Quick Links to UIRF Inventor Information:

  1. General Information
  2. Invention Disclosure
  3. Invention Disclosure and Commercialization Process
  4. Intellectual Property (IP)
  5. Ensuring IP Protection

General

UI Intellectual Property Policy

Under The University of Iowa policies on patents and copyrights, much of the IP coming out of research conducted using University resources is owned by the University of Iowa Research Foundation (UIRF). The University of Iowa Operations Manual, Part V, Chapter 30 “University of Iowa Intellectual Property” can be found at the University of Iowa Operation Manual.

There are several advantages to having University ownership of certain intellectual property. These advantages include:

  • Technology transfer through the UIRF is a method for translating an inventor's work from the laboratory into a product that may benefit society 
  • The UIRF pays all costs to file and prosecute patent applications for accepted technologies
  • Patent applications and patents automatically publish and serve as scholarly work for tenure decisions. Please see Procedures for Tenure and Promotion Decision Making at The University of Iowa.
  • UIRF Licensing Professionals manage the patenting process and negotiate licensing agreements intended to facilitate commercialization of the technology
  • License agreements may provide personal income to the inventor(s), and direct revenue back to the inventor’s department and college
  • Licensees may be interested in sponsoring research in the inventors' laboratories

In order for the UIRF to best protect patentable University intellectual property for the benefit of the University and the benefit of the staff or faculty member, there are certain steps that we ask inventors to follow. Please refer to ENSURING IP PROTECTION section to see information designed to help inventors assist the UIRF in securing ownership rights.

Invention Disclosure

When do you submit an invention disclosure?

  • Submit invention disclosures well in advance of any anticipated publication or presentation as public disclosure eliminates foreign patent rights and may create complications for US patent rights
  • The US PTO generally presumes utility (usefulness) of an invention and does not require actual proof that an invention works. However, you may be required to provide supporting data or other results in order for the patent to be allowed. This is likely to occur when there is a rational basis that would cast doubt on the utility of your proposed invention. To support patent claims directed to the treatment of human disease - in vitro and/or animal test data will be necessary
  • For innovations in hot research areas where others are vying for first publication or a competitive position, it’s best to submit early. The US operates on first to invent, whereas elsewhere it’s first to file, so the application filing date can make a huge difference in the commercial opportunity

Is your work potentially patentable?

In order to be patentable, an invention must be:

  • Useful
  • Novel, and
  • Non-obvious to those skilled in the field

What information should be included in a disclosure?

  • Complete description of the invention. Patent counsel generally uses all available information for patent application drafting, such as any written description or documents on the invention or general subject area, and related manuscripts.
  • Current state of the invention and explain development stage - what has and hasn’t been done. This helps determine the development stage of the innovation and any other research or testing needed to define claims and determine commercial attractiveness.  
  • Potential interest for and uses of the technology- industries, markets, companies, government - Information on who may be interested in licensing the technology, or in providing research funding, and why.
  • Important invention dates- date of discovery, dates of publication or public disclosure (Needed to determine if an invention can be patented. Information on public disclosure should include all information concerning publication, web site posting, presentations, and offers for sale)
  • Research sponsors. Under federal law, the UIRF is required to report to the government on inventions made and reduced to practice with federal funding. This information allows us to determine any sponsor rights. It’s also helpful to list suppliers of confidential information and/or proprietary materials, or other parties that may have been involved in the invention process.
  • All contributors to the invention - This list should include all parties that contributed to the development of the invention or discovery. Patent ownership and copyright authorship is a legal determination. As such, researchers should include in this section all whom they think may be a co-inventor on the project. Detailed explanations of each person's contribution will help the UIRF and outside counsel determine ownership of the invention. Researchers with VA appointments, regardless of whether they are with or without compensation, must fill out a separate disclosure form for the VA.
  • Witnessed signatures of all UI inventors

How and to whom do you submit an invention disclosure?

Invention disclosures can be downloaded from the Forms & Sample Agreements page.

Submit completed invention disclosure forms by mail or email to the UIRF offices at:

uirf@uiowa.edu
319-335-4546

The University of Iowa Research Foundation
2660 University Capitol Centre
Iowa City, IA 52245-5500

Questions may be directed to one of the contacts listed below. Prior to submission, please review the Inventor Process section to ensure the invention disclosure includes all needed information.

For invention disclosure or patent questions from faculty already working with us please contact your case manager

Call 319-335-4546 or email uirf@uiowa.edu.

Invention Disclosure and Commercialization Process

This section gives you an overview of what happens after your invention disclosure is submitted to UIRF.  We encourage informal contact by phone or email prior to submitting a formal invention disclosure. An early discussion on research and publication plans can help determine the need for formal disclosure, result in a better evaluation, and reveal effective protection strategies that are in line with publication needs. Together we will also determine steps to increase the likelihood of commercial interest in the invention or copyrighted work.

Initial Assessment and Review (4 to 6 weeks from submission)

Once a completed invention disclosure form has been submitted to the UIRF, the technology undergoes an initial screening. There are four main facets to the screening process, which include:

  1. Invention – Enabling Technology
    Based on the invention disclosure and conversations with the researcher, the initial proposed uses and applications of the invention are determined, along with the strengths and potential benefits of the invention as related to those applications.
  2. Intellectual Property Analysis 
    The strength of any potential intellectual property is examined. Several factors are considered such as differences between the current technology and other patented or available technologies, the type and strength of patent claims that will likely be available (i.e. composition claims are generally stronger claims than purely method claims, broader claims are generally more desirable than narrow claims), how crowded the IP landscape is, and the ability to seek IP protection outside the U.S.
  3. Market Analysis and Business Risk
    A comprehensive review of the relevant market for potential products and/or services that could come out of the intellectual property is conducted. This analysis estimates the size of the market, the market impact of the product and/or service, the market growth rate, and the current market state. Other associated potential market factors, such as market margins and current market segmentation also play key determination roles in this process. The market analysis also considers whether the market is ready for entry of this particular type of technology, i.e. whether there is existing infrastructure. The intention of the analysis is to determine the market strength of an invention and whether IP protection would likely result in a licensed, commercial product. If a market is small and prospects for licensing are low, patent protection may not be pursued. During this process, other uses and markets may be identified that are more attractive than the initial set, and these applications and gaps in the invention that must be filled to address these markets will be discussed with the researcher. This analysis is also intended to initially identify new UI spinout company opportunities, which – if considered promising – are then screened against additional criteria for viability.
  4. Commercialization Analysis
    The technology screening also considers various commercialization issues affecting the value of the technology from the perspective of potential licensees. These issues include:
  • Development Needs: The stage of development of the technology. Many technologies originating from within a university setting are in the earliest stages of development and require significant time and expense to mature the underlying technology into a commercial product.
  • Development Costs: The cost required for a licensee to develop the technology to a point where it can become a commercial good. Costs are dependent upon both the development stage of the technology and the type of technology. 
  • Ease of Utilization: The amount of work that a potential licensee would need to undertake in order to advance the technology and make a commercial product/service. This includes the amount of work needed for a licensee to understand the invention, for example, is knowledge of the technology easily transferable? Similarly, ease of utilization is dependent upon the stage of development of the technology, as well as the type of technology.

All of these factors play a major role in the evaluation of a technology’s patentability and commercial potential.  Once initial review is competed, UIRF may proceed with the commercialization phase, if the result suggests high potentials in intellectual property strength AND commercial applicability of the invention and enabling technology. 

Commercialization

The UIRF receives technologies from departments all over campus. Due to the very nascent nature of most university inventions, many do not result in licensing. Approximately 20% of the UI technology portfolio is currently licensed, and a smaller fraction of those generate revenue.

  1. In-Depth Commercial Assessment:
    During this stage, the UIRF team investigates possible synergies between the technology and potential business partners. The proper commercialization pathway is also evaluated at this point, assessing whether it is best to pursue licensing to an established company, licensing to an existing startup, or creating a new UI spinout company. For licensing to existing companies, the team will explore a number of opportunities within a targeted industry, and assess the strengths of strategic partnerships with existing players in an attempt to identify those companies best suited to license the technology and bring it to market.
  2. Marketing:
    Following the identification of suitable partners, marketing begins. Partnership opportunities are discussed with key external contacts for evaluation. Industry representatives will often contact the researcher, particularly at conferences, or after publications. They may be crucial contacts that serve as market entry points. Once engaged, potential partners or the UIRF may request confidentiality, material transfer, or option agreements be put into place so that the technology can be more fully evaluated prior to licensing. The UIRF will negotiate and execute these agreements.
  3. Licensing:
    If a company is interested in a licensing a technology, the UIRF will negotiate the terms of the license. A number of key terms, such as field of use, diligence criteria, up-front fees, maintenance fees, royalty fees and types, equity, and termination provisions are discussed. Researchers are not involved in this negotiation, but may be consulted regarding aspects of the license agreement. Once a technology has been licensed, the UIRF maintains an ongoing relationship with the licensee. This relationship helps to keep open avenues for further technologies as well as to ensure that the terms of the licensing agreement are upheld.

Intellectual Property (IP)

Generally speaking, intellectual property refers to a set of legal entitlements. There are several categories of intellectual property, including:

  1. Patent:
    Grant of property rights on new, useful, and non-obvious inventions by the U.S. Government through the U.S. Patent and Trademark Office (USPTO). The grant of a patent excludes others from making, using, selling, offering to sell or importing the invention in the United States. Patents are specific to the granting country or region of countries. In the United States, the right conferred by the patent grant extends throughout the United States. Additional information on patents can be found at www.uspto.gov.
  2. Copyright:
    Protection given to original works of authorship fixed in any tangible medium of expression, giving the holder of the copyright the exclusive right to reproduce, adapt, distribute, perform, make derivate works, and display the work. Software is a common copyrighted work in an academic setting. Although research publications are also copyrighted works in an academic setting, according to academic custom, The University of Iowa does not take institutional ownership in individual publications. Additional information on copyrights can be found at www.copyright.gov.
  3. Trademark:
    Protection given to any distinctive word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. The UIRF generally does not pursue trademark protection except in select cases. Most of the trademark protection that occurs at The University of Iowa is protection of the University’s name, symbols, and mascots. Handling of these trademarks is done through The University of Iowa Athletic Department. Additional information on trademarks can be found at www.uspto.gov.
  4. Trade secret:
    Protection given to a formula, process, device, or other business information that is kept confidential to maintain an advantage over competitors. Due to the open nature of public universities, trade secrets, while commonly important intellectual property in companies, are less commonly protected in academic settings.

Ensuring IP Protection 

How to Publish and Protect Intellectual Property Rights

Patenting in the Context of Publishing

The UIRF recognizes that the cornerstone of academia is publication; that being the case, inventors should be aware that public disclosure of inventions can reduce or eliminate patent rights. We ask researchers to contact us before publishing or publicly presenting a new finding that discloses subject matter relating to a possible invention. We can work together to ensure that as many intellectual property rights as possible are retained while at the same time taking into consideration publication needs. The UIRF will never ask researchers to delay publications or presentations but will work with researchers to file necessary applications in advance of deadlines.

Public Disclosure of Unprotected IP Can Kill Patent Rights

  • The types of disclosure that can put patent protection at risk include:
  • Presentations at conferences, whether or not the presentation includes printed handouts
  • Research abstracts presented in a public forum. This includes research abstracts that are published before meetings either online or in printed materials
  • Posters shown at meetings (considered public publications)
  • Cataloged thesis or dissertations
  • Posting of information on websites. This includes postings on your individual lab web sites. If it can be accessed through the web, it is considered a public disclosure
  • Publications. Publications are considered public disclosures the minute they become available to the public. For many publications, this occurs when published online in advance of the printed journal
  • Published grant applications
  • Meetings with company representatives or colleagues outside the UI where information is disclosed without a confidentiality agreement

It’s Simple to Preserve Rights

The UIRF strives to achieve maximum patent protection in areas where world-wide markets are available, and requests that potential inventions be disclosed well in advance of any publication or disclosure, if possible. With advance notice, we can preserve IP rights through non-disclosure (NDA) or confidential disclosure agreements (CDA). NDAs and CDAs legally require signees to keep the information given to them under the agreement confidential. When sending confidential information under a NDA/CDA, we recommend that all information be provided in writing, with the word "confidential" written in conspicuous lettering on each page. Our template NDA/CDA form can be found from http://research.uiowa.edu/uirf/pages/universal/forms-and-sample-agreements.html

The licensing professionals at the UIRF can tailor an appropriate NDA/CDA and arrange for execution.

Research Materials also Need Protection

Legal rights to patentable and non-patentable material may also be lost if the appropriate steps are not taken. Researchers who wish to send materials to persons off campus should complete a material transfer agreement (MTA). An MTA grants a receiving party the right to use the transferred material as long as certain restrictions, i.e. original researcher is always acknowledged, receiving researcher does not send to others, etc. These agreements may also protect the confidentiality and future use of the material. In the case of sending materials to commercial companies, the MTA may include payment terms. Licensing professionals at the UIRF can assist in proper application of an MTA.

Helpful Guidelines

  • Discuss with the UIRF well in advance of upcoming presentations about new discoveries that have commercial value. Intellectual property strategies can be assessed without hindering the dissemination of your research 
  • Keep track of dates of public presentations or publications, even if the presentation or publication is largely internal to The University of Iowa
  • Tell patent attorneys drafting the patent application about any known disclosures or relevant art not disclosed on the invention form. If the attorney is misinformed or not informed, it is impossible for them to make the best possible case for the patent application 
  • Deliberate failure to notify the USPTO of a prior disclosure or know reference may invalidate the patent

For more information, please visit the UIRF For Inventors.

 

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