IP Jargon: What are they talking about? – Part 2

When beginning the process of protecting your invention, lots of industry specific terms and legal jargon get thrown around and can seem a bit daunting. To help ease you into the world of intellectual property protection, OTT has collected and defined some of the most common words and phrases that you’re likely to come across. In this two-part post, we’ll discuss jargon heard in patent statutes and applications and during the patent review process and a patent appeal (Part 1 can be found here). In this part we will cover jargon often heard during the patent review and appeal processes.

Patent Review Process Jargon

  • Amending the Claim/Amendment: After the patent has been filed, if it is discovered that an aspect of the invention already mentioned within the patent is not fully described or drawn, the patent may be amended to properly describe it.Patent Graphic

  • Office Action: After a patent application is submitted, the case is assigned an examiner, who evaluates the application for language and structure as well as prior art. If the application is rejected (which most are initially) the case’s examiner will provide this document explaining why.

    • Non-final Office Action: The Office Action sent after the patent application’s first rejection. The applicant may respond in a variety of ways, including amending the terms or requesting reconsideration.

    • Final Action: If the inventor’s response to the first Office Action was not considered sufficient, they may receive a Final Action. A case’s second rejection is usually deemed “final,” which means that the inventor’s options for response are restricted. Options for response include modifying the rejected claims, filing a Request for Continued Examination, requesting an interview with the examiner or filing an appeal.

    • Restriction Requirement: A given patent may only be awarded to one individual invention. If an examiner feels that the application includes more than one distinct invention, the applicant will have to choose one, and restrict the claims to those concerning that invention.

  • Rejections: is technically an office action where the patent examiner rejects claims based on patentability of the subject matter (section 101) or patentability in light of prior art (section 102 or 103). Although a rejection of claims (section 112) may sound like a rejection of the content found in a claim, this rejection is can be based on objections that the claims are not in their proper form.

    • Obviousness (section 103): An invention must not simply consist of a combination of prior art or an improvement on a previous invention. To be eligible for a patent, an invention must be completely unique.

    • Novelty (section 102): An invention may not have been previously patented, described in publication, or have been in use or on sale by anyone—including the inventor—for more than a year before the application was filed.
    • Patentable Subject Matter (section 101): An invention that is eligible for patent protection meeting the standards of novelty (section 102), utility (section 112), and non-obviousness (section 103). This includes “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

Patent Appeal Jargon

  • Appeal: A request that a decision be reviewed by a higher authority. An appeal may be filed after an inventor receives a final office action, to be reviewed by the Patent Trials and Appeals Board.

  • RCE: (Request for Continued Examination): After the final office action, an inventor may file an RCE and make any amendments and arguments to be considered by the examiner.

IP Jargon: What are they talking about? – Part 1

When beginning the process of protecting your invention, lots of industry specific terms and legal jargon get thrown around and can seem a bit daunting. To help ease you into the world of intellectual property protection, OTT has collected and defined some of the most common words and phrases that you’re likely to come across. In this two-part post, we’ll discuss jargon heard in patent statutes and applications and during the patent review process and a patent appeal. In this part we will cover jargon found in patent statutes and applications.

Patent Statue Jargon

  • Statutory Subject Matter: Something that can be legally protected under a patent. There are four categories of ideas that can be protected by patents: process (a series of steps), machine (an object consisting of parts), manufacture (an object produced by giving new form to raw materials), and composition of matter (compositions of two or more substances.)

  • Bar date (aka Statutory Bar Dates): Dates that are triggered by statue in the patent application process. If any date is missed all potential rights are lost. These are similar to statute of limitations.Patent Graphic

  • Provisional Patent Application: Acts almost as a “placeholder” for a patent application, a provisional application will be granted a filing date, but the application will never be examined and will not become a patent. Although provisional applications become void after one year, an inventor may wish to file one once they have enough detail on the invention, to ensure that they are the first to file. Provisional applications may also allow more time for research or developing the idea before applying for a full patent.

