Patent Questions

17. What are patents and provisional patent applications?
A patent is a legal monopoly that prevents other from making, using, or selling an invention covered by the patent. Parents are granted by governments, and may be enforced only in the jurisdiction that has granted them. Provisional patents applications are filed with the United States Patent and Trademark Office (USPTO) that establishes the effective filing date of a patent application. The provisional application is not examined by the USPTO, and may remain pending for one year. At the end of the period, ECU must elect to drop the filing and allow the information to become public, or convert the provisional application to a regular patent application. In these cases, the OTT will work with the inventor(s) to make this decision on behalf of ECU.

18. Who owns the patent?
ECU has an interest in all inventions of University personnel that are conceived or first actually reduced to practice as part of or as a result of university research, activities within the scope of the inventor’s employment by the university, and activities involving the use of university time, facilities, staff, materials, information not available to the public, or funds administered by the university. Per UNC policies, inventions or discoveries made on the inventor’s own time belong to the inventor except in the case of conflict with any applicable agreement between the institution and federal or state government or agency thereof.
ECU Policy:   http://www.research2.ecu.edu/ott/ecupatent.html
UNC System Policy:   http://intranet.northcarolina.edu/docs/legal/policymanual/500.2.pdf

19. Will obtaining a patent stop others from doing academic research about the same subject matter?
No, research on the subject matter for strictly academic purposes is not an act of infringement. The patent laws exist to protect patented invention in a commercialization context. Academic or other research institutions remain free to build upon patented advances.

20. Is a patent necessary for commercial success?
No, ECU often licenses technologies that are not patented. Companies frequently license items for internal research use to save the time and expense of creating research tools for themselves.

21. If ECU determines that it is not interested in pursuing my invention, may I have it back to pursue on my own?
Yes, OTT may decide to have any rights that the University may have in the technology should be released back to the inventor. However, if there was government support for the research, the government may have certain rights in the technology. It is the responsibility of the inventor to be sure that the government also assigns its rights back to the inventor.

22. I have a good idea, but haven’t done any lab work on it. Can we patent it?
To be eligible for patent protection, an invention must meet certain criteria including the following:

• it must be more than mere idea; it must relate to a process, machine, manufacture, composition of matter, or new use of any of these.
• it must be novel; the inventor must be the first person in the world to invent the invention.
• it must be non-obvious; the invention must not be obvious to a person of reasonable skill and knowledge in the art to which the invention relates.
• it must be useful; the invention must have some utility.

However, a provisional patent application may be filed on inventions that have not yet been reduced to practice.

24. Who pays for the patent application?
ECU pays for all costs associated with the preparation, prosecution, and maintenance of the patent. ECU seeks reimbursement of patent costs through licensing.

25. What is the difference between licensing a patent and selling a patent?
When a patent is licensed, ECU still holds the title to the patent. Only certain rights in the parent are granted to the licensee, under specific terms and conditions. However, when a patent is sold ECU no longer retains any title to the patent.

26. May an ECU employee engage in a side business?
Yes and no. An ECU employee may engage in a side business if the following conditions are met:

• The faculty or other professional staff member has completed the “Notice of Intent to engage in External Professional Activity for Pay” form, and the request has been granted by their Department head and also the next higher administrator.
• There is no conflict of interest (See Conflict of Interest link below for explanation)
• There is no conflict of commitment (See Conflict of Interest link below for explanation)
• No inappropriate use or exploitation of university resources may occur
• The name of The University of North Carolina or any of its constituent institutions are not used for any other purpose other than professional identification
• No claims, explicitly or implicitly, of any university or institutional responsibility for the conduct or the outcome of the external professional activities for pay are made.

ECU Faculty Manual – External Professional Activities of Faculty and Other Professional Staff:  http://www.ecu.edu/fsonline/FacultyManual2/Part6/65.htm
ECU Faculty Manual – Appendix I.: Policy on Conflict of Interest
http://www.ecu.edu/fsonline/FacultyManual2/AppendixI/AppI.htm

27. Can an employee engage in outside consulting?
It is expected, but not required, that faculty and other professional staff members will participate in external professional activities for pay, including consulting. This type of activity often leads to significant societal benefits, including economic development through technology transfer. However, the same conditions must be met as are listed above in question 26 as a consulting service is usually considered a side business.
ECU Faculty Manual – External Professional Activities of Faculty and Other Professional Staff:   http://www.ecu.edu/fsonline/FacultyManual2/Part6/65.htm
ECU Faculty Manual – Appendix I.: Policy on Conflict of Interest
http://www.ecu.edu/fsonline/FacultyManual2/AppendixI/AppI.htm

28. Can ECU help a non-ECU employee obtain a patent?
No.

29. What is publication for patent purposes?
For purposes of patent law, a publication may be a published article in a journal, magazine, or newspaper; a presentation at a conference; a thesis or dissertation; distribution of preprints; a posting on the Internet; and a number of other events that tend to disclose knowledge to the public, or at least that portion of the public most likely to appreciate its significance. While not technically a "publication,” other events that have a similar effect include the sale of an embodiment of an invention, an offer to sell, and the public use of an invention. There are certain narrow exceptions.

