Commercial Ventures and Intellectual Property


Frequently Asked Questions

1. Why should I disclose my invention to UMB?

Answer:
According to UMB policy, NIH policy and federal regulation (45 CFR Part 7.1), an invention should be patented when doing so would be the most efficient means to disseminate technology for the public benefit. Generally, a patent is most useful when resources from the private sector are needed for further research and development; such as when the utility of the invention is a potential diagnostic or therapeutic product. Patents and patent applications may give commercial partners the incentive to license or further develop the technologies through Collaborative Research and Development Agreements (CRADAs), Sponsored Research Agreements or other funding vehicles.

All University of Maryland, Baltimore (UMB) faculty are subject to the University of Maryland System (USM) and UMB policies on patents. According to these policies, the University has an interest in all inventions of personnel which are conceived or first actually reduced to practice as part of or as a result of a University administered program of research; activities within the scope of a personÍs employment by the University; or activities involving the use, to a substantial degree, of University time, facilities, or materials or of University information not available to the public. Personnel who, either alone or in association with others, make an invention to which the University may have an interest shall disclose to the University such inventions reasonably promptly. Inventions and new matter relating to previously disclosed inventions, and improvements that you have made and not yet disclosed to this office should be disclosed promptly.

 2. How do I know if I have an invention?

Answer:
It can be difficult to know when you have made a patentable invention. The U.S. patent law defines patentable inventions as many new and useful process, machine, manufacture or composition of matter, or any new or useful improvements thereof. (35 U.S.C Û101) A patentable invention must meet the requirements of novelty, utility, and non-obviousness. (35 U.S.C. ÛÛ100-103) Each element must be proven in very specific ways before a patent will be granted. Also there are other requirements for a patent to issue. You should contact the Commercial Ventures and Intellectual Property, Office of Research and Development as soon as you think you have a patentable invention. We can help you make an initial assessment of whether or not you have actually made a patentable invention. You must submit a UMB Invention Report (IR) for each invention you make. If you have a manuscript, grant application, or other type of document that describes your research, you should attach it to the IR to assist the  Commercial Ventures and Intellectual Property staff in evaluating your invention.

3. What names should I include as inventors on the UMB Invention Report (IR)?

Answer:
Accurately identifying all the inventor(s) is a prerequisite for a valid U.S. patent. The patent attorney who prepares the application can assist with this determination. Any person who actually intellectually contributed to the conception of an inventive idea and/or the reduction to practice of the invention (taking the invention from the eureka stage to actuality stage) must be included as an inventor. A person who merely carried out the inventor's instructions during the reduction to practice stage, or acted only as a pair of hands does not qualify as an inventor. Similarly, the inventor's supervisor (e.g., lab director) does not become a co-inventor merely because he or she is responsible for the lab.

4. When should I report my invention?

Answer:
In order to protect both U.S. and foreign patent rights, inventions should be reported as soon as they have been made, and before they are publicly disclosed (public disclosure is discussed below). Although U.S. law provides a one-year grace period between public disclosure and the filing of a patent application to preserve U.S. patent rights, most foreign patent rights are lost immediately upon public disclosure, unless a patent application has already been filed. Failure to report your invention prior to public disclosure, or submitting your IR only immediately before disclosure, may result in loss of intellectual property rights. Please allow sufficient time for the invention to be reviewed by the Commercial Ventures and Intellectual staff and for a patent application to be filed with the Patent and Trademark Office (PTO), so please plan on submitting your IR at least 6 weeks prior to your planned disclosure.

5. What constitutes public disclosure of an invention?

Answer:
A disclosure of information that is sufficient to allow a scientist in the field of the invention to make, use, or otherwise practice the invention constitutes a public disclosure. Publications and patents are examples of public disclosures. Posters, abstracts, and Internet postings can also be public disclosures if they are of sufficient detail that a scientist could learn how to practice the invention. In addition, any public discussion or demonstration of the invention in the U.S., including staff meetings attended by the public, and professional conferences, can constitute public disclosures. Even samples that are distributed to another colleague for research purposes may be deemed a public disclosure depending upon the degree of control retained by the inventor.

