
A copyright is the grant of protection under U.S. laws to the authors of ‘original works,’ including, for example, literary, dramatic, musical, artistic, and architectural works, and is available for both published and unpublished works. A copyright owner has the exclusive right to authorize users to (among other things): reproduce the work, create derivative works, distribute copies of the work, perform the copyrighted work publicly, and display the work publicly. Software may be copyrighted and/or patented depending on the circumstances.
Do you have to apply to the government for copyright protection?
No. Copyright protection automatically exists at the moment of creation. A work is created when it is fixed in a tangible form. It is not necessary to register the copyright with the U.S. Copyright Office, although registration of the copyright is useful in certain litigation situations. Contact the Office of Technology Commercialization with copyright questions.
Who owns a copyright at UM?
It is traditional at UM and other universities, for copyrightable works of a faculty member to be deemed the property of the creator, who is considered to be entitled to determine how the works are to be disseminated and to keep any income they produce. This tradition reflects UM’s commitment to encouraging members of the UM community to write and to publish what they wish. In this spirit, UM created a Copyright Policy (Policy RSP.TM.400.001) under which UM disclaims any ownership interest in the copyright of works created by faculty, staff, postdoctoral fellows and postdoctoral associates and students, whether in traditional or nontraditional forms, except if the work is defined under the Copyright Policy (Policy RSP.TM.400.001) as being a supervised work or a supported work. In the case of externally sponsored works, copyright ownership will be determined by the applicable terms of the funding agreement.
How are copyright disputes at UM managed?
The University Copyright Committee considers and investigates disputes among administrators, faculty, or staff and recommends appropriate solutions to the Provost. The Committee’s responsibilities include, but are not limited to, disputes concerning:
- Whether Substantial Use of University Resources has occurred;
- Ownership of works which may be supervised, supported or externally sponsored works;
- Distribution of royalties, including determination of the amount of reimbursement to the university in cases of Substantial Use.
A copyright is the grant of protection under U.S. laws to the authors of ‘original works,’ including, for example, literary, dramatic, musical, artistic, and architectural works, and is available for both published and unpublished works. A copyright owner has the exclusive right to authorize users to (among other things): reproduce the work, create derivative works, distribute copies of the work, perform the copyrighted work publicly, and display the work publicly. Software may be copyrighted and/or patented depending on the circumstances.
Do you have to apply to the government for copyright protection?
No. Copyright protection automatically exists at the moment of creation. A work is created when it is fixed in a tangible form. It is not necessary to register the copyright with the U.S. Copyright Office, although registration of the copyright is useful in certain litigation situations. Contact the Office of Technology Commercialization with copyright questions.
Who owns a copyright at UM?
It is traditional at UM and other universities, for copyrightable works of a faculty member to be deemed the property of the creator, who is considered to be entitled to determine how the works are to be disseminated and to keep any income they produce. This tradition reflects UM’s commitment to encouraging members of the UM community to write and to publish what they wish. In this spirit, UM created a Copyright Policy (Policy RSP.TM.400.001) under which UM disclaims any ownership interest in the copyright of works created by faculty, staff, postdoctoral fellows and postdoctoral associates and students, whether in traditional or nontraditional forms, except if the work is defined under the Copyright Policy (Policy RSP.TM.400.001) as being a supervised work or a supported work. In the case of externally sponsored works, copyright ownership will be determined by the applicable terms of the funding agreement.
How are copyright disputes at UM managed?
The University Copyright Committee considers and investigates disputes among administrators, faculty, or staff and recommends appropriate solutions to the Provost. The Committee’s responsibilities include, but are not limited to, disputes concerning:
- Whether Substantial Use of University Resources has occurred;
- Ownership of works which may be supervised, supported or externally sponsored works;
- Distribution of royalties, including determination of the amount of reimbursement to the university in cases of Substantial Use.
It is traditional at UM and other universities, for copyrightable works of a faculty member to be deemed the property of the creator, who is considered to be entitled to determine how the works are to be disseminated and to keep any income they produce. This tradition reflects UM’s commitment to encouraging members of the UM community to write and to publish what they wish. In this spirit, UM created a Copyright Policy (Policy RSP.TM.400.001) under which UM disclaims any ownership interest in the copyright of works created by faculty, staff, postdoctoral fellows and postdoctoral associates and students, whether in traditional or nontraditional forms, except if the work is defined under the Copyright Policy (Policy RSP.TM.400.001) as being a supervised work or a supported work. In the case of externally sponsored works, copyright ownership will be determined by the applicable terms of the funding agreement.
How are copyright disputes at UM managed?
The University Copyright Committee considers and investigates disputes among administrators, faculty, or staff and recommends appropriate solutions to the Provost. The Committee’s responsibilities include, but are not limited to, disputes concerning:
- Whether Substantial Use of University Resources has occurred;
- Ownership of works which may be supervised, supported or externally sponsored works;
- Distribution of royalties, including determination of the amount of reimbursement to the university in cases of Substantial Use.