  • Utility vs. Design Patents: There are hree types of patents available in the US: utility, design, and plant. Utility and Design patents, can both be obtained for the same invention. Utility patents protect what an invention does, whereas design patents protect how an invention looks. Although design patents last longer (14 years is typical), utility patents are generally stronger in that they protect the actual function of the invention. For example, if an inventor only holds a design patent, others can make inventions that have the same function as long as they appear differently. Lastly, are plant patents which provide 20 years of patent protection for the inventor of a new variety of plant, preventing others from reproducing and/or selling the plant.

  • PCT Patent Application: A patent application filed under the “Patent Cooperation Treaty.” This non-provisional “International” type patent application lasts for 18 months. It enables the applicant to a single application and retain both their filing date as well as the ability to choose which countries specifically to enter their application into at the end of the 18 months. This method is best for those considering applying for patents in many countries, and wishing to delay cost.

  • AIA (Leahy-Smith America Invents Act): Enacted in the US in 2013, the main change made by the AIA was the switch from “first to invent” to “first to file,” in regards to patents. When multiple inventors file for the same patent, the party that filed a patent first wins control, instead of the party who invented the idea first. You can find more information on the America Invents Act here.

Patent Application Jargon

  • Assignment: Describes both the act of transferring one’s rights to a patent or application to someone else and the legal document memorializing the transfer.

  • Claim: The exact part of an idea within a patent application in which an inventor outlines his or her invention. The claims usually take the shape of a list formatted in oddly worded sentences. This is what the patent will protect and what the inventor will have the rights to.

  • Declaration: A document in which the inventor declares that he/she was the inventor, and that he/she authorized the filing of the patent, acknowledging associated penalties.

  • Enablement: The application and the patent must provide language clear enough for an ordinary person in the field to be able to build or practice the invention from the description in the patent.

  • Embodiments: Different versions of the invention. The intended usage of the invention is known as the “preferred embodiment,” whereas other related versions are known as “alternative embodiments.” Preferred and alternative embodiments must be described in a patent application either through words, drawings, or both.

  • Prior Art: Any information (publication, presentations, etc.) regarding an invention that has been made public before patenting. To ensure originality for a patent, there must not be any prior art for the invention. Search Report: a report published by a patent office, explaining which documents may be used in determining the patentability of an invention. These documents usually contribute to prior art.

Overview of the U. S. Patent Process

Getting Started: The Provisional Patent Application

There are multiple avenues to consider when filing a patent based on the specifics of the situation and the inventors. The first available option (and the one most commonly used at universities) is a provisional application. The importance of provisional patents stems from the patent system’s usage of a first to file system, which dictates that the first party to file a patent for a technology, rather than the first party to invent the technology, is granted the rights for the invention.

Unlike a non-provisional patent application, a provisional application is not examined and does not need to comply with formal requirements, but should include the most detailed description possible in order to ensure the best coverage for the technology. The filing fees for a provisional patent application are considerably lower than other patenting options and allow for establishing an earlier effective filing date. A provisional application lasts for 12 months and will otherwise become abandoned if not converted into an examinable patent application (e.g., a non-provisional or PCT application). During the 12 month provisional time period, the invention may be identified with the term “patent pending.”

Types of Examinable Patent Applications

Patent GraphicThere are four application types: a design patent application, a non-provisional application, PCT application, or plant application. Design patent applications are used to protect the visual elements of an invention, while utility patent applications provide protection for the function of an invention. Both non-provisional applications and PCT applications are utility patent applications. Non-provisional applications are U.S. examinable patent applications. PCT Applications are “international type” patent applications that allow for a single streamlined process through which to file the application in the U.S and/or internationally. Plant patent applications provide patent protection for the inventor of a new variety of plant, preventing others from reproducing and/or selling the plant.

Completing a Patent Application

It is important to keep in mind that after the non-provisional patent application is filed with the USPTO (United States Patent and Trademark Office), additional information cannot be added. After an application is filed, notice is given regarding whether or not the application is considered complete by the USPTO. Following notice of a completed application, an examiner is assigned to determine whether or not the application meets official requirements of patenting. A response may be resubmitted following a rejection, and if the patent application is rejected twice, an appeal may be filed with the Patent Trial and Appeal Board (PTAB) or the applicant may request continued examination (often called an RCE which includes an associated fee) to continue examination of the patent application by USPTO.

Patent Approval and Maintenance

If a patent application is approved, a notice of allowance is sent out explaining the necessary issue and publication fees. Later, after the fees have been paid, the patent will proceed to issuance and be granted. The letters patent is sent out on the patent’s issue date. In order to keep a patent in effect, maintenance fees are due on a set timeline. The maintenance schedules vary by country and patent type, for example the fees for a utility patent are due at 3-3.5 years, 7-7.5 years, and 11-11.5 years and may not be paid early. Once a patent term has ended, the patent is deemed expired.

The Office of Technology Transfer at Emory University filed more than 150 patent applications last year.  Although the patent process is not completely straightforward, we, at the Office of Technology Transfer, are here to help guide you through the journey.

Global Access: Guiding Principles

Universities play an active role in developing medicines, screening technologies, and other leading medical and public health tools that are instrumental in improving health worldwide. While these are widely available in developed countries, in poorer societies, access to vital technologies like these is directly tied to the distribution and patenting decisions made by the universities. Who are these products distributed to? Will they be sold in bulk for societies that can’t afford high prices? The fate of the distribution of a single drug or screening test can lie in these decisions.

Drugs and other health discoveries should be equally available in poorer countries that don’t necessarily have the same resources as wealthier countries, students thought. That’s why, in 2003, Emory students formed the Emory Global Access Partnership, a chapter of the non-profit organization Universities Allied for Essential Medicines, which is aimed to promote awareness of these issues. The organization works with universities to ensure that medical research is accessible worldwide.Globe Graphic

Emory’s Global Access Partnership works to make sure that health innovations developed within the university are equally available in all parts of the world. Since its inception, the Global Access Partnership has engaged in university lobbying, education and policy creation.

These principles reaffirmed Emory’s commitment to assessing the interests and needs of the developing world, and to engaging in licensing strategies that will make global access possible. The Office of Technology Transfer (OTT) took these principles to heart and incorporated them into its practices. OTT updated its license template to include a global health exclusion, which is a retained license allowing Emory to license technologies to public health purposes that address neglected tropical diseases in least developed countries (designations made by the World Health Organization). OTT also includes terms in its license that incentivize the commercialization of products with these values, agreeing not to collect royalties on sales for humanitarian purposes in low income countries.

The committee hopes to turn toward larger issues in global health. In conjunction with creating policies that make global access possible, the committee hopes to play a role in increasing funding for research that directly focuses on humanitarian licensing practices. By adhering to these principles in all divisions of the University, Emory shows a serious commitment to issues of global health and access.

The full policy can be found on our website here.

Anatomy of a Patent Application

One of the most common ways to protect certain types of inventions (like medical devices or new chemical compositions) is through patenting. This guide quickly explains the parts of a United States patent application which is filled through the United States Patent and Trademark Office (USPTO). Generally, patents are divided into seven sections. The sections are as follows:Patent Graphic

  • Title

  • Background: A description of the problem the invention hopes to solve, along with information on any previous inventions of a similar function (prior art).

  • Summary: A concise description of the claims.

  • Description of Drawings: A list of drawings that appear within the application.

  • Description of Invention: A specific and often detailed description explaining how another could make and/or use the invention.

  • Claim Set: The limits of patent protection; essentially, what aspects of the invention are going to be protected under the patent.

  • Abstract: A general description of the invention under 150 words.

In order to understand these sections, the following additional terms may be helpful:

  • Application Number (or Serial Number): A unique number assigned to identify the patent application by the USPTO. This number has a specific format of eight digits; the first two digits are the series and the remaining six digits which are assigned sequentially (e.g., 11/679,589). This number is different from the patent or publication numbers.

  • Assignee: An owner of the patent who is not the inventor.

  • Drawings: Drawings, which can consist of visuals such as charts, illustrations, and diagrams, are used to further clarify the description of the invention.

  • Examiner: The USPTO employee responsible for examining the patent application.

  • Filing Date: The date the patent application is filed.

  • Inventor: A person who contributes to a minimum of 1 claim within the patent.

