As researchers uncover new knowledge, they often develop novel techniques or demonstrate new and valuable applications of their results. New ideas that can be applied in useful ways can be considered new inventions, and inventions are intellectual property (IP) that can be considered for patent protection. IP includes inventions and other creative works and/or materials that may be protected under the patent, trademark and/or copyright laws. See right for more information on the different types of intellectual property.
Understanding and being mindful of IP in a research environment is crucial because:
- in the course of pure research, you may be creating inventions to solve problems and not realize it
- technologies created in faculty labs belong to the University and need to be disclosed
- inventions can be commercialized, which can lead to income and research support for the inventor(s)
There is a logical order to ideas as they take shape, coalesce into inventions and move forward to commercialization. TCS guides this process and is often the first stop for inventors and industries seeking to advance new ideas and products.
TCS manages all intellectual property created at the university, under the guidance of the Intellectual Property and Commercialization Policy.
Inventions and Patents
What is the legal definition of an invention?
- The United States patent law requires that an invention meet the following three criteria, in order to be eligible for patent protection.
- Novelty: The invention must be demonstrably different from already available ideas, inventions or products (known as "prior art"). This does not mean that every aspect of an invention must be novel. For example, new uses of known processes, machines, compositions of matter and materials are patentable. Incremental improvements on known processes may also be patentable.
- Usefulness: For an invention to be patentable, it must have some utility or application, or be an improvement over the existing products and/or technologies.
- Non-obviousness: The invention cannot be obvious to a person of "ordinary skill" in the field. Non-obviousness usually is demonstrated by showing that practicing the invention yields surprising, unexpected results.
What is a Patent?
- A patent gives the holder the right to exclude others from making, using, selling, offering to sell and importing any patented invention. Note, however, that a patent does not provide the holder any affirmative right to practice a technology, since it may fall under a broader patent owned by others; instead, your patent only provides the right to exclude others from practicing it. Patent claims are the legal definition of an inventor’s protectable invention.
How Do I Help in the Patenting Process?
- Patenting is a legal and technical process, which is overseen by TCS, but which very much involves the inventor(s) and the University’s outside patent attorneys. Specifically, the inventor(s) may be asked by the attorney to: clarify details of their invention, describe all its possible uses, differentiate the invention from related technology and describe its potential advantages, and help define what each potential inventor contributed to the creation of the invention. The inventor(s) will also be asked to review patent applications and to help respond to questions raised by the Patent Office. Your timely response to TCS and outside patent counsel requests is required to facilitate the patenting process. While some aspects of the patent and licensing process will require significant participation on your part, we will strive to make efficient use of your valuable time.
Copyright and Copyright Notices
What is a Copyright?
- A copyright is a form of protection provided by the laws of the U.S. and other countries to the authors of "original works of authorship." This includes literary, dramatic, musical, and artistic and certain other intellectual works as well as computer software. This protection is available to both published and unpublished works. The Copyright Act usually gives the owner of copyright the exclusive right to conduct and authorize various acts, including reproduction, public performance and making derivative works. Copyright protection is automatically secured when a work is fixed into a tangible medium such as a book, software code, video, etc. In the United States, copyright protection lasts the lifetime of the author plus 70 years. In some instances, TCS registers copyrights, but generally not until the commercial product is ready for production and distribution/sale. All new software and source code should be disclosed as with any new invention and will be processed and managed by TCS.
How Do I Represent a Copyright Notice?
- Although copyrightable works do not require a copyright notice, we do recommend that you use one. For works owned by UConn use the following notice:
© 20XX University of Connecticut. All rights reserved.
Trademarks and Service Marks
What is a Trademark or Service Mark?
- A trademark includes any word, name, symbol, device or combination that is used in commerce to identify and distinguish the goods of one manufacturer or seller from those manufactured or sold by others, and also to indicate the source of the goods. In short, a trademark is a brand name. A service mark is any word, name, symbol, device or combination that is used or intended to be used in commerce to identify and distinguish the services of one provider from those of others and to indicate the source of the services. It is not necessary to register a trademark or service mark to prevent others from infringing upon the trademark.
- Trademarks generally become protected as soon as they are adopted by an organization and used in commerce (even before registration). With a federal trademark registration, the registrant is presumed to be entitled to use the trademark throughout the U.S. for goods or services for which the trademark is registered. UConn has trademark protection on items such as sports logos, mascots, emblems and images of university events.
Ownership of Faculty Inventions
UConn owns all inventions made by its employees while working under a grant or contract to UConn, or while using UConn resources.
U.S. patent law specifies that all inventions are owned by the inventor(s) unless the inventor(s) has transferred ownership or title to another entity. This applies to UConn. Under Connecticut law (C.G.S., Sec. 10a-110b), UConn has the right to own title to any invention conceived by university employees (including but not limited to full-time and part-time faculty, post-doctoral fellows, student employees, research assistants, visiting scientists and emeritus professors) in the performance of customary or assigned duties or which emerges from any research or other program of the university, or which is conceived or developed wholly, or partly, with the use of university funds, facilities, equipment or materials.
That is, by virtue of employment, employees of UConn are required to assign their right, title and interest in inventions to the university.
Student Contribution to an Invention
A student can also be a sole contributor or inventor. The policy for ownership of an invention developed with or by a student is the same as for any other member of UConn in circumstances where a student is participating in sponsored research at the university and the research contract addresses ownership.
A student who believes he or she should have clear title to an invention, which is developed at the university, should contact TCS. Upon disclosure of the invention and examination of the details surrounding its development, the university may execute a waiver of rights regarding the invention to the student, or ask the student to assign his or her rights to UConn.
The Intellectual Property and Commercialization policy provides that our inventors receive 33 1/3% share in revenue generated by their discoveries.
Learn more regarding revenue sharing.
If the UConn does not believe that it can successfully commercialize a UConn Invention, and if the faculty member is not interested in founding a Startup, the UConn may offer the inventor a license of the UConn Invention (such license referred to as a “license back”).
The license back is a legal agreement that enables the Inventor(s) to patent and commercialize technology developed at UConn.