6. How do I protect my ideas before a patent is filed?

Answer:
If you have an idea that might lead to an invention, the first step is for you to complete and file an invention disclosure form with the Commercial Ventures and Intellectual Property goup of ORD. The best way to protect your idea is by not sharing information with others until the Commercial Ventures and Intellectual Property group negotiates a confidentiality agreement (CDA) between the University and the intended recipient of information. In addition to getting a CDA to cover your ideas, you should do the following:

Announce at the beginning and end of any discussion or presentations that the information presented is confidential. If possible, you should request that attendees at your presentation sign an attendance sheet. Summarize each discussion or presentation in a written document. Mark the document Confidential. Mark hand-outs, correspondence, documents, and e- mail communication with the recipient Confidential, as appropriate. Confidential Information disclosed orally or in any other non-written form (a) must be identified as confidential at the time of disclosure or within 5 working days after disclosure, and (b) must be summarized in a written document clearly marked as Confidential, or otherwise be clearly identified in writing as confidential within 30 days after disclosure. Provide copies of information to the Commercial Ventures and Intellectual Property group so that we may keep a record of what information was shared.

7. Once a patent application is filed, is my invention protected enough that I donÍt have to worry about confidentiality issues?

Answer:
No! Confidentiality issues are still important after a patent application is filed. Even though filing a patent application may protect your claim as an inventor, you do not want someone to take your ideas before your claim is officially established. Patent applications are not available to the public until some time after the filing date so you still want to have a confidentiality agreement to 1) impose an obligation of confidentiality on the recipient and 2) keep track of with whom you are sharing information.

Even after an application becomes public or a patent is issued, you should still be careful about the manner in which you disclose and discuss your ideas with others. If, after a patent application has been filed, a company, institution or individual would like you to share specific information or even just talk generally about your research in a particular area, please contact the Commercial Ventures and Intellectual Property group to initiate a CDA as described above.

8. How will my invention be evaluated?

Answer: 
The decision whether or not to file a patent application is based upon the patentability of the invention, and upon UMB Patent Policy and Commercial Ventures and Intellectual Property procedure. Commercial Ventures and Intellectual Property will usually seek intellectual property protection when such protection will facilitate the transfer of the technology to the private sector where the technology can be translated into products that improve health and prevent disease. Under our current procedure, a provisional patent application is filed for every invention disclosed to Commercial Ventures and Intellectual Property that is believed to be patentable. Provisional patent applications are not filed for unpatentable inventions and incomplete disclosures (Invention Reports). A copyright application is usually filed for inventions containing registerable material, such as computer code, instruction manuals, etc. A trademark application can be filed for names or slogans that have potential commercial value. For more information concerning the evaluation process, please contact Commercial Ventures and Intellectual Property group.

9. After I submit an Invention Report (IR) to TEC-COM, how long will it be before I know whether or not a patent application (or other type of application) will be filed?

Answer:
Usually, within 3 weeks of receipt of your IR, someone from the Commercial Ventures and Intellectual Property will contact you and your co-inventors to set up a meeting to review the IR with our Professional Staff. During that 1-hour meeting, we will make sure we understand the invention and begin to resolve any questions we may have regarding inventorship issues. Also, we will ask specific questions about the source of funding for the research that led to the invention and any relevant affiliations you may have with other research institutions, previous employers and companies. Usually, within 3 weeks of your meeting with the Commercial Ventures and Intellectual staff, you will be notified as to whether or not we want to try to protect the invention. If Commercial Ventures and Intellectual Property decides to try to protect the invention, you will work with our staff to file the appropriate application. If Commercial Ventures and Intellectual Property decides to not pursue protection of the invention, you will receive a letter informing you of the reasons for this decision and describing how to obtain the rights to the invention from the University.

10. What happens after a non-provisional patent application is filed?

Answer:
After a non-provisional patent application is filed with the U.S. Patent and Trademark Office (USPTO), it will be examined. During the examination (also referred to as a prosecution), an examiner will issue Office Actions. Commercial Ventures and Intellectual Property's in-house patent attorney is responsible for overseeing the responses to these Office Actions, and will work closely with you and, possibly, outside patent attorneys specializing in your field of study, to make important decisions concerning the prosecution of your patent application.

The promise of market potential or the presence of a potential licensee will be considered in evaluating your invention and making these critical decisions. The Commercial Ventures and Intellectual Property staff will work closely with you to determine the market potential and to identify potential licensees.