Intellectual Property (IP) and Entrepreneurial Activities
What is intellectual property?
“Intellectual property” (IP) developed at the School of Medicine might include:
novel, useful, non-obvious inventions (regardless of whether they can be patented)
software, written documents, or images that can be copyrighted
U.S. patent law defines “invention” as a new and useful process, machine, manufacture or composition of matter, or any new or useful improvement thereof. In order to be patentable, an invention must be novel, have utility, and be non-obvious to others skilled in the art (i.e., colleagues who work in the same area).
Why should you protect your intellectual property?
- Legal/regulatory/policy obligation. UVA policies on patents and copyrights require that employees disclose and assign the title to inventions developed within the scope of their employment or using significant University resources. Under the Bayh-Dole Act, UVA must attempt to patent and license inventions developed under federal funding. Recipients of federal funds must disclose to the government any new inventions (see”Reporting inventions resulting from federal funding”).
- Future revenue streams for your research. IP that has been licensed may generate royalties and license fees – a portion of which is returned to the inventor’s laboratory. (See the UVA royalty sharing schedule.) Moreover, licensees often provide funding to the inventor(s) for additional R&D work required to help bring the invention to market. Research agreements are negotiated by the Office of Grants and Contracts.
Confidentiality and patent rights
Disclose your inventions to the UVA Licensing and Ventures Group (UVALVG) as soon as possible, in order to protect U.S. and foreign patent rights. Public disclosure prior to the filing of a patent application may cause the loss of certain patent rights; UVALVG can counsel you on when and how you may disclose your invention publicly.
Reporting inventions resulting from federal funding
Inventions that are generated under federal research support must be reported to the government, which is granted a non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States the subject invention throughout the world. Most federal agencies use the iEdison system to report inventions. Contact the UVALVG for further information on how and when to report inventions to the federal government.
Avoiding problems with IP
Document the conceptualization and reduction to practice of all technology in order to establish a priority date. Refer to our section on record retention and disposition. Contact the UVALVG as soon as you think you have an invention with potential commercial value. Do not submit manuscripts or abstracts describing your technology before conferring with the Foundation, since public disclosure prior to submitting a patent application may restrict patent rights. Any of the following may constitute disclosures:
- paper, recording, or other fixed communication to others
- meeting abstracts, as of the date they are delivered to attendees
- conversations with outside visitors who are not covered by a nondisclosure agreement.
Nondisclosure Agreements (also called confidentiality agreements)
These are used in several contexts:
- to protect IP rights when discussing your technology with a potential licensee
- required of grant reviewers by funding agencies
- required by sponsors of clinical trials before releasing protocols to potential site PIs
- included as provisions in many consulting agreements
These agreements are negotiated by the Office of Grants and Contracts.