Employee Owned Startup Companies
What should I do if I want to start a company to develop a UM technology?
As part of its mission to commercialize UM technologies, OTC will discuss the possibility of forming a startup company with inventors. Some technologies are appropriate for a startup; others are not. The first step in starting a technology based company is meeting with OTC to discuss your business idea. OTC will discuss potential conflict of interest issues and outline the technology licensing process. A key consideration in the formation of a company by a UM employee is the potential for a conflict of interest. Interested individuals should discuss their company plans with OTC early in the process and should review the following policies:
The University of Mississippi Objectivity in Research Policy (RSP.VC.100.002)
Employee Conflict of Interest Policy (HRO.EM.300.300)
Non-Institutional Employment Practices (Outside Employment) (HRO.EM.300.310)
Use of University Facilities for a Private Enterprise (HRO.EM.300.370)
Faculty Consulting Policy (ACA.FG.300.005)
The state of Mississippi is supportive of the creation of companies based on technologies discovered and/or developed by employees of Mississippi universities. The Mississippi University Research Authority Act (“MURA”, Mississippi Code 37-147-3) addresses the potential for a conflict of interest that occurs when a UM employee wishes to have a material financial interest in a private entity that provides or receives equipment, material, supplies or services in connection with UM for the purpose of facilitating the transfer of technology developed by the UM employee to commercial enterprises for economic development.
OTC will introduce you to resources on and off campus that provide services to startup companies. At the appropriate time OTC will help you complete a MURA Form, explain the MURA approval process and prepare appropriate documents to support your licensing of UM technologies.
What service providers are available to UM employee started companies?
The following resources are available to help UM employee started companies:
Facilities:
Services:
What should I do if I want to start a company to develop a UM technology?
As part of its mission to commercialize UM technologies, OTC will discuss the possibility of forming a startup company with inventors. Some technologies are appropriate for a startup; others are not. The first step in starting a technology based company is meeting with OTC to discuss your business idea. OTC will discuss potential conflict of interest issues and outline the technology licensing process. A key consideration in the formation of a company by a UM employee is the potential for a conflict of interest. Interested individuals should discuss their company plans with OTC early in the process and should review the following policies:
The University of Mississippi Objectivity in Research Policy (RSP.VC.100.002)
Employee Conflict of Interest Policy (HRO.EM.300.300)
Non-Institutional Employment Practices (Outside Employment) (HRO.EM.300.310)
Use of University Facilities for a Private Enterprise (HRO.EM.300.370)
Faculty Consulting Policy (ACA.FG.300.005)
The state of Mississippi is supportive of the creation of companies based on technologies discovered and/or developed by employees of Mississippi universities. The Mississippi University Research Authority Act (“MURA”, Mississippi Code 37-147-3) addresses the potential for a conflict of interest that occurs when a UM employee wishes to have a material financial interest in a private entity that provides or receives equipment, material, supplies or services in connection with UM for the purpose of facilitating the transfer of technology developed by the UM employee to commercial enterprises for economic development.
OTC will introduce you to resources on and off campus that provide services to startup companies. At the appropriate time OTC will help you complete a MURA Form, explain the MURA approval process and prepare appropriate documents to support your licensing of UM technologies.
What service providers are available to UM employee started companies?
The following resources are available to help UM employee started companies:
Facilities:
Services:
As part of its mission to commercialize UM technologies, OTC will discuss the possibility of forming a startup company with inventors. Some technologies are appropriate for a startup; others are not. The first step in starting a technology based company is meeting with OTC to discuss your business idea. OTC will discuss potential conflict of interest issues and outline the technology licensing process. A key consideration in the formation of a company by a UM employee is the potential for a conflict of interest. Interested individuals should discuss their company plans with OTC early in the process and should review the following policies:
The University of Mississippi Objectivity in Research Policy (RSP.VC.100.002)
Employee Conflict of Interest Policy (HRO.EM.300.300)
Non-Institutional Employment Practices (Outside Employment) (HRO.EM.300.310)
Use of University Facilities for a Private Enterprise (HRO.EM.300.370)
Faculty Consulting Policy (ACA.FG.300.005)
The state of Mississippi is supportive of the creation of companies based on technologies discovered and/or developed by employees of Mississippi universities. The Mississippi University Research Authority Act (“MURA”, Mississippi Code 37-147-3) addresses the potential for a conflict of interest that occurs when a UM employee wishes to have a material financial interest in a private entity that provides or receives equipment, material, supplies or services in connection with UM for the purpose of facilitating the transfer of technology developed by the UM employee to commercial enterprises for economic development.
OTC will introduce you to resources on and off campus that provide services to startup companies. At the appropriate time OTC will help you complete a MURA Form, explain the MURA approval process and prepare appropriate documents to support your licensing of UM technologies.
What service providers are available to UM employee started companies?
The following resources are available to help UM employee started companies:
Facilities:
Services: