Frequently Asked Questions
According to the World Intellectual Property Organization (WIPO), “intellectual property (IP) refers to creations of the mind”. IP such as patents, copyright, or trademarks are protected by law and enable the creator to derive financial or other benefits for their creations. More information about IP can be found on WIPO’s web site: https://www.wipo.int/about-ip/en/
According to Drexel’s Intellectual Property Policy, all inventions, whether patentable or not, created by Drexel faculty, staff, or students, or by anyone who uses Drexel’s resources and facilities solely belongs to Drexel University. Drexel ownership extends to copyright material, such as software code, that are considered work for hire. Drexel makes exceptions to materials that are created for course work, publications, or specific personnel or student situations. These exceptions can be found under Sections III (1), (2), (3), and (4) of the Intellectual Property Policy.
As part of its core mission, Drexel develops new innovations and technologies for the public good. While publication is an important mechanism for disseminating new discoveries, sometimes the most effective way to bring new ideas to market is to protect discoveries through patents and copyright, and to license the IP to organizations that can successfully commercialize them. This process is referred to as technology transfer or technology commercialization and is administered by Drexel Applied Innovation (DAI). DAI is responsible for all aspects related to technology commercialization, including evaluation of new disclosures for commercial potential and protectability, working with outside patent firms to prepare, file, prosecution, and maintain patents and patent applications, engaging with industry partners and potential licensees, and negotiating related agreements such as nondisclosure agreements, material transfer agreements, tangible research material agreements, intellectual property management agreements, joint ownership agreements, options, and licenses.
Certain types of copyright material which are deemed “works for hire” belong to Drexel according to Drexel’s IP Policy, and therefore should be disclosed. Drexel makes exceptions to materials that are created for course work, publications, or specific personnel or student situations. These exceptions can be found under Section III (3) of the Intellectual Property Policy.
According to Drexel’s IP Policy, tangible research materials include unique research products which may or may not be patentable, such as organisms, cells, compounds, and transgenic mice. Ownership of these materials with be treated as inventions under the policy. More information can be found under Section III (4)(f) of the Intellectual Property Policy.
Drexel Applied Innovation has an official disclosure form that contains the relevant information needed to log, track, evaluate, and report on new inventions. The form captures information such as title of invention, date of disclosure, brief summary of the invention, related disclosures, dates of public disclosures (past or impending), names of inventors and their affiliations, and funding support. All Drexel inventors/creators must all also sign and date the form. If any questions, please contact us at firstname.lastname@example.org
According to US patent law, all inventors have full rights to use the patents that claim their inventions. Drexel policy requires Drexel employees to assign their rights to Drexel to allow Drexel’s Office of Applied Innovation (DAI) to manage the IP on behalf of all the inventors. If an invention includes inventors who are not employed by Drexel or obligated to assign to Drexel, DAI works with those inventors and their organizations to determine ownership interests and negotiate joint ownership agreements that define who manages the patent prosecution and commercialization activities, as well as how expenses and revenues will be shared by the parties.
It is important to disclose your invention before you intend to present at a public forum or submit a manuscript to a journal. Most countries around the world prohibit filing patents for inventions that have already been publicly disclosed. The United States allows for some exceptions for public disclosures that occur less than one year before filing a patent. However, US patents only cover products that are manufactured or sold in the US. Many companies who want to license IP from Drexel or other academic institutions are looking for protection in other countries or geographic territories.
DAI needs to know who funded the invention to know if the sponsor has rights to any IP for work that they supported. For example, grants from US federal agencies include provisions that allow the US government to use these inventions for its own purposes. Industry sponsored research typically include provisions that allow the funding organization to secure or license IP that arises from the project. Therefore, it is important for DAI to contact the sponsoring agency in a timely manner of new inventions created with their support, and to initiate process and agreements to formally document these rights.
Once DAI receives an invention disclosure, it is logged into our internal database and assigned a six-digit number for tracking purposes. It is then assigned to a licensing manager who reviews the subject matter for patentability, protectability, and commercial potential, as well as any obvious barriers that would prevent filing for patent or copyright protection. If DAI determines that a newly reported invention needs protection, we send the disclosure and related materials to an outside law firm to prepare and file a patent application. Typically we instruct the law firm to share application drafts with the inventors for their and comment before filing. Once the application is filed, we report the filing to any party that may have ownership interests or to an federal or industry funding sponsor that may have rights to the IP.
Industry partners and licensees come to us through various channels. Sometimes we run marketing campaigns to solicit feedback and interest from specific industries that align with our technologies. Some companies employee technology scouts who engage with academic institutions to find new technologies that align with the company’s product roadmap. Sometimes a press release or journal article solicit commercial interest, especially in areas where there is significant commercial development. Some licenses are generated from longstanding relationships between a faculty member and an industry partner.
Drexel believes that inventors and creators, along with the Drexel units and resources that supported them, should be rewarded for their participation in technology commercialization if a technology is successfully licensed. After deducting for allowed patent and licensing expenses as defined by Drexel’s IP Policy, net proceeds are distributed to inventors/creators, research labs, departments, colleges, and ORI/DAI. Specific information about allowable expenses and net proceeds allocations can be found under Sections III (4), (7), (8), (9), and (10) of the Intellectual Property Policy.
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