30. Is a grant proposal considered a “publication,” or a discussion of an idea with colleagues?
Submission of grant proposals to state or federal agencies, and discussions on a one-to-one basis with co-workers or peers may or may not be considered publications, depending on all the circumstances. Once a grant proposal has been approved, its abstract is generally published, typically online. At least the abstract will then be considered a publication, from the date it become publicly available. The remainder of the grant may or may not be considered a publication as well. Some funding agencies permit portions of a grant application to be specifically marked as "Confidential.”

31. Is a dissertation or thesis considered a “publication?”
In general, yes, although it can be important to identify its effective publication date. Traditionally, a dissertation or thesis was considered to be published once it had been catalogued and shelved in a publicly accessible library. Dissertations and theses are now typically submitted and published electronically, rather than on paper. While unanswered questions remain concerning the legal effects of the relatively recent advent of electronic publication, it is reasonable to expect that the "publication date" of an electronic dissertation or thesis should generally be the date that it is first made available to the public online.

32. Can an ECU employee conduct a patent search himself/herself?
Yes. In recent years, a number of databases have been made available to the public on the Internet. Free databases may be found at the U.S. Patent and Trademark site, www.uspto.gov, and at the European Patent Office site, www.european-patent-office.org/index.en.php. A commercial site that features a number of useful databases, some of which are free and some of which require a subscription, is the Delphion site: www.delphion.com. It can be both helpful and educational for a researcher to conduct a patent search on a new invention. There is much technical information that is published only in patents and patent applications, and that does not otherwise appear in the traditional academic literature to which university researchers may be more accustomed.

33. I gave a talk last year on this; can I file a patent?
Public disclosure of an invention more than one year before a patent application is filed serves as an absolute bar to a patent. Any public disclosure prior to filing a US patent application serves as a bar to patent protection in all foreign countries. Additionally, inventions created at the University by University faculty members and employees are the sole intellectual property of the University. Therefore, OTT will file any and all patent applications on those inventions. The University may elect to assign any portion of its rights back to the inventor, in which case, the inventor may then and only then file for a patent on their own.

34. My graduate student was very helpful in executing the experiments for this invention; will he/she be listed on the patent?
Only inventors are listed on patents. An inventor is the person(s) who conceived the invention. So, if your graduate student did not contribute to the conception of the invention, he/she is not an inventor. Who actually did the experiment is usually irrelevant in determining inventorship for patent purposes. But, if the graduate student, in executing the experiment substantially altered the invention or improved the invention, that may enable him/her to be included as a co-inventor. Conception is the "formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice." Amgen v. Chugai Pharmaceuticals (D.Mass. 1989).

35. Can I call the attorney and talk to her about this application?
Questions about a patent application that has been filed should first be directed to the OTT at (252) 328-9549. When a patent application is being prepared by an attorney, you may be contacted by the attorney to help clarify issues and insure that the application adequately protects the invention. During this preliminary phase of the patent application dialog between the attorney and the inventor is encouraged, but administrative inquiries should be directed to the OTT. Additionally, please remember that all telephone calls to the attorney do cost the University, and therefore the inventors, money.

36. Without talking the time to learn U.S. and foreign patent laws, how do I avoid jeopardizing my patent rights?
Simple, if you think you have an idea that may be patentable, contact the OTT as soon as possible and stay in touch with them on a timely basis about potential public disclosures of your idea. OTT will work with you to give you the advice that you need so that you can protect your inventions without interrupting your primary activities as a research scientist.

37. What is a confidentiality agreement?
A confidentiality agreement is an agreement whereby one party agrees to hold the proprietary technical and/or business information of the other party in confidence. Confidentiality Agreements (CDA) or Non-disclosure Agreements (NDA) are a standard tool of the trade, and many companies are amenable to having access to a technology under the terms of this type of agreement.

38. Who can sign a confidentiality agreement?
Only authorized individuals can sign a CDA on behalf of ECU. PRINCIPAL INVESTIGATORS ARE NOT AUTHORIZED TO SIGN THIS AGREEMENT ON BEHALF OF ECU. If a company wishes to obtain confidential information from ECU, the investigator should contact the OTT.