  • Issue Date of Patent: When the patent is issued and becomes enforceable.

  • Patent Number: A unique number used to identify a granted patent assigned by the USPTO (e.g., 7,713,708).

  • PCT Application: AKA The Patent Cooperation Treaty; an application for international patents covering over 148 countries.

  • Prior Publication Data: If the patent is published before the application is approved, the date of the previous publishing is listed.

  • Publication Number: Once a patent application is published it is assigned a unique number by the USPTO. This number has a specific format of four digits for the year, then seven digits assigned sequentially, followed by a two digit kind code (e.g., US-2007-0141725-A1). These numbers are seen both with and without the US prefix. This number is different from the application or patent numbers.

Although this blog is just a short introduction to the parts of a patent application, there is much more to learn. If you’re interested in learning more about what our patent attorneys do, check out our IP section here, or if you’d like to get some hands on experience as an intern, learn more about our intern program and patent track here.

Six Things to Know About Copyrights

Copyright GraphicThere are plenty of myths and confusion around copyright law. Many people aren’t sure what a copyright covers and how it differs from other types of intellectual property (IP) protection like patents or trademarks. Although a blog is too short to go into all the specific details of copyright law, we hope to hit a few key highpoints here and help clarify what a copyright is and its function.

  • A copyright differs from a patent or trademark in that it protects an original work of authorship. A patent protects inventions or discoveries and a trademark protects words, phrases, symbols, or designs identifying the source of the goods or services.

  • In the United States, under the Copyright Act (17 U.S.C §§ 101 et seq) computer programs are literary works and may be filed as such, meaning that software is often protected via a copyright.

  • You do not need to register or publish your work to gain copyright protection. A work is under copyright protection the moment it is created and fixed in a tangible form that is perceptible either directly or with the aid of a machine or device. A copyright does not protect ideas, concepts, systems or methods of doing something. A copyright would protect the expression of the idea or concept.

  • The term of a copyright work depends on other factors. As a general rule, the life of a copyright is the author’s life plus 70 years, meaning the copyright will expire 70 years after the author’s death. For an anonymous work, pseudonymous work, or work made for hire, the copyright term is 95 years from the year of its first publication or 120 years from the year of its creation. For works published before 1978, consult chapter 3 of the Copyright Act, as the terms can differ.

  • Know who owns the copyright. The copyright belongs to the author as soon as the work is created. Paying someone(s) to create a work (for example to code software) does not guarantee that you

  • own it. Although “work made for hire” makes ownership by an employer the default, not all commissioned work of software qualifies as “work made for hire.” To avoid issues or confusion, it is best to clearly state a work was made as “work for hire” in a contract.

  • The fair use doctrine permits the use of limited portions of a work for purposes such as commentary, criticism, news reporting, and scholarly reports. There are no legal rules permitting the use of a percentage, specific number of words, or certain number of musical notes of a work.

If you are unsure or have any questions regarding intellectual property, it is best to consult your technology transfer office, we would be happy to meet with you, or an IP attorney. You can find more information regarding copyright law at the United States Copyright Office’s website, http://copyright.gov/.

Quick Reference of the Common Types of Intellectual Property Rights

“Intellectual property” or “IP” generally refers to exclusive rights granted to owners under U.S. intellectual property laws to a variety of intangible assets covering creations of the human mind.  Common types of IP rights include copyrights, trademarks, patents (utility and design patents) and trade secrets.

