Protecting Your Intellectual Property RIghts

At this point in your grant process, through your work, you may have had the good fortune to discover a new technology. Ohio University 's Technology Transfer Office (TTO), assists faculty who work with both private and public entities, to commercialize the technology-based intellectual property through patent disclosures, copyrights, and licensing processes. The office also handles all arrangements needed to transfer loaned materials from the private sector for research use as well as confidentiality agreements on behalf of the university.

The general patent process for a faculty or staff member is:

1. Inventor submits Invention Disclosure Form
2. TTO and inventor meet. Is there eligibility for patenting and licensing?
a. YES
1. Patent will be filed.
2. Licensing negotiations begin.
3. Royalty payments received.
b. NO
1. Inventor may pursue other options.

See Ohio University Policy 17.001 Intellectual Property Ownership and Disposition, and Employee Involvement in Research Commercialization.

Inventions include new processes, products, apparatus, compositions of matter, living organisms, or improvements to existing technology in those categories. These inventions are important to grants at OHIO because under federal law, the University is required to report to the Government inventions created under sponsored research. If the University decides not to take title to such an invention (that is, decides not to keep it), then the Government has rights to it. If the Government doesn't wish to pursue it, the invention may be assigned back to the inventors. Non-Government sponsors may also have intellectual property clauses and obligations attached to such sponsorship with which TTO must comply.

As an inventor on a grant, who has made a discovery that potentially needs a patent, your first step is to submit Invention Disclosure Form to TTO office. The TTO office will need specific personal information, such as your work address to contact you and your home address to mail royalty checks to you. Royalty payment cannot be made without a social security number. DEF: Inventor: Someone one who first conceives of an invention, in detail, and with enough specificity that one skilled in the field could construct and practice the invention . This creates a record of the invention (descriptive information), the inventor(s) involved, who sponsored the work, and public disclosures and publications. Disclosure Forms can also be obtained by calling TTO at 740-593-1778 or by visiting the following website: http://www.ohio.edu/research/tto.

TIP: Those who translate the concept into practice are not considered co-inventors unless they add to the original concept of the invention, although with the agreement of the inventor(s), they may share in the financial benefits.

All disclosures that are received by TTO are logged in and assigned a docket number. A TTO staff member will then contact you to set up a meeting with you and any other co-inventors. Together they will discuss the invention and make a preliminary evaluation of manufacturing feasibility, novelty, potential applications, and possible markets. At that point, a preliminary development strategy will be developed.

All information provided to TTO will be kept confidential. Without adequate information, TTO cannot perform a complete evaluation of the invention's licensing potential, nor can we obtain an accurate legal opinion as to whether it is patentable. The first meeting of the Associate and the inventor(s) is a time when the invention may be discussed in greater detail.


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