What is a U. S. patent?

A U. S. patent is a grant made by the United States government, acting through the Patent and Trademark Office, to an inventor, conferring the right to exclude others for a limited time from making, using or selling the invention throughout the United States, its territories and possessions.  It is a printed document in which the invention is fully described and the scope of the invention defined.  Patents for an invention can also be obtained in foreign countries.

What can you patent?

Patent rights are granted for inventions of new and useful processes, machines, manufactures, compositions of matter or any new and useful improvement thereof or for certain plants.  The invention must be “useful” (have a useful purpose and be operative); “new” (not in public use or sale, not described in a printed publication more than one year before the date of application), not abandoned or given away to the public, and “nonobvious”.

Generally, if a new result is accomplished, or if an old result is accomplished in a new and unobvious way, an inventive act capable of patent protection has probably occurred.

Who owns patents rights to inventions of University employees?

Only the inventor can apply for a patent.  Employment agreements usually require employees to assign to the company all ownership rights to any inventions they make during the course of their employment and to sign any documents necessary to obtain patents on the inventions.

University employees have agreed to assign their ownership rights in inventions to the university.  The University’s Policy on Intellectual Properties, Policy 13000, provides that intellectual properties made with the use of university resources and/or facilities belong to the University and that the inventors are required to sign appropriate legal assignment documents upon request.  Any questions of ownership between the employees and the University are resolved by the Intellectual Property Committee.

Who owns inventions under the University’s research agreements.

The U.S. government has passed legislation that allows universities and small businesses to elect to retain title to any inventions they make under federally funded research.  Thus, we have the option to retain title.