Type of Right

What it Protects

How to Obtain

Copyright Original works of authorship, including writings (including computer software) music (including any accompany words and/or music), and works of art (e.g., pictorial, graphic, and/or sculptural works) that have been tangibly expressed
  • Copyright exists immediately and automatically when the work is created, that is, when it is fixed in a tangible copy for the first time
  • A notice of copyright may be designated on the work of authorship by the following:
    • The symbol © (the letter “C” in a circle), or the word “Copyright” or the abbreviation “Corp.”;
    • The year of first publication of the work; and
    • The name of the copyright owner (e.g., Emory University)
  • No publication, registration or other action in the U.S. Copyright Office is required to secure copyright
Trademark Word, name, symbol, logo, image design, or any combination used or intended to be used to identify and distinguish the goods/services of a particular source from those of others
  • Rights can be established by registering in the U.S. Patent and Trademark Office (also referred to as “registered trademark”) or through actual use in the marketplace (also referred to as “unregistered trademark” or “common law” trademark)i
  • A trademark is designated by the following symbols:
    • ™ for a common law or unregistered trademark; and
    • ® for a registered trademark
Utility Patent Any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof – i.e., the way an item works and is used (the structure/function of an item)
  • Examples include: medical devices, methods of treatment, compounds, mechanical devices, and methods of manufacture
  • Most patents are utility patents
  • Rights can be established by a grant of a Utility Patent by the U.S. Patent and Trademark Officeii
Design Patent New, original, ornamental design of an article of manufacture – i.e., the way an item looks
  • Examples include: jewelry, furniture, beverage containers, and computer icons
  • Also referred to as “industrial design.”
  • Rights can be established by a grant of a Design Patent by the U.S. Patent and Trademark Officeiii
Trade Secret Any formula, pattern, device, instrument, or compilation of information, which is not generally known or ascertainable, which may give a business an economic advantage over competitors who do not know the trade secret
  • Examples include: a formula for a chemical compound (e.g., The Coca-Cola Company’s formula), a processes, plans, treating or preserving materials, software, or a pattern for a machine or other device
  • General Factors to determine whether information is a trade secret:
    • the extent to which the information is known to those in your business and those outside the business (e.g., extent to access to the information)
    • The information confers some sort of economic benefit on its holder (e.g., the information is valuable as to significantly impact the operations of a business); and
    • the information is subject to reasonable efforts to maintain secrecy

 

Here at the Office of Technology Transfer, we work hard to determine the most appropriate and potentially valuable type of intellectual property to pursue for our new technologies.   If you have questions regarding IP protection or to learn more about how the Office of Technology Transfer works with our faculty, clinicians and students to pursue IP protection, please reach out to our office or take a look at the IP section of our website, http://www.ott.emory.edu/inventors/protection.html.

i To register a trademark in the U.S. Patent and Trademark Office, the trademark owner must file an application with the USPTO and they must find that the trademark meets trademark requirements, such as showing that the mark is not likely to be confused with other trademarks in the general class.

ii,iii   To be granted a patent in the U.S. Patent and Trademark Office, the applicant must file and application with the USPTO and they must find that the claimed invention/design meets patentability requirements, such as novel and not obvious.

What do Those Extra Letters Mean? Professional Designations in Technology Transfer

Many members of our team carry additional letters behind their names, most being readily recognizable such as PhD, JD, or MBA; but what do the others you see mean, such as CLP and RTTP?

Like many professions, these are certifications and designations attained by those in the technology transfer and licensing fields that are conferred and administered by the professional societies our team members participate in, namely, the Licensing Executive Society and the Alliance of Technology Transfer Professionals. For our field, these designations signify that a technology transfer professional has met a certain level of proficiency and experience; for our organization these designations add an additional level of credibility with those whom we do business, both externally and internally.

Certified Licensing Professional (CLP) – Started by the Licensing Executive Society, and now managed by the separately incorporated Certified Licensing Professionals Inc., CLP distinguishes professionals who have demonstrated their experience, knowledge, and skill in the fields of licensing and commercialization of intellectual property. More than 900 individuals worldwide that work in the areas of patenting, marketing, valuation, IP law, negotiation, and intellectual asset management have earned the CLP credential. Candidates for the CLP designation must have at least 3 years of licensing experience, have a Bachelor’s degree, and pass a proficiency exam.

Registered Technology Transfer Professional (RTTP) – Administered by the Alliance of Technology Transfer Professionals (ATTP), RTTP recognizes individuals who have demonstrated a high-level of competence and commitment to the technology transfer profession. Qualifying applicants can function in a variety of roles within the profession ranging from technology management to licensing and marketing. Candidates must submit an application form, supporting documentation, and a case study or demonstration of experience as outlined by the organization, which is reviewed by a panel of industry leaders for approval. They must also have served in a relevant role, related to knowledge exchange or tech transfer, for at least three years. Those working on obtaining RTTP can be recognized as “candidate RTTP” after six months in a relevant role, indicating their commitment to achieving full RTTP status.

