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Office of Technology Transfer

Frequently Asked Questions

1. What are the requirements for a patent and what is prior art?

2. If I disclose an important discovery in a public or private forum, will this affect my intellectual property protection that I am considering?

3. I have an article that is about to be published. How will this impact possible patent protection?

4. Do abstracts and internet disclosures count as prior disclosure of an invention/idea?

5. When is it too early to talk to the Office of Technology Transfer (OTT)?

6. Is my idea dead if the Patent & Copyright Committee (P & CC) does not recommend intellectual property protection to the Dean?

7. I work with educational materials so I’m assuming there is no reason for me to speak with the Office of Technology Transfer (OTT). Is this correct?

8. I have researchers in my lab that perform data analysis for me. Should they be co-inventors?

9. I’m presenting my data to industry. Should I speak to the Office of Technology Transfer (OTT) first?

10. How do Material Transfer Agreements (MTAs) and Confidential Disclosure Agreements (CDAs) work and how do I get them approved?

11. Is there any funding available for my invention/idea?

12. To what extent will the University sponsor promotional activities?

1. What are the requirements for a patent and what is prior art?

In order to obtain a patent, an idea must be novel, useful, and non-obvious. Usefulness is usually the easiest and most apparent criterion to satisfy. Novelty and non-obviousness are more difficult standards to meet and depend on prior art. Prior art is publicly available information that could be used to argue against the novelty and/or non-obviousness of an idea. Prior art may be in the form of journal articles, abstracts, conference presentations, website descriptions, etc. Back to Top.

2. If I disclose an important discovery in a public or private forum, will this affect my intellectual property protection that I am considering?

Probably. A common mistake inventors make in a University setting is making a public disclosure (either a publication or presentation) before a priority date is obtained (i.e. making an initial filing with the Patent and Trademark Office). Such disclosure can impact the breadth of international protection and possibly domestic protection as well. Private entities may be dissuaded from investing in technology if only U.S. protection can be obtained on a certain technology. Private disclosures can have similar consequences and the proper non-disclosure agreements are encouraged when such disclosures are made, especially when seeking investors. Back to Top.

3. I have an article that is about to be published. How will this impact possible patent protection?

It is generally recommended that you consult with the Office of Technology Transfer (OTT) before having an article published if you believe it has patentable merit. A provisional patent application can be filed quickly on the article to establish a priority date to prevent the loss of foreign protection; however, please be mindful that for a patent application to mature into an issued patent, the disclosure must be “enabling” to one skilled in the art. If a publication is made before receiving a priority date, foreign protection will likely be compromised because that work can be cited against you, but domestic protection may still be obtainable if a non-provisional patent application is filed within one year from publication. Back to Top.

4. Do abstracts and internet disclosures count as prior disclosure of an invention/idea?

Absolutely. Any material that is publicly available can be used as prior art against your invention. Many conferences publish abstracts online ahead of the conference, so this early publication should be considered when disclosing your ideas to the Office of Technology Transfer and determining the best strategy for protection. Back to Top.

5. When is it too early to talk to the Office of Technology Transfer (OTT)?

It is never too early to talk to the OTT. The Evaluation Request Form is designed for disclosure of early-stage ideas in order to determine the best intellectual property strategy. Even if your idea is not fully developed, advising the OTT about it and discussing planned upcoming publications can help preserve the broadest intellectual property protection. Back to Top.

6. Is my idea dead if the Patent & Copyright Committee (P & CC) does not recommend intellectual property protection to the Dean?

No. An inventor may adhere to recommendations of the P & CC to further refine and represent an idea with potential protectable merit. Alternatively, if the P & CC recommends not backing an idea, the Dean may still decide to support it. If the Dean does not approve an idea, an inventor may either petition the Dean directly for reconsideration or petition to have the idea released by the University to the inventor for individual intellectual property protection. Back to Top.

7. I work with educational materials so I’m assuming there is no reason for me to speak with the Office of Technology Transfer (OTT). Is this correct?

No. The Intellectual Property Policy states that inventions or ideas developed through the course of your employment at SIU-SOM should be disclosed to the OTT. Even if educational materials are not deemed patentable, there may still be market potential and other forms of protection available. Back to Top.

8. I have researchers in my lab that perform data analysis for me. Should they be co-inventors?

Inventorship is not determined the same way as authorship. U.S. Patent Law states that each inventor must materially contribute to at least one claim in a patent. In other words, if a researcher in your lab is only performing experiments under your direction, he/she would not be considered an inventor. On the other hand, if the researcher comes up with part of the actual invention or idea that is being tested, he/she would most likely be an inventor. The Office of Technology Transfer is always available for consultation on inventorship. Back to Top.

9. I’m presenting my data to industry. Should I speak to the Office of Technology Transfer (OTT) first?

Absolutely. Even if your idea is in the early stages of development, it may have patentable merit. Speaking with industry without the proper agreements in place may jeopardize this potential. The OTT can construct a Confidential Disclosure Agreement (CDA) to protect your idea before you make a disclosure to industry. Back to Top.

10. How do Material Transfer Agreements (MTAs) and Confidential Disclosure Agreements (CDAs) work and how do I get them approved?

MTAs are designed to transfer materials that are not publicly available for sale, such as a specific antibody from a colleague’s research lab, or a certain type of animal from another institution. CDAs are designed to protect your ideas when they are disclosed to another party, such as a company or a potential licensee. Both types of agreements must be reviewed and potentially negotiated by the Office of Technology Transfer (OTT), approved by legal counsel, and signed by the appropriate institutional official. These agreements are processed by the OTT and should be submitted as soon as possible for the quickest turnaround time. For more information on MTAs, CDAs, and other research-related agreements, please visit http://www.siumed.edu/adrfa/techagreements.html. Back to Top.

11. Is there any funding available for my invention/idea?

Yes. The Concept Development Award is available to all inventors at SIU-SOM (both Springfield and Carbondale campuses). The award is up to $15,000 for one year and is designed to support the later stages of invention development such as prototype development, travel to meet with potential licensees, etc. Inventions must be disclosed to the Office of Technology Transfer at least one month prior to a submission deadline to be eligible. For complete details, submission dates, and all applicable forms, please visit http://www.siumed.edu/adrfa/cdaward.html. Back to Top.

12. To what extent will the University sponsor promotional activities?

The Office of Technology Transfer (OTT) places technologies, both with and without patent protection, on its website for interested companies to review. The OTT actively engages the services of consulting firms when necessary and participates in several networking events nationwide. The OTT also works with several outside entities and technology promotion websites to actively seek licensee interest for technologies. Back to Top.

Resources

Office of Technology Transfer

Frequently Asked Questions