9 Things to Know About Intellectual Property

Listicle Rising Tide
January 15, 2019 By Ethan Perez

Intellectual property (IP) refers to ideas or creative works that are protected by law through the issuing of patents, trademarks, copyrights or trade secrets. These types of legal rights can create industries, provide incentive to researchers and drive further innovation – to name just a few of the benefits – but can often be difficult to navigate for those unfamiliar with the subject. Below is a list of nine quick insights and need-to-know tips about IP, with more information available here.

1. If you have an idea, contact UCI Applied Innovation.
If you feel you have discovered a unique technology that could have a commercial value and application, contact Applied Innovation as soon as possible. If the appropriate protections are not in place before publicly disclosing your idea (presentation, publication, etc.), patent rights might be forfeited by law. It is possible to both file a patent and publicly disclose your technology, if done in an appropriate manner.

2. What is Invention Transfer?
Invention Transfer is part of Applied Innovation and fosters alliances between UCI and outside parties interested in the university’s IP; protects UCI’s IP, which are primarily patentable inventions and copyrightable software; and commercializes UCI’s IP for public benefit by licensing it to startup and existing companies.

3. What is a patent?
A patent is a federally given property right that provides the owner of an invention the right to prevent others from making, using, selling or offering it for sale. This right expires approximately 20 years from the date the invention was filed, assuming the patent is allowed to issue.

4. What constitutes a patented invention?
An invention is a unique and non-obvious discovery – usually an improvement upon an existing idea – that is generally categorized as a composition of matter, method of doing something (i.e., treating a disease, manufacturing a compound, etc.), product or device.

5. Who pays for the patent and how much does it cost?
If Applied Innovation determines that an invention is both patentable and has commercial value, UCI will pay an outside patent attorney to apply for a patent on UCI’s behalf. An issued United States patent can cost as much as $25,000-$35,000 or more. Once the invention is licensed to a startup or company, Applied Innovation will seek reimbursement of these costs from that licensee.

6. Patents help the development of early-stage technologies.
A strong, enforceable patent can be an incentive for a commercial entity to invest in and further develop university IP into commercial products. Without the patent exclusivity, a company looking to develop an early-stage technology may have a hard time recouping its costs. Therefore, a great idea created at the university runs the risk of never making it to the public.

7. How long does it take to get a patent?
It takes on average about three years for a patent application to be allowed to issue, if at all, which may commonly include an initial rejection or challenge by the U.S. Patent and Trademark Office followed by a counter to the decision by the applicant and inventors with help from UCI’s outside patent counsel.

8. How do I benefit from disclosing an invention?
If your invention is commercialized, any revenues from fees and royalties – minus Applied Innovation’s costs of pursuing a patent – are shared with the inventors. Under current UC policy, inventors receive 35 percent of any revenues, the inventor’s academic department or research unit receives 15 percent, and the remainder goes to the university to support university research and education programs. Also, if an invention is licensed to a startup or existing company, the inventors may benefit from an alliance with the company, such as industry sponsored research, where the licensee funds a mutually agreed upon research project at the university.

9. You can still conduct research after your patent is licensed to a third party.
The licenses drawn up between UCI and third parties typically ensure that inventors can continue to work on their research that the patent is based on.

The content of this article is not legal advice nor should the information within be used as guidance. For questions, clarification and guidance, contact Invention Transfer. For more information on intellectual property, patents and licenses, click here.

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