Certified Research Administrator (CRA) – CRA is administered by the Researchers Administration Certification Council (RACC) and recognizes individuals with knowledge to serve as administrators of professional research programs. Applicants receive benefits, such as increased chances of employment, heightened credibility, and advancement opportunities within the research world. Applicants are required to have at least three years of professional research experience if they hold a bachelor’s degree, five years with an associate degree, and six years with no degree. They must then submit an application with references and pass the CRA examination.

Certified Pre-Award Research Administrator (CPRA) – The CPRA is also administered by RACC and has the same qualifications for certification. CPRA indicates that a candidate has high levels of knowledge and expertise concerning pre-award research administration, which involves seeking funding sources, submitting proposals, and compliance concerns, among other skills. Benefits of CPRA include greater credibility and more employment opportunities within pre-award research administration.

OTT is proud to have three Certified Licensing Professionals and two Registered Technology Transfer Professionals on staff and actively encourages team members to pursue these and other professional designations. According to Executive Director, Todd Sherer, himself both CLP and RTTP, “These certification programs allow our team members to demonstrate and be recognized for their performance in our industry. For our faculty and corporate partners they provide an extra layer of confidence, assuring them that they are dealing with skilled professionals when they work with our team.” For more information about the CLP & RTTP programs please see www.licensingcertification.org/ & http://www.attp.info/.

Inventorship: Who is an Inventor?

Inventorship could be the million dollar question. In a university setting where collaboration is common place – who is an inventor? Most scholars understand “authorship,” but this concept shouldn’t be confused with “inventorship.” Being listed as an author on a journal article discussing the invention does not automatically make one an inventor on the patent itself.

As a general rule, an inventor is one who has substantially contributed to the “conception” of an invention. Whereas, someone working at the direction of another, using routine skill without making a substantial conceptual contribution, is not considered to be an inventor under U. S. patent law. Credentials, such as degrees or titles, do not play a role in whether someone is an inventor on a particular patent. Disputes regarding inventorship often arise when a person with involvement in testing or construction of the invention believes they should be named as an inventor. Whether that person should be named as a joint inventor is not simply a courtesy or straightforward yes/no decision, it is a fact-intensive inquiry based on conceptual contributions of the person to the invention.

Two real world examples illustrating these points are provided below. In the first one, highly reputable scientists working in collaboration with other inventors were found by a court not to contribute to the conception of a particular invention. Burroughs Wellcome Company was the owner of six patents that claimed various preparations of 3′-azidothymidine (AZT) and methods for using that drug to treat HIV, a retrovirus. Each of these patents named the same inventors, all of whom were employed by Burroughs Wellcome. Tests performed at Burroughs Wellcome facilities showed that AZT had activity against murine retroviruses. Scientists at the National Institutes of Health (NIH) were able to develop a test that could demonstrate a compound’s effectiveness against HIV in humans. Burroughs Wellcome had sent a sample of AZT to the NIH. In an accompanying letter, Burroughs Wellcome reported the results of the murine retrovirus tests and asked that the compounds, including AZT, be tested for activity against HIV. The NIH test found AZT was active against HIV.

A dispute ensued that questioned (?) whether NIH scientists were also joint inventors. The court held that,

Conception is the touchstone of inventorship, the completion of the mental part of invention. . . . But an inventor need not know that his invention will work for conception to be complete. . . . He need only show that he had the idea; the discovery that an invention actually works is part of its reduction to practice. Burroughs Wellcome v. Barr 40 F.3d 1223 (U.S. Fed. Cir.1994)

The NIH scientists were held not to be joint inventors “because the testing confirmed the operability of the inventions, it showed that the Burroughs Wellcome inventors had a definite and permanent idea of the inventions. It was part of the reduction to practice and inured to the benefit of Burroughs Wellcome.” The court reasoned that “the [NIH] testing was brief, simply confirming the operability . . .” Id. Thus, the involvement was not considered substantial enough to warrant the NIH scientists be listed as co-inventors.

In a more recent case, Kent Displays, Inc. (“KDI”) hired an associate professor at Kent State to work on a project for KDI which entailed the synthesis and development of chiral additives for improving portable Liquid Chrystal Displays (“LCDs”). The professor hired a post-doctoral researcher to synthesize the chiral molecules. Both the professor and the post-doctoral researcher were listed as “Co-Research Institution Investigators” on grant applications filed with the National Science Foundation, and the post-doctoral researcher was to work independently and to have ideas of his own while working on the KDI project. The prepared compounds were tested at KDI.

The post-doctoral researcher eventually left his position with Kent State. A patent was later obtained that claimed chiral compounds made by the professor after the post-doctoral researcher left his position. The professor and KDI employees were named as co-inventors. The post-doctoral researcher was not named as a co-inventor. The patent specification disclosed a synthesis protocol developed by the post-doctoral researcher as the protocol utilized to synthesize the claimed class of chiral compounds. The post-doctoral research sued to be named as a co-inventor. The court held that,

A joint invention is the product of a collaboration between two or more persons working together to solve the problem addressed. . . . People may be joint inventors even though they do not physically work on the invention together or at the same time, and even though each does not make the same type or amount of contribution. . . . Each joint inventor, however, “must contribute in some significant manner to the conception of the invention.” . . . Conception of a chemical compound “requires knowledge of both the specific chemical structure of the compound and an operative method of making it.” Falana v. Kent State University (Fed Cir. 2012)

In this case, the court reasoned that the collaborative contribution of the post-doctoral researcher of the synthesis protocol was a sufficient contribution to the conception of the claimed compounds to render him a joint inventor.

At a university where collaboration is king, inventorship can be tricky and differs significantly from authorship as was illustrated here. This issue is handled routinely by the staff of the Emory Patent Group (EPG) in the technology transfer office. Disclosure your discovery and EPG will work through the issues and make a legal determination.

Untangling the Codes

In technology transfer, as in other fields, there are quite a few acronyms that are thrown around and may seem confusing at first. In this glossary, we break down the different types of agreements that’ll help you untangle those codes.

MTA

MTA stands for Material Transfer Agreement. Because research and technology development are often collaborative efforts, colleagues may share research tools. MTAs are formal contracts that define the proper use and limits of these shared tools, which could include reagents, cells, antibodies, computer software, etc. It’s important to execute an MTA before any research material is sent or received. The execution of an MTA ensures clear intellectual property ownership and supports necessary patent documentation.

IIA

IIA stands for Inter-institutional Agreement. IIAs come into play when multiple individuals at different institutions jointly invent a new technology. In the case of joint ownership, OTT will negotiate an IIA to define the rights and responsibilities of the institutions. These agreements encompass intellectual property protection, commercialization, cost and revenue sharing, as well other issues related to protecting and licensing the jointly-owned technology.

RA

RA stands for Research Agreement. Research agreements detail the obligations, commitments, and expectations of the parties involved over the course of a research project. RAs usually dictate and clarify specific goals of the research projects, in addition to how the involved parties will interact with each other.

CA, CDA, NDA, or RDA

CA stands for Confidentiality Agreement. CDA stands for Confidential Disclosure Agreement, sometimes referred to as an NDA (Non-Disclosure Agreement) or an RDA (Restricted Disclosure Agreement). Generally speaking these types of agreements outline what information is confidential, what and how information can be shared , and what information should be restricted from other parties. These agreements allow parties to discuss details of their business and inventions without the fear of making important information public.

MOU

MOU stands for Memorandum of Understanding. An MOU is an agreement between two or more parties that specifies mutually accepted expectations as the parties work together toward a common objective. MOUs are generally not legally binding; they’re often used in cases where parties either don’t imply a legal commitment or in situations where the parties can’t create a legally enforceable agreement.

RS

RS stands for Revenue (or Royalty) Sharing Agreement.  An RS is an agreement between the contributors to a technology, their department or school and the university, which outlines how revenue paid to the university from a license is shared among the groups.  It builds upon the basic revenue split outlined in university’s intellectual property policy (Emory’s can be found here).