The Office of Research and Projects (ORP) works with faculty and staff to protect their intellectual property and to transfer new technologies to the marketplace. ORP servcies include:
Intellectual property refers to certain tangible and intangible products of University research and other activities—principally copyrightable works and patentable ideas or products. Patentable works include, but are not limited to, inventions/ products, processes, discoveries, materials, plant varieties, and sometimes computer software. Copyrightable works include, but are not limited to, writings of all kinds (published or unpublished), classroom materials, educational courseware, television/radio programs, films and videos, musical compositions, dramatic works, and artwork. See the full definition of intellectual property in SIUE's Intellectual Property Policy. See the sections below for a discussion of ownership and disclosure of intellectual property, including the difference between public and university disclosure and why timing can be crucial.
SIUE's Intellectual Property Policy governs the disclosure and disposition of intellectual property generated with University support. The Office of Research and Projects (ORP) works with University faculty and staff to protect their intellectual property and to transfer new technologies to the marketplace.
Technology transfer refers to the process of commercializing the products of research for economic and social benefit.
The university does not claim ownership of copyrightable works by faculty or staff, except in the following cases:
If these cases do not apply, and if you did not produce the work as part of an agreement with a third party as a work made for hire, then you own the copyright.
Copyright is an automatic consequence of authorship or artistic production. A work need not be registered with the U.S. Copyright Office or even carry the copyright mark to be considered copyrighted. Since copyright is automatic, why register your copyrights with the Copyright Office? Having the copyright registered, which is a simple process, puts you in a much stronger position to defend against copyright infringement.
Contact the Associate Dean for Research in the Office of Research and Projects, if you have questions about copyright or copyright registration.
Potentially patentable intellectual property created with university support must be disclosed to SIUE (see following section). Even if you're not sure how patentable the intellectual property is, it's best to disclose it anyway.
Timing is key when it comes to protecting potential patent rights. To preserve U.S. patent rights, a patent application must be filed within one year of any public disclosure of the patentable idea. To preserve international patent rights, the patent application must be filed before any public disclosure has occurred. Filing for a patent can be a time-consuming and expensive proposition. Research must establish the patentability and potential marketability of the invention, and a detailed patent application must be filed.
Consequently, we urge you to disclose potentially patentable inventions to the university in a timely way. See the following section. (Disclosure to the university is not considered public disclosure.) We also urge you to consult ORDA's technology transfer specialist before presenting the relevant work at a conference, submitting an article to a journal, or speaking with journalists. Such things are considered public disclosure, and they usually "start the clock running" on patent rights.
If you think your research may lead to potentially patentable results, contact ORDA even if you are not yet at the disclosure stage. We can advise you as to how publication or other public disclosures could affect your intellectual property rights. There also are specific steps you should take to safeguard and preserve your data. See the links to recordkeeping advice in Managing Your Intellectual Property.
You must disclose:
These types of intellectual property belong jointly to the university and the creator (unless a grant agreement stipulates otherwise), but the university controls their disposition. See the university's Intellectual Property Policy for full details.
Grants and contracts: The terms of most sponsored project award agreements set forth the ownership of any intellectual property arising from the grant/contract project and the subsequent obligations of the university and the funding agency. If the agreement doesn't address this issue, any intellectual property arising from the grant or contract is subject to university policy. You must disclose any intellectual property ensuing from a sponsored project that either university policy or the sponsored project agreement requires to be disclosed.
Disclosures are made in writing to the Associate Dean for Research in the Office of Research and Projects. Disclosure forms are available online, and should be filled out, signed and dated by the inventor(s), and forwarded to ORP in Rendlemann Hall. Call or contact the Associate Dean for Research (618) 650-2171, or refer to the university's Intellectual Property Policy for more information.
Upon receipt, your Invention Disclosure is assigned an ID number and prepared for Initial Review. Together with the Inventor, the Associate Dean for Research will prepare materials for an Initial Review which includes concise information about the invention's stage of development, novelty, market potential, possible licensees, and inventor intentions. The Initial Review and Invention Disclosure are forwarded to the University Intellectual Property Committee (UIPC).
The Inventor presents the invention to the UIPC with respect to the discovery/invention's merit and potential importance, commercial possibilities, and so forth. The UIPC may recommend 1) to send the invention back to the lab for more research/data, 2) to release the invention to the Inventor, 3) to license it to a research sponsor for development, or 4) for SIUE to pursue a patent. This process should take no longer than four months from the submission of the ID to ORP, depending on ORP and Inventor workload.
The committee's recommendation as to the disposition of the intellectual property is reviewed by the Associate Provost for Research, who makes the final decision in the matter.
Filing for a patent can be a time-consuming and expensive proposition. Research must establish the patentability and potential marketability of the invention, and a detailed patent application must be filed. The Inventor and the Associate Dean for Research work closely with a patent law firm to file all the necessary documents in a timely manner, and in order to optimize the patent position. This process can take as long as five years or more.
Taking into consideration the Assessment and IP development, marketing will be undertaken to result in licensing either to 1) industry or 2) a start-up company. Assistance at this stage is provided by the ORP as appropriate. This process can take from months to years, depending on the invention and the stage of development of the technology and market. ORP will assist you with finding prospective licensees for your new technology and negotiating licensing agreements with industry.
Licensing strategy performance is monitored by ORP for adherence to minimum license payments or performance requirements. Non-performing licenses are re-evaluated as necessary. Inventor may serve in consulting role to licensee, or as equity holder or manager in a spin-off, or simply collect royalties. Proceeds are distributed to the inventor, SIUE and the Inventor's college or department, according to the SIUE Intellectual Property Policy.
Who benefits financially when the university pursues a patent or licensing agreement, or when the university retains some stake in a copyright? What is your share of the eventual profits?
If rights are released to you as the creator and you choose to pursue a patent or or otherwise commercialize your work, you will bear all the costs and reap all the profits.
If SIUE decides to pursue the development of the intellectual property, it is agreeing to devote resources to pursue an appropriate commercialization strategy. ORP will work with you and with patent attorneys to protect your intellectual property and/or identify potential industry licensees.
Before profits are distributed, the university deducts its expenditures in patenting, licensing, and/or marketing the product. The university's Intellectual Property Policy establishes a suggested sliding scale for splitting net income between the inventor/author ("creator") and the university. However, each agreement is negotiated individually and may vary.
The public also benefits financially, and in other ways, from the technology transfer process. As a public institution, SIUE has an obligation to see that research fulfills its promise of helping society and fueling the economy.
Adapted, by permission, from the following FAQ website of Southern Illinois University Carbondale (2010):