Technology Transfer / Patents & Licensing

Frequently Asked Questions

Patents

If I invent something at the university, does it belong to the university?
All university employees must disclose inventions or other works to the Patents & Licensing according to Statement of Policy and Procedures for Inventions and Works -- USF Policy 0-300 (PDF). USF System employees includes graduate students in a temporary position as well as an undergraduate students receiving no funding and holding no appointments who would be considered a volunteer.

In accordance with Regulation USF12.003 and the Collective Bargaining Agreements, an invention or work made in the course of USF System-supported effort is the property of the USF System. Revenue derived from commercial application of inventions and works made in the course of USF System-supported effort is allocated in accordance with an agreement between the USF System or the USF Research Foundation and the inventor or author.

What kind of research is patentable?
According to the USPTO, in order to receive a patent the technology must be novel, useful and non-obvious. Some examples of patentable subject matter include: apparatus, coatings, circuits, polymers, systems, controllers, sensors, detectors, MEMS, nanotechnologies, diagnostics, therapeutics, designs, methods, compounds, processes, gene therapies, small molecules, medical devices and transgenic animals. If you have any questions about the patentability of your research, please contact our office.

What other types of Intellectual Property can arise from research?
Copyrights, including software, videos, print materials, training modules and clinical protocols. Research tools such as antibodies, purified proteins and cell lines.

What about my inventions prior to joining the university?
The university does not claim ownership of such inventions. However, any developments or improvements of these inventions that you make while at USF may be owned by the university and should be disclosed to the USF Technology Transfer Office.

How do I benefit from disclosing my invention to the Technology Transfer Office?
The university assumes the burden of protecting and commercializing the invention, and it costs the inventor nothing (but some of their time) to pursue commercialization. In the event that a technology becomes licensed, a portion of the revenue received is allocated to the inventor(s).

What if it is not clear that USF owns my invention, but I want the Technology Transfer Office to handle my invention?
The Technology Transfer Office staff will gladly consult with you to help determine if the university would be considered owners of the invention. Feel free to discuss your invention in confidence with us, preferably soon after you have discovered your invention.

Who decides whether or not to file patent applications?
The determination is based on the scope of the invention, its patentability, and commercial merit. The decision is made based on recommendations of the Technology Transfer Office in consultation with the inventor(s).

Who prepares and prosecutes patent applications?
USF has retained the services of highly qualified patent attorneys selected on the basis of patent law experience and specialized knowledge in various fields of expertise. These attorneys prepare and prosecute the patent applications.

How long does it take to obtain a patent?
The entire process may take from two to six years depending upon the complexity of the application.

Does public disclosure interfere with patenting?
Yes! To protect the patentability rights to your invention, it is important that you contact the Technology Transfer Office as early as possible prior to public disclosure. Public disclosure includes certain non-confidential grant applications; journal articles; media interviews; publication on the web; conference abstracts; oral presentations; poster presentations; etc. Foreign patent rights may be lost immediately upon public disclosure. In the United States you have one year from the date of the public disclosure to file a patent application.

Is a grant proposal considered a public disclosure?
A grant proposal is not considered a public disclosure until it is available to the public for review. Most grant requests are confidential and are not considered public disclosures, but others are made public by their inclusion in a file system available for public review. To prevent an unintentional disclosure, please notify our office prior to any submissions.

How long does a patent last?
This depends on the type of patent. A utility patent is generally valid for up to 20 years from the date of the first utility filing. A design patent is valid for 14 years from the date of issue.

Is a US patent valid in other countries?
No. Patent applications must be filed in each country where you desire patent protection, and a patent granted in one country is not enforceable in another. However, a US patent will cover anything made, used, or sold in the US that is covered by a valid claim of an issued US patent.

What are the criteria for obtaining a patent?
According to patent law, an invention must be "novel, non-obvious, and have utility."

Novelty refers to the law that no one can patent something that is known. If the invention is described in a printed publication or patent anywhere in the world, or if it is sold anywhere in the world, it is not novel.

Non-obvious means that the invention could not have been conceived by someone "having ordinary skill in the art" without undue experimentation. If anything was known or invented (prior art) at the time of the invention, then that would make the invention obvious to a person having ordinary skill in the art.

Utility means that an invention must perform some function, be operable, and must be beneficial to society.

What types of intellectual property protection are there and how do they differ?

Does it cost anything to meet with the TTO?
The services of the USF Technology Transfer Office are free for those that are employed by the university. This also includes services for current USF students.

Does a prototype need to be created before a patent can be filed?
There is no statutory requirement to prototype your invention provided the written patent application discloses the invention in sufficient detail to enable one of "ordinary skill" in the relevant art to reproduce the invention without "undue experimentation." There are, however, exceptions that would include certain therapeutic drugs or variations of compositions that produce new and unexpected results. In those cases, the U.S. Patent & Trademark Office (PTO) may require test data.

CDAs / MTAs

Why are Material Transfer Agreements necessary?
A Material Transfer Agreement (MTA) is a legal document for the protection of tangible research materials created by researchers that may be useful to others for research or for commercial development. It is important to contact the USF Technology Transfer Office prior to receiving or sending out any research materials so that appropriate MTAs can be developed to protect you and the institution.

Why are Confidential Disclosure Agreements necessary?
A Confidential Disclosure Agreement (CDA), sometimes called a Non-Disclosure Agreement, is a legal document for the protection of proprietary information. This document is necessary before any transfer of proprietary information made from one party (a university researcher) to another (a corporate representative). Otherwise, the transfer of proprietary information, even in a casual conversation, could legally be considered a public disclosure or prevent the possibility of obtaining intellectual property protection. It is important to contact the USF Technology Transfer Office before disclosing any confidential proprietary information to another party.

A company wants to talk with me about my work. What should I do?
Contact our office before you give any details to the company. We can get a confidential disclosure agreement into place that will protect your patent rights immediately. In addition, we may be able to establish a partnership with the company that will benefit your efforts for further research and licensing.

What should I do if a company contacts me about a CDA?
Ask the company to contact the Technology Transfer Office directly. No information exchanges should take place until CDA is fully executed. CDAs cannot be signed by faculty—the USF Technology Transfer Office will sign on USF's behalf.

What should I tell researchers when they request materials from me?
You should tell them that an MTA will have to be completed before you can send the materials. They can contact our office directly or you may send them to our web site for a copy of our approved MTA. Once we have all of the information that we need, we will complete the paperwork. Remember, MTA's cannot be signed by faculty; only the Technology Transfer Office can sign them.