Faculty Inventor FAQs

If I have invented something or created software that I think has commercial value, what should I do?

First, "disclose" the invention or software to CTTC using the appropriate disclosure form.  This disclosure will ask you to briefly explain what has been invented or what software was created, how the work was funded or sponsored, and whether it has been or is scheduled for publication or presentation.

In order for a patent to be granted for an invention, the invention must be new, useful and non-obvious. Consequently, it is important for the disclosure to make clear that the invention is new, useful, and non-obvious.

Disclosures should be submitted to CTTC by internal Vanderbilt mail (Box 320 GPC or 1207 17th Avenue South, Suite 105, Nashville, TN 37212). If you have questions prior to disclosure, please call CTTC at 615-343-2430 (internal ext. 3-2430).  If there are co-inventors, they should be included on the disclosure. If they are from another institution, the technology transfer offices will cooperate to manage the disclosure.

Who owns the patents or copyrights that result from my work at Vanderbilt?

The Vanderbilt Policy on Technology and Literary and Artistic Works requires that rights to inventions and software developed in the conduct of University research or with University resources be assigned to Vanderbilt University.  As a result, the University becomes the owner of all related patents and copyrights. It is important for all researchers to recognize that this obligation to assign rights to Vanderbilt is mandated by Federal Law for government funded research and, as a result, the obligation is today a policy of all research colleges and universities.

How is the information in a patent application protected from disclosure during discussions with companies or individuals who are potential licensees?

When a company or individual is interested in a technology which is still in the patent application process, they will frequently seek access to confidential information related to a patent from the inventor through, for example, detailed discussions with the inventor or site visits to the inventor's laboratory.

Confidential disclosure agreements (sometimes called non-disclosure agreements) are contracts which bind a receiver of confidential information (the potential licensee) to secrecy.  CTTC will help with the preparation, negotiation and execution of confidential disclosure agreements.  A standard form for such agreements is in place which has been approved by the Vanderbilt Office of the General Counsel.  

If the agreement allows for confidential disclosure to Vanderbilt by the other party, then CTTC will inform the inventor(s) or principal investigator(s) of his/her responsibilities under the terms of the agreement.

Are there restrictions on publication associated with the patent or copyright process?

For patents there are different rules in different countries relative to public disclosure.  Public disclosures include publication, either in print or on the internet, presentations at professional society meetings, technical discussions, casual or formal, with colleagues from other institutions or from companies.  In the US, a patent application can be filed up to one year after public disclosure.  In most other countries, however, a technology cannot be patented once it has been disclosed.  

When a patent application has been filed, disclosures and publications about the technology are often beneficial to generate interest.  However, there may still be some constraints on our ability to disclose information.  CTTC can help any inventor determine how and what to publish.  

The copyright to software begins the moment the code is "affixed to tangible media."  Consequently, there are fewer publication issues.

How is ownership of intellectual property (IP) determined when research is sponsored by a company?

Every sponsored research project, including those funded by the federal government or other non-profits, has an associated research agreement.  These agreements address many issues and contingencies including the issue of ownership and allocation of IP rights to patents and/or software which result from project discoveries.
  
For government sponsored research, IP rights are relatively standard for patents but not for software.  When research is sponsored by a company, the subject of IP rights in the sponsored research contract typically requires careful attention. CTTC collaborates with the VUMC Office of Sponsored Research and the University Central Division of Sponsored Research by reviewing and negotiating the IP rights provisions in these agreements and seeking review by the General Counsel's office as necessary.

In recognition of project sponsorship, the sponsor is often provided with an option to license the IP rights from Vanderbilt to make, use, have made or sublicense the technology.  Terms of the license are negotiated at the time the sponsor exercises its option.  The terms include how any revenue would be shared with Vanderbilt and the inventors in accordance with the Vanderbilt Policy on Technology and Literary and Artistic Works.

How long does the process take?

The disclosure evaluation process may take anywhere from a week to three months, depending on the complexity of the invention and the target industry.  If the technology will be patented, the patent application and issuance process generally takes at least three years.  Licensing and marketing efforts can, however, occur concurrently with the patenting process.

Should I publish or patent?

You can do both!  Seeking a patent for a discovery or development does not prevent scientific publication and, in most cases, does not delay publishing.  However, to retain the potential for foreign patent protection, a U.S. patent application must be filed before any description of the invention is published in an article, abstract, thesis, presentation, on the Internet or any other public format.  To find out if your discovery should be patented, contact CTTC at 615-343-2430.  A CTTC licensing associate will work with you to accommodate publishing dates.

To achieve optimum results, a description of the discovery should be submitted at least three months in advance of first publication.  The three months will allow time for review and for drafting a patent application.

How are royalties distributed?

Please refer to the Vanderbilt Technology Policy, Section D.

What does the licensing associate do after a license is executed?

The execution of a license agreement begins a long-term relationship.  The licensee's performance is monitored by the licensing associate for the duration of the license.  Most license agreements require periodic financial or development reports from the licensees.  Patents also require similar maintenance.  It is sometimes necessary to re-evaluate a licensing relationship to adapt to changed circumstances, or to take into account new situations.

Where is CTTC's office?

Does CTTC use inside or outside patent counsel?

The filing and prosecution of patent applications are done by outside patent firms. Technical competence and prior experience in similar cases are considered by the licensing associate in her/his selection of the appropriate patent attorney.

The inventor's cooperation is essential in patent filing and prosecution.  The chosen patent attorney will be familiar with the field of the invention, but he/she is unlikely to be an expert at the level of detail that makes the invention novel, useful, and non-obvious. The inventor, by providing this detailed information, is an extremely important part of a successful patent application.

Does CTTC file foreign patents?

Yes, at the discretion of the licensing associate and/or under the terms of a license agreement.

Where do I find out more about the Conflicts of Interest Policy?

 

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