For Faculty - Inventor FAQs
- How are patent rights affected by publication?
- What intellectual property rights are owned by Temple?
- Who pays for legal and other expenses related to an invention?
- Are intellectual property rights affected by my grant or contract?
- Am I required to disclose my invention to the Office of Technology Development and Commercialization?
- How are inventions evaluated?
- How does Temple enable the commercialization of new inventions?
- How is licensing income distributed?
- Whom should I add as contributors to the Invention?
- How are inventors different from authors?
- Can I submit my grant application to a federal agency and the corresponding invention disclosure to the OTDC simultaneously?
- What is the consequence of incorrect inventorship?
- Can I talk freely about the invention after the filing of a provisional patent application?
- What is considered as a public disclosure?
- When can I say that I have secured a 'patent' on the invention?
- How early should the invention disclosure be filed with the OTDC?
- I just submitted a manuscript to a journal. Can I still submit a disclosure to the OTDC?
- My article was just published in a journal. Can we still file a patent application?
- My invention was created using federal funding. Do I have any reporting obligations?
- If Temple University decides against pursuing a patent application, can I do so at my expense?
How are patent rights affected by publication?
Public disclosures, such as papers, abstracts, posters and lectures, before the filing of a patent application can jeopardize patent rights. A paper is considered a public disclosure when it is made available on the publisher's website, even if it has not yet been indexed in PubMed and will be forthcoming in a future volume of the journal. An abstract submitted to a meeting, which becomes available online before the meeting begins (a common occurrence), is also considered a public disclosure. Finally, poster presentations and lectures attended by people from outside of the university are typically public disclosures, even if they are presented at Temple. Before making a disclosure, for example before submitting a manuscript of an abstract, please contact the Office of Technology Development and Commercialization. Also, feel free to contact ODTC if you have any questions about whether something is a public disclosure.
What intellectual property rights are owned by Temple?
Temple is entitled to obtain ownership in any invention (including computer-related software and ancillary materials, but not including pure works of art or musical compositions), which is developed in whole or in part by Temple employees including, without limitation, faculty or staff members, fellows, residents, graduate students or assistants (whether paid or unpaid), and emerges from Temple research or development activity, or from use of any University facilities or equipment.
Inventors are entitled to ownership in any discovery or invention which is developed wholly on the inventor's own time and with the inventor's own facilities and which does not involve use of any Temple funds, equipment, facilities or personnel.
Who pays for legal and other expenses related to an invention?
Temple pays for costs related to inventions it retains ownership to. Expenses related to inventions where the inventors have the right to own, or the university has waived its right to own, are the responsibility of the inventor.
Are intellectual property rights affected by my grant or contract?
Ownership rights to inventions emerging from activity pursuant to an agreement with an outside sponsor are determined in accordance with that agreement or, in the absence of a controlling agreement, with rules and regulations, if any governing that sponsorship exist. In particular, Temple is governed by Public Law 96-517, Government Patent Policy Act of 1980 (and any successor thereto or similar laws) and its attendant regulations and amendments regarding federal research agreements. In all cases, where feasible, Temple seeks to negotiate agreements which permit the University to retain ownership rights.
Am I required to disclose my invention to the Office of Technology Development and Commercialization?
Yes. All inventions must be disclosed, even those believed by the inventors to be unrelated to his or her university duties and not involving the use of University support. Disclosure is especially important for inventions emerging from sponsored research agreements so the University can ensure compliance with such agreements.
How are inventions evaluated?
How does Temple enable the commercialization of new inventions?
How is licensing income distributed?
Net income is defined as gross income minus a 20 percent OTDC Administration Fee and patenting, legal and marketing costs incurred by the University related to an invention. Net Income is distributed as follows:
- 50.0% to the inventor(s)
- 17.5% to the department or research unit
- 7.5% to the college or school
- 25.0% to the University
Whom should I add as contributors to the Invention?
Typically, a patent attorney has the last word on this matter. However, here are a few general rules to keep in mind:
- Graduate student and Postdoctoral fellows - If these individuals have simply executed the instructions of the Principal Investigator (PI) without any intellectual input to develop their idea, then they may not qualify as inventors. However, if the PI is keen to reward his coworkers for their efforts, he/she is free to share his/her portion of any future revenue with them. This can be achieved by instructing the OTDC, in writing, about the distribution percentage of future income.
- Academic collaborators - If the collaborators simply provided you with materials for research and your invention was created using the material, then use one or more of the following approaches to resolve the inventorship dilemma:
- Read the terms of the Materials Transfer Agreement that you signed before getting the materials from your collaborator and determine the rights pertaining to Intellectual Property. Typically, if your collaborator did not contribute to the conception of the idea, he/she might not qualify as an inventor. Collaborators do not become inventors just because they provided the material for your research.
- If the collaborator actually contributed to the conception of the idea, the OTDC will initiate discussions with the collaborator's institution to establish an inter-institutional agreement before filing a provisional patent application.
- Industrial collaborators -
- Read carefully, the terms of the agreement executed with the company to determine ownership of resulting inventions. Contact OTDC to make a final determination.
- If the collaborator contributed to the conception of the idea, the OTDC will begin discussions with the company to enter into a joint agreement for patent prosecution costs and future revenues.
How are inventors different from authors?
Inventors – Individuals who contributed intellectually to the conception of the idea and participated in the "eureka" moment(s).
Authors – Individuals who either collaborated or contributed ideas/labor/effort in completing various experimental tasks.
What is the consequence of incorrect inventorship?
A patent can be invalidated at any time if the inventorship is found/proven to be incorrect. In the absence of malice and dishonestly, the United States Patent and Trademark Office (USPTO) provides various procedural formalities to correct inventorship that include adding/deleting an inventor(s).
Can I submit my grant application to a federal agency and the corresponding invention disclosure to the OTDC simultaneously?
Yes, you may simultaneously do so. The reviewers of federal grant applications are presumed to be sworn to confidentiality.
Can I talk freely about the invention after the filing of a provisional patent application?
Yes, after the filing, you can discuss your invention with other parties; but make sure that any information you disclose is covered in the provisional application. That said, Temple prefers to have a confidentiality agreement in place before you initiate discussions with a company or other commercial entity since a provisional application is not publicly available.
What is considered as a public disclosure?
Either verbal or written communication with a party that was never privy to the invention is technically a public disclosure. In other words, discussing your invention with individuals who never participated in the genesis of the invention is a public disclosure.
Other forms of obvious public disclosures include oral presentations, submission of abstracts and publication of abstracts, articles and posters.
When can I say that I have secured a patent on the invention?
When the patent application proceeds to grant or issue, you have been awarded a patent on the invention. Typically, it takes 3-5 years for procuring a patent. Mere filing of a provisional application does not translate as getting a patent. Until the patent is granted, you may discuss your invention with the tagline, "patent pending"
How early should the invention disclosure be filed with the OTDC?
When you have gathered preliminary data to support the idea, please send in the disclosure to the OTDC.
I just submitted a manuscript to a journal. Can I still submit a disclosure to the OTDC?
Yes, although the timeline then becomes extremely tight. If the findings in your manuscript are deemed as an invention, then we will need to file a provisional application before the galley proof of your article is posted online.
My article was just published in a journal. Can we still file a patent application?
Yes, we can. However, the disclosure would have resulted in the loss of all international rights. We would be able to apply for patent protection only in the US if the commercial opportunity in the US justifies the cost of a obtaining a patent.
My invention was created using federal funding. Do I have any reporting obligations?
The OTDC takes care of reporting inventions to the concerned federal agency through www.iedison.gov.
If Temple University decides against pursuing a patent application, can I do so at my expense?
Yes. If Temple decides not to pursue the filing of a patent application, then the rights to the invention are waived back to the inventors through a letter issued by the Director of Technology Development and Commercialization.