Innovator Resources

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.

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.

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.

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.

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).

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.

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.

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.

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.